If you do not find the answer to your your burning Trademark question below, send your question by email to Scott.Herron@summitlegalsolutions.com
Summit Legal Solutions offers Trademark help in every U.S. State.
Why should I bother getting a Trademark?
First, a Trademark will protect your valuable brand from being knocked-off by competitors. A registered Trademark will put teeth into the enforcement of your brand protection.
Second, if you register your Trademark, then you will know that you are not accidentally infringing on another's Trademark. If you do infringe on someone else's Trademark, that could cost you big in legal fees and damages. Even worse, you might have to rebrand your business products or services. Imagine new letterhead, new website, new labels, new brochures. Trademark infringement can get pricey quickly. You do not want to be the one bitten.
Third, there are ways to monitor and enforce your Trademark rights against infringers. With that, we can help!
What is the difference between a Trademark, copyright, and patent? Trademarks, copyrights, and patents each protect different types of intellectual property. A Trademark generally protects words, slogans, colors, sounds, and graphic designs (such as logos) used on products or services. In contrast, a copyright protects literary works and works of art such as books, photographs, and music. A patent protects an invention.
What is the difference between a Trademark and Tradename?
A Trademark generally protects the words, slogans, graphic designs, and symbols used to distinguish products and services in the marketplace. A tradename usually is the name under which an individual, partnership, Limited Liability Company, or Corporation does business. A Tradename may be a Trademark, but a Trademark is not necessarily a Tradename.
What is a trade secret?
A Trade Secret is intellectual property that you want to protect but it either (1) does not lend itself to Trademark, Copyright, or Patent protection or (2) you have strategic business reasons to protect the information through other means.
A secret recipe provides one example of intellectual property that does not lend itself to Trademark, Copyright, or Patent protection. Trademarks do not cover material such as recipes. Copyrights do not adequately protect recipes because a copyright protects the particular expression of an idea but not the idea itself. Recipes are generally not patentable.
So, protecting the intellectual property as a Trade Secret is a common option. This frequently involves non-disclosure agreements and other mechanisms for protection of the Trade Secret.
I registered my company name with the state, so my business name is protected. Right?
Your business name is not necessarily protected just because it is registered with your Secretary of State. Your registration may prevent others from registering an identical or very similar name at the state level, but it does not stop a competitor from using the name in other states or in other ways that might interfere or conflict with your business. A competitor could even try to stop you from using a registered business name if that name creates a likelihood of confusion with the competitor’s Trademark.
Do I need to register a Trademark for my business name?
The short answer is No. There is no requirement to register a Trademark for your business name.
However, it often makes sense to protect your overall brand and secure that extra value in your company. Keep in mind that just because you have a business registered with your Secretary of State, that does not prevent others from using the same name in their marketing or naming of a business in another state.
Do I need to register a Trademark for my Domain Name?
Like registering a business name with the state, securing a domain name for your business does not protect your brand or Trademark. Furthermore, registration and use of a domain name do not qualify the domain name for registration as a trademark. Also, just like registering a business with the state, registering a domain name with a domain name registrar does not give you any Trademark protections and you could be infringing on someone else’s Trademark. If so, you could be forced to surrender your domain name because of such infringement through the Uniform Domain-Name Dispute Resolution Policy (UDRP) to which every registrar and registrant are parties.
What is the difference between a Trademark and a Servicemark?
A Trademark applies to a product whereas a Servicemark applies to a service. For example, you would Trademark a brand of soda and Servicemark a beverage distribution service. A Trademark is not always a Servicemark but a Servicemark is always a type of Trademark. If in doubt, go with a Trademark.
Why should I register my Trademark?
You can use your Trademark and protect from others using it without federal registration. However, federal registration is usually a good thing to do because a registered Trademark gives constructive notice to others that you own the rights to that Trademark. A registered Trademark discourages others from using your Trademark and makes it easier for you to protect against infringement of your Trademark by others.
How do I know if a Trademark is already taken?
You will need to do a thorough Trademark search. The starting point is the United States Patent and Trademark Office TESS system. Better searches involve both algorithmic and human searches of other databases and the Internet for potential conflicts with your potential Trademark. It is important to catch such conflicts before you invest too much time, effort, and money into a particular Trademark. This is frequently where hiring a good Trademark attorney can save you money and hassle in the long run.
