What is a Trademark?
A trademark is a special legal designation given to a particular symbol to indicate the source of goods or services. The symbol can actually be a word, words, images, sounds, color, fragrance, or style of appearance, aka trade-dress. The TM and ® symbols are often, though not always, attached as super-script to the edge of the symbol. The goal of a trademark is to protect the holder of the mark and the consuming public from marks that are likely to cause confusion or to deceive as to source. A trademark can be registered through the United States Patent and Trademark Office (www.uspto.gov).
How can I get a Trademark?
Trademark protection is derived in part by State law and in part by Federal law. At the both the State and Federal level, registration of the mark provides additional rights and benefits. However, merely using the mark in US commerce, even without registration, grants certain limited rights. A mark must be attached to and associated with the goods or services to be in “use.” There are qualifications on the “use” of the mark. One is that it must be used in US commerce. Another is that the “use” must be bona fide; in other words, not merely token use to try to hold a mark. The “use” must also be lawful. Another basic consideration includes whether the mark even qualifies for protection. For example, deceptively similar marks and marks the USPTO deems scandalous will not be registerable or defendable. An attorney can help navigate these and other pitfalls to the trademark registration process. To register the trademark, an application must be made with the USPTO. All applicable fees must be paid. The applicant must submit the mark as it will appear. This can be a standard character mark – which claims no particular design elements – or a design mark – which claims particular design elements. The applicant must also designate whether the mark is currently being used or if the applicant has a bona fide intention to use the mark. The goods or services must be described according to the International Class of goods and services categories. The description is then further tailored to the specific services and products the mark will be used for. Once submitted, the application will be assigned to an examiner who will then issue communications (know as Office Actions) to the applicant. The applicant must address the issues raised in the examiner’s communications until the application is granted or rejected, or else it will be considered abandoned. The trademark will be published for a period of time in the USPTO Official Gazette, for opposition. This means third parties can make objections to the issuance of a trademark. If no opposition is received, the examiner will send a notice of allowance. To receive the trademark registration the applicant must pay the issue fee along with any other applicable fees. Thereafter, to keep the trademark alive, maintenance fees must be paid periodically.
Why do I need a Trademark?
Protecting your brand is a no brainer. The consumers of your goods and/or services associate your brand with the reputation you have earned. That’s known as “good-will” and it translates directly into market share and sales. If you have earned positive good will, then you want to keep others from stealing that well deserved reputation. Having a registered trademark gives you additional legal options when it comes to defending your brand from infringers, look-alikes, and knock-offs. An important part of those additional legal options includes access to statutory damages for infringement. These kinds of damages are game-changers in pre-litigation decisions. There are other secondary benefits of registering your trademark. First, the process of registration will likely begin with an evaluation of the strength of your mark. A skilled attorney can discuss the factors the USPTO will look at in assessing the relative strength of a mark. Second, the next step of registration is likely to involve a search where you may uncover potential conflicts with your mark. With trademarks, an ounce of rebranding is worth ten pounds of infringement litigation. Third, once registered, others are less likely to attempt to use or register something that is similar to your mark.
How much does a Trademark cost?
The USPTO charges certain fees for registration. See fee schedule here. Some fees can be reduced while others can be avoided outright. A skilled attorney can make sure you are able to take advantage of every discount and draft the application to avoid unnecessary fees. To give an example, the current USPTO fee (at the time of writing) for a basic trademark registration can be reduced from $375 down to $225 just by knowing to file the application electronically in qualifying applications. Additional fees can apply in many situations that are preventable with skillful drafting and sound strategy. To keep a registered trademark, maintenance fees must be paid between the 5th-6th years, the 9th-10th years, and then between every subsequent 9th-10th year thereafter for so long as the mark is being used. An attorney will charge a separate fee for the services they perform. Be clear on what you’re getting for your money. Does the attorney fee include the searching, the application, and prosecution? What if you have a conflict and need to start over with a different mark? Make sure you have a dedicated and knowledgeable attorney at the outset or you might end up paying more to fix things after the fact.