Trademarks: Owning Your Intellectual Property
As a business owner protecting one’s brand is imperative in ensuring the security of their intellectual property. One way many business owners achieve this is through registering a trademark or a service mark. A trademark or service mark (depending on what you are selling) is a word, phrase, or design specific to your goods and/or services. From here on out we will refer to both trademark and service marks under the umbrella term of trademark. By owning a trademark, you can have exclusive ownership of the mark for your brand and protect identifying features of your business. This exclusivity and ownership of your intellectual property can allow you to capitalize on these features of your branding and creations. The trademarking process may seem daunting, but many resources and services are available to make owning your intellectual property a simple, smooth, and rewarding process.
What is a Trademark Application?
For your intellectual property to qualify for a trademark, the property must distinguish you from others in a commercial setting. After verifying if your mark is eligible for a trademark, you can proceed to fill out a trademark application. A trademark application is a request that you submit to the USPTO, requesting the exclusive right to use a logo or word to represent in commerce. The applicant fills out and submits this request to the United States Patent and Trademark Office (USPTO).
When Should I Protect My Brand
Deciding when to protect your brand is an important decision. Some business owners apply for a trademark as soon as they file their LLC or corporation paperwork. Others wait until their intellectual property is used in commerce. What route you choose will dictate whether you will be filing for an actual-use trademark or an intent-to-use trademark. If a business owner plans to wait until their intellectual property is being used in commerce they will be applying for an actual-use trademark. This requires the submission of a specimen showing the actual use of the mark. If you plan to apply for a trademark before being used in commerce, you would utilize an intent-to-use trademark. Applying for a trademark before being used in business can offer greater protection for your goods and services. With an intent-to-use trademark, you have six months to put the mark to use. If you do not meet the six-month deadline, you can apply for and pay for additional six-month extensions for up to three years total. Deciding when to apply for a trademark is an important decision, and it is crucial to remember why you are filing for a trademark. These are all considerations that your attorney can help you with.
Do I Need a Third-Party Trademark Search?
No. A trademark search conducted by a third party is not required. However, the USPTO has the Trademark Electronic Search System, TESS; here, you can perform a comprehensive search of trademarks that may be similar to yours. An informal search by you or outsourcing a search to a third party is non-binding. The best way to determine if a trademark is confusingly similar to yours may be to file your application directly with the USPTO and correspond with their examiner through office actions.
What Else Should I Consider When Registering For My Trademark?
There is much more to gaining a trademark than just having a great idea or distinctive logo property. It is important to consider whom you want to own your trademark, how you want to approach the trademark application, and the legal requirements you must meet to be eligible for registration. Thoroughly completing your application carefully can speed up the process and give a greater chance of your trademark being issued to you.
- In-use versus intent-to-use trademarks
Specifying if your trademark will be an actual-use mark or an intent-to-use mark is essential. This will help to determine your application filing basis. An actual-use trademark means that you are currently selling or transporting your goods in commerce or that the mark is being placed on your goods, packaging, or displays. When you register an actual-use trademark, you must submit a specimen showcasing how you use your mark. You will also be required to provide the date your trademark was first used in commerce and the date you used it. If you are not currently using your trademark in commerce or placing the mark on your goods, your application filing basis would be an intent-to-use mark. This means your trademark isn’t in use yet, but you fully intend to use your trademark within three years. While you can file the application before using your trademark, you will not be able to register your trademark until you can prove that you’ve started using it in commerce.
- Registering a trademark on my own
Hiring a trademark attorney is not required for those who are domiciled in the United States. To maintain continued US residency, you must keep your current domicile address updated in trademark filings. This is to ensure that a trademark attorney is not required for your application if you intend to file it without the assistance of an attorney. If you are a foreign-domiciled trademark applicant, a U.S.-licensed trademark attorney must represent you. Whether or not an attorney is required for your trademark application, they provide beneficial services that aid in the process. An attorney can offer you legal information about your trademark, provide a clearance search before you file, ensure that your application is prepared correctly (and with the goods and services that represent your business), maintain and conduct legal correspondence with the USPTO, maintain and enforce your trademark rights, represent you at the Trademark Trial and Appeal Board, and protect you from fraudulent solicitations.
- Individual trademark ownership and entity ownership
For application and legal purposes, it is important to consider who will own your trademark. You can own it as an individual or an entity. An individual, sole proprietor, corporation, partnership, limited liability company (LLC), or other entity types can own a trademark. You must ensure that the application identifies the owner(s) correctly.
- Standard character format and special form format
Another important thing to consider is what types of goods and services you are providing. Goods are classified as an actual physical product that bears your trademark. If you perform activities for customers, you have services. Correctly identifying and specifying your goods and services allows you to identify the scope of use clearly. Picking a trademark format depends on what services or goods you want your trademark to represent. The format you choose affects the scope of protection of your trademark. You can choose between standard character format and special form format. Standard character format protects words, letters, numbers, and any combination of those regardless of font style, size, color, or design. Special form format protects trademarks that are stylized, contain designs or logos, or those that are in color. You have the option of filing your trademark in both standard character format and special form format.
