How a Trademark Can Protect Your Brand

by | May 26, 2017 | INTELLECTUAL PROPERTY | 0 comments

When building a new business, the importance of a brand should not be underestimated. Proper branding allows customers to find and recognize your products, as distinguished from competitors and knock-offs.  The United States Patent and Trademark Office (USPTO) offers protection to brands through the use of Trademarks. In American commerce, Trademarks are an important tool, offering protection against copy-cat or knock-off competition.

What is a Trademark?

Trademarks are used in commerce to identify and distinguish the source of the goods (or services) of one party from those of another.  Trademarks can include words, phrases, symbols, designs, or a combination.

Trademarks should be distinguished from Patents, which protect new and useful inventions, and Copyrights, which protect original expressions (generally artistic or literary).

How to obtain a Trademark?

To obtain protection a Trademark Registration Application must be filed with the USPTO.  The application costs vary by type of goods or services, but generally run around a few hundred dollars.

The application must be filed in the name of the owner of the mark. The owner is the individual, corporation, partnership, LLC, etc. who controls the nature and quality of the goods/services associated with the mark. In addition, all applications must include:

  • Name and Address for Correspondence
  • Depiction of The Mark (“The Drawing”)
  • Goods/Services
  • Application Filing Fee
  • Basis for Filing
  • Specimen for Use-Based Applications
  • Signature

Once submitted, you will receive an application “filing date,” which serves as a virtual placeholder giving your mark priority over any marks subsequently filed.

Approximately 3 months after filing, an examining attorney will be assigned to review the application to determine whether the mark can be federally registered.  The examining attorney may issue an “Office Action” letter explaining any additional requirements or reasons for refusal of the registration. The entire registration process can take a year or longer depending on the basis for filing and completeness of the application. Any Office Action issued must receive a response within 6 months to avoid abandoning the application and registration fee.

Once the examining attorney has approved the mark, a Notice of Publication will be issued, informing you of the marks pending publication in the Official Gazette(OG), a weekly online publication. The notice will be sent approximately 3 weeks prior to the publishing date. There is a 30-day period following publication where members of the public may file an opposition, objecting to registration of the mark. If no opposition is filed, the USPTO will generally issue registrations within 11 weeks for marks already being used in commerce.

Other applications, for marks that are “intended to be used” in commerce, must subsequently begin using the mark in commerce and submit a “Statement of Use” to the USPTO. The USPTO will only officially register Trademarks that are being used in commerce.

How long does a Trademark last?

In general, a Trademark lasts as long as it continues to be used in commerce, to identify goods or services. Registration with the USPTO lasts for a period of 10 years. However, the USPTO also requires an affirmative renewal between the 5th and 6th years after registration, stating that the mark is still being used, or else the registration is cancelled.  Trademark owners are not reminded of this deadline and must proactively ensure that their mark continues to receive protection beyond the 5th year.

Once renewed, the registration continues until it must be renewed again 10 years after the initial registration.  All renewal periods last for 10 years and a Trademark can continue to be renewed as long as it continues to be used in commerce.

How will a Trademark help me?

While registering a Federal Trademark is not necessary, it can provide several important benefits including:

  • A Presumption That You Own the Mark and The Exclusive Right to Use It in Connection with The Registered Goods or Services Nationwide.
  • Public Record of Your Ownership Claim to The Mark.
  • Listing in The USPTO’s Online Database.
  • Ability to Prevent Importation of Infringing Foreign Goods.
  • The Right to Use the Federal Registration Symbol “®“.
  • Ability to Bring a Trademark-Related Action in Court.
  • Ability to Gain Registration in Foreign Countries Using the U.S. Registration

If your Trademark is not yet registered, you can use the “TM” designation for goods, or “SM” designation for services.

What should I consider when selecting a Trademark?

The most common reason for a Trademark application to be denied is a “likelihood of confusion” with other marks already registered or pending. It is important to perform a thorough trademark search before pursuing a Trademark application. Marks do not have to be identical to create a likelihood of confusion. Marks that look or sound alike, as well as marks that give the same general impression, may not receive protection. Confusion will only exist if the goods or services associated with the mark are related. Therefore, similar marks may be registered for unrelated products or services.

In addition, strong trademarks are easier to protect than weak ones. Strong trademarks include fanciful, arbitrary, and suggestive marks. Fanciful marks are generally invented words, without meaning (“Teralico” for phone services). Arbitrary marks have a meaning but no relation to the goods protected (“Apples” for a dog groomer). Suggestive marks “suggest” a connection to the goods or services (“Suds & Buds” for a bar).

Descriptive marks, on the other hand, are considered weak and do not receive protection as easily (bike symbol for a bike shop). Marks that are “merely descriptive” cannot be registered, and therefore cannot be protected, until they have acquired distinctiveness. Descriptive Trademarks generally acquire distinctiveness through five-or-more years of extensive use in commerce.

Generic marks are not protectable and will never be registered by the USPTO (“Bagel Shop” for Bagels). In addition, names of people, geographic origins, and offensive/disparaging marks will not be protected.

Are there any negatives to filing a Trademark?

Trademarks are not free. While Trademarks are generally cheaper than Patents, each application and renewal comes with associated costs. These fees are generally limited to a few hundred dollars; however, an unsuccessful application can waste precious resources.

In addition, the Trademark owner will need to provide proof of continued use at regular renewal intervals in order to maintain registration.

Finally, the trademark registration process is a legal proceeding that requires precise action and adherence to strict deadlines. Consider hiring an Attorney before beginning the process to avoid costly mistakes. Any information that you submit to the USPTO will become public record and remain permanently searchable in USPTO online databases, Internet search engines, and other databases. This can include your name, phone number, email address, and street address.

If you’re considering a Trademark Registration, contact our office or a local attorney today.

 

 

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