Why should I hire an attorney to register my Trademark?
An attorney who practices Trademark law will likely save you from costly mistakes and lengthy delays in the Trademark application process. An attorney will provide legal advice before, during, and after the application process. One key benefit of an attorney is the comprehensiveness of the Trademark search that goes well beyond the publicly available search provided by the USPTO. A thorough attorney will go beyond the USPTO search and include state registrations and common law usage to reduce your chances of rejection by the Trademark office.
See Fixable and Non-Fixable Trademark Application Mistakes below.
What are Common Trademark Application Mistakes?
Trademark application mistakes come in basically two varieties: Non-Fixable Trademark Application Mistakes and Possibly Fixable Trademark Application Mistakes.
Either type of Trademark Application mistake will result in an Office Action from the USPTO. You may or may not be able to fix the mistake depending on the nature of the mistake.
Common Non-Fixable Trademark Application Mistakes:
1) You listed the wrong owner in the Trademark application. 2) You did not correctly identify your goods or services. 3) Your Trademark is generic or in common use. 4) Your Trademark conflicts with a registered Trademark (or an already applied for Trademark).
If you make a "non-fixable" Trademark Application Mistake, you will need to start the process all over. So, non-fixable mistakes are definitely costly in terms of both time and money.
Common (Possibly) Fixable Trademark Application Mistakes:
1) Your proposed Trademark is merely descriptive. 2) Your proposed Trademark uses another person's name without permission. 3) Your Trademark is merely someone's last name. 4) The specimen for your proposed Trademark is the wrong type or does not show the proposed Trademark in use.
Even fixable mistakes can be costly and time consuming to correct.
Summit Legal Solutions can help minimize the possibility of costly mistakes.
You may choose two fee options when registering your Trademark: TEAS Plus or TEAS Standard. TEAS Plus is $250 per class of goods or services. TEAS Standard is $350 per class of goods or service. The fee is for each application and each class. So, if you have one Trademark to file for two different classes, the fee would be $500 (TEAS Plus) or $700 (TEAS Standard). Other fee structures apply for intent-to-use applications, extensions, and other circumstances you may encounter.
If you hire an attorney, you will also have legal fees. Summit Legal Solutions provides Fixed Fee pricing for Trademark registration and other legal services. Unlike the traditional retainer model, with fixed fee pricing, you know the cost going in with no surprises. See our Trademark fees.
How long will it take to register my Trademark?
It will probably take about six-months to a year to register your Trademark.
Many entrepreneurs are surprised at how long it takes to register a Trademark.
Why does it take so long to register a Trademark?
First, the USPTO processed between 500,000 and 750,000 Trademark applications in 2020. Because of the high volume of Trademark applications, it may take three-months or longer just for an Examining Agent at the USPTO to even begin working on your application.
Second, assignment is just the first step in the Trademark registration process. After you have an Examining Agent assigned, the USPTO evaluates your application and looks for problems. Problems frequently delay applications.
Third, your mark will be published in the Trademark Official Gazette to notify the world of your pending Trademark. This gives others an opportunity to challenge your mark. Savvy companies monitor the Trademark Official Gazette for possibly conflicting marks.
Even after publication and after the thirty-day window and no objections, it may take a few months for the USPTO to finish your application and register your Trademark.
That timeline could be even longer if you start with an Intent to Use application or the USPTO issues hard to address Office Actions.
How long will my Trademark last?
Indefinitely—as long as you maintain the Trademark.
Your Trademark registration will last for 10-years but you must file documentation at around the 5- or 6-year mark and renew your Trademark registration for each 10-year period. Use it or lose it; furthermore, you must keep using the Trademark or you will lose your Trademark protection. Properly maintaining your Trademark registration can keep your registered Trademark alive indefinitely.
Do I use the TM symbol or ® symbol?
The TM symbol is used for Trademarks that are not registered. You may only use the ® symbol for federally registered Trademarks.
What is the difference between TEAS Plus and TEAS Standard?
TEAS Plus restricts you to choosing a description of your goods or services from a standard list. In contrast, TEAS Standard allows you to write your own description of your goods or services.
Do I need to Trademark my logo?