- Difference between Suggestive, Arbitrary, and Fanciful Trademarks
Having a strong trademark has many benefits. It distinguishes your property and makes it easier to prevent others from using your trademark without your permission or knowledge. To make your trademark strong, make sure it is suggestive, fanciful, or arbitrary. Fanciful trademarks are invented words used to represent goods and services. A good example of this would be the company ExxonÒ. Suggestive trademarks are words that are indicative of your goods and services. An example of a suggestive trademark is CoppertoneÒ suntan oil. It suggests what the products aim to do: create a tanned skin tone. Arbitrary trademarks contain words that do not have an association with the goods or services provided. An example of an arbitrary trademark would be AppleÒ. While apple is a common word, using it for a technology company makes it arbitrary, strong, and trademarkable. Weak trademarks are descriptive and generic. Descriptive trademarks don’t distinguish your product or service from other providers of similar goods and services. Generic trademarks are common everyday names for items. These trademarks are often rejected.
- State vs. Federal vs. International trademark registration
Knowing what kind of trademark you need for your intellectual property is important. Are you using your trademark in one geographic area? Across state lines? Internationally? Common law rights only protect your trademark within a particular geographic area. If you want a bigger scope of protection, you can register your trademark at the state, federal, and international levels. State registration protects your mark in the state that you register it in and that state only. Federal registration covers your mark throughout the entire United States. For international registrations, there is not a single registry where you can register your trademark. However, the Madrid Protocol is an international treaty that allows you to register your trademark and designate countries you would like to apply to from a list of the 100+ member countries.
TEAS Plus and TEAS Standard Filing Options
In your initial steps to acquiring a trademark, you must choose between two filing options: TEAS Plus and TEAS Standard. You will access these forms from the Trademark Electronic Application System, TEAS. There is a cost difference between TEAS Plus and TEAS Standard, which is based on if you are choosing standard class descriptions or manually created descriptions to indicate your goods and services. The trademark application must include a clear drawing of the mark and a verified statement signed by a person properly authorized to sign on behalf of the applicant. It must also include the date the application was signed, the applicant’s name, Doing Business As (DBA) designation if needed, the applicant’s legal entity, the applicant’s email address and domicile address, a statement stating that the mark is being used in commerce, the identification and classes of the goods/services, and a basis for filing. Depending on the type of form and trademark that you are seeking, there may be additional documents and information that is required for you. You can check the complete list of requirements on the United States Patent and Trademark Office website.
Submitting the Trademark Application
After you submit the trademark application and pay the filing fees, your application is reviewed by an examiner. The examiner will determine if your application meets all the legal and procedural requirements. Then, the examiner will send rejections that require responses and possible amendments to your application. If all rejections and objections are overcome, the examiner will approve your trademark for publication.
How Much Does It Cost To Own a Trademark
The filing fees of a trademark depends on a few variables. If you choose to apply with the TEAS Standard form, it will cost $350 per class of goods and services. The TEAS Plus form costs $250 per class of goods and services. The cost will also fluctuate depending on service fees if you choose to enlist the assistance of an attorney. Online, you can find sites that boast trademarking services for as little as $45 plus the cost of the filing fees. On the other end of the spectrum, a highly specialized law firm can charge $500 per hour plus the cost of filing fees. While the price for an attorney may be higher than filing on your own, the expertise they possess will be beneficial to you on your trademark journey. After your trademark is issued, you will also have to pay to maintain your registration. The cost of maintaining your registration depends on the number of classes in your registration and various statements you may or may not file.
How Do I Confirm Filing and Monitor My Status?
New applications can be seen on the Trademark Status and Document Retrieval (TSDR) system, usually within four to five days of filing. When you file, you will receive a serial number in your filing receipt. You use the serial number to search your application on TSDR. You can also check current processing wait times and view or print documents from your application.
Do I Need To Respond To Office Actions?
Yes. If your application has objections or rejections, you will receive an office action from the examining attorney. If your application is amendable, you must respond and correct the issues by the deadline. If you did not correctly fix the problems, you would receive a final office action stating that your trademark won’t be registered. If you do not respond to office actions by the deadline, your application will be considered abandoned.
How Do I Maintain My Trademark Registration?
There are three things you must do to maintain your registration. You must continually use your trademark in interstate commerce. You must also file your registration maintenance documents and pay the required fees on time. Lastly, you must keep your correspondence information updated. If you do not do these things, your registration will expire or be canceled.
Common Trademarking Problems
Applying for, maintaining, and using your trademark seems like a hefty task. However, if you understand the process, it is likely that your application process will be smoother, quicker, and less stressful for you. If there is anything that you are unsure of regarding the application, be sure to contact the United States Patent and Trademark Office. Some common problems to avoid are identifying the wrong party as the trademark owner in the application, incorrectly identifying your goods and services, your trademark being too similar to an existing trademark, and having a generic or common phrase as a trademark. Some common fixable mistakes include having a trademark that is descriptive, including a person’s name in your trademark without their consent, your trademark consists of a surname only, and that your specimen is the wrong type or doesn’t show use as a trademark. Avoid these common problems, always file timely responses to office actions (or communicate with your attorney regularly. If you would like help in the process of filing your trademark contact us today to book your free consultation. Visit our contact page or send an email to firstname.lastname@example.org. Interested in this topic but rather watch a video? Head over to our YouTube channel @thepatentguru. We post informational videos every week.