Maybe. If you want to protect the graphic design and not just the words behind your brand then, yes, you should Trademark your logo.
Can I Trademark words or graphics if someone owns other Trademarks that are similar?
It depends (See “Likelihood of Confusion” below). If your proposed Trademark is in a completely different class of goods or services from a similar name, and the similar name has not achieved a level of notoriety, then you can probably obtain a Trademark. If your similar Trademark is in the same class of goods or services, then the USPTO would very likely reject your application. If your similar Trademark would be likely to cause consumer confusion over the source of the good or service, then the USPTO would likely reject your application.
What does “likelihood of confusion” mean?
Your Trademark must comply with all the federal rules and laws. One of the most frequent reasons the United States Patent and Trademark Office (USPTO) rejects an application is “likelihood of confusion.” Likelihood of confusion exists when your mark is similar to another mark and goods or services are so closely related that consumers are likely to believe them to be from the same source.
For example, if you started a Tea and Crumpets business and named it Star*Biscuits, the USPTO might reject your application for Star*Biscuits as a Trademark because it is confusingly similar to a certain coffee retailer.
Can I Trademark a photographic likeness of a person?
Generally, the answer is no.
You cannot Trademark a photographic likeness of a person. But wait! What about Elvis or Colonel Sanders? Do they not have Trademarks on their photographic likenesses? Yes. These photographic likenesses developed a connection to the associated good or service organically and overtime.
If you try to start with a photographic likeness that does not already have some consumer awareness and connection to a particular good or service, you will not likely be able to register that photographic likeness as a Trademark.
You may register a copyright of a photographic likeness under some circumstances such as if you are the original photographer.
Can I Trademark my own name or someone else's name?
But wait a minute! What about McDonald’s or Jack Daniels? Similar to photographic likeness, a name may become a registered Trademark after it has already acquired some secondary meaning beyond the name itself.
What is an “Intent to use” Trademark application?
You would file an “Intent to Use” Trademark application if you do not yet have your good or service in the stream of commerce. In other words, you have not yet made your goods or service available for sale. An Intent to Use Trademark application may be a good idea if you anticipate having your good or service on the market within six months (extensions are possible). If you do not show use by the deadline or file an extension, your application will be considered abandoned by the USPTO.
How do I respond to a USPTO Trademark Office Action?
An Office Action is an official written notification by the USPTO that specifies any legal problems with your application. You must respond to the Office Action by the deadline given in the Office Action letter. The response needed varies by the type of Office Action.
If you need help responding with an Office Action, Summit Legal Solutions can help.
Through the life of your Trademark, you must monitor and enforce your rights in the Trademark. That means keeping tabs on new Trademark applications, state registrations, and common law usage of Trademarks that might conflict with yours.
And, you need to take action when you discover someone infringing on your Trademark. Commonly, the first step is a Cease and Desist letter. With that, we can help.
What is an International Class?
International Class is the primary classification system for Trademarks in the United States. Below are the International Classes for Goods and Services.
GOODS 001 Chemicals 002 Paints 003 Cosmetics and Cleaning Preparations 004 Lubricants and Fuels 005 Pharmaceuticals 006 Metal Goods 007 Machinery 008 Hand Tools 009 Electrical and Scientific Apparatus 010 Medical Apparatus 011 Environmental Control Apparatus 012 Vehicles 013 Firearms 014 Jewelry 015 Musical Instruments 016 Paper Goods and Printed Matter 017 Rubber Goods 018 Leather Goods 019 Non-metallic Building Materials 020 Furniture and Articles Not Otherwise Classified 021 Housewares and Glass 022 Cordage and Fibers 023 Yarns and Threads 024 Fabrics 025 Clothing 026 Fancy Goods 027 Floor Coverings 028 Toys and Sporting Goods 029 Meats and Processed Foods 030 Staple Foods 031 Natural Agricultural Products 032 Light Beverages 033 Wines and Spirits 034 Smokers' Articles
SERVICES 035 Advertising and Business 036 Insurance and Financial 037 Construction and Repair 038 Communication 039 Transportation and Storage 040 Material Treatment 041 Education and Entertainment 042 Computer, Scientific and Legal 043 Hotels and Restaurants 044 Medical, Beauty and Agricultural 045 Personal