As an experienced trademark attorney, I can handle all of your trademark needs, including thorough searches, search reviews, opinion letters (to let you know whether the trademark you want is likely to be granted), and applications. I also handle trademark licensing, sales, and infringement issues.
What is a Trademark (and How is It Different from My Business or Trade Name)?
A trade name is any name used by a business to identify itself. Having a trade name doesn’t necessarily give any rights in relation to that name.
A trademark is more specific: it is a symbol or word (including slogans, logos and designs) used to identify the source of goods or services, and it gives the owner of the trademark certain rights. For example, the Nike Swoosh logo signifies that the source of the product is Nike.
A trademark generally allows its owner to exclude others from using a confusingly similar trademark. In the U.S., the first user (senior user) of a trademark usually has ownership priority rights over later users in their geographic area.
Trademark protection can last as long as the trademark is used in commerce and as long as the trademark does not become generic (such as the once proprietary brand, band-aid).
The terms trademark, mark, brand and logo are often used interchangeably.
What are the Different Kinds of Trademarks?
A trademark identifies the source of goods; a servicemark identifies the source of services–both are commonly referred to as trademarks. These can be further distinguished as design marks (logos, such as the Nike swoosh) and word marks (such as the word, Nike).
What is the Difference between a Trademark and a Copyright?
Registration of a trademark with the U.S. Patent and Trademark Office (USPTO) protects brand names, designs, or logos that distinguish the goods or services of one provider or manufacturer from the goods or services of another provider or manufacturer. A trademark generally allows its owner to exclude others from using a confusingly similar trademark. Having a registered trademark may also decrease the likelihood that another party will file a trademark infringement lawsuit against you.
Registration of a copyright with the U.S. Copyright Office protects original works of authorship that are in a “tangible medium” – something you can touch or buy. For example, a recording of a song, an oil painting on canvas, or a novel. Copyright protection can be given to many kinds of works, including literary, dramatic, musical, artistic works, and more. Subject to some limited fair use exceptions, the owner of a copyright generally has the exclusive right to reproduce, distribute, perform, display, or license a work and derivatives of the work. For more information on copyrights, see the copyrights page.
What is Trademark Infringement?
Trademark infringement occurs when one party’s trademark (brand, logo or design) creates a likelihood of confusion with the trademark of another party with pre-existing rights. Thus, likelihood of confusion is the legal standard for trademark infringement. This standard is applied through an analysis of various factors from trademark law, including the channel of commerce, the similarity of the marks in terms of spelling, meaning, appearance and sound, and many other factors.
Because trademark infringement can be complex, it is a good idea to consult with an experienced attorney about infringement questions.
How Do I Choose a Trademark?
Choose a trademark that is helpful to you from a business or marketing perspective and a legal perspective.
From a legal perspective, the first user (senior user) of a trademark usually has priority over later users in their geographic area. Therefore, before you invest time and money in a trademark, make sure that the trademark you want won’t be considered confusingly similar to any pre-existing trademarks.
From a legal (and sometimes from a marketing) perspective, trademarks are usually considered stronger or better when they are “arbitrary” or “suggestive”. Weaker or poorer trademarks are usually “descriptive” or “merely descriptive”.
Arbitrary trademarks such as Amazon are the strongest trademarks and receive the highest degree of protection.
Suggestive trademarks such as L’eggs for women’s pantyhose also receive trademark protection.
Descriptive trademarks such as World Book Encyclopedia get trademark protection only if the owner can show that the trademark has acquired significant recognition by consumers.
Merely Descriptive or Generic trademarks are generally not protectable, such as “Athletic Shoes” for a brand of sneakers.
Trademark rights generally come from use of the mark in connection with the sale of goods, or displaying the mark in connection with the sale or advertising of services. A trademark may be applied for on an Intent-to-Use basis or on an Actual Use basis.
What Steps Do I Take to Apply for My Trademark?
Here’s the short version: after you choose a potential trademark, then conduct a trademark search; if the trademark you want is clear, then apply for the trademark.
Because this process can be very complex and a lot can be riding on the outcome, it is usually a good idea to have an experienced trademark attorney help you. To make the process of working with an trademark lawyer more understandable, here is a little more detail:
Search: after you have narrowed down a list of potential trademarks and chosen the one you want, your next step is to have your attorney order a comprehensive trademark search. A comprehensive search covers all existing as well as pending state and federal trademarks. That search typically results in a long report about other trademarks that may be considered confusingly similar to yours.
Search Review: your attorney reviews the search to determine whether the trademark you want is clear (unlikely to be confused with pre-exisiting trademarks). When making that determination, your attorney will consider the channel of commerce, the similarity of the marks in terms of spelling, meaning, appearance, sound, and other factors from trademark law. Since it is generally the case that no trademark is 100% guaranteed to be registered, part of your trademark attorney’s job is to give you an estimate of the likelihood that your proposed trademark is clear and will be accepted.
Application: if the trademark appears clear, the next step is to have your attorney apply for the trademark. The cost of applying for a federal trademark includes a government filing fee of $325 per class of goods or services plus the fees of an attorney. Class, also called International Class, refers to a specific category of goods or services that the proposed trademark falls into–such as clothing or furniture–and these classes have been established by the USPTO. To protect yourself appropriately, it is important that you and your attorney correctly identify which class(es) your goods or services fall under.
A specimen showing how the trademark is actually used in commerce (for example, on packaging for the goods or on labels attached directly to the goods) must be submitted to the USPTO with the application (unless your application is an Intent-to-Use application–more on that in the next paragraph).
Time Frame: once the USPTO receives your application, it generally takes 2 – 3 months before geting initial feedback from the USPTO. If everything goes well, it usually takes 6 – 8 months from the time of application for the USPTO to register the trademark.
Intent-to-Use (vs. Actual Use): if your application is based on Intent-to-Use, rather than actual use, then within 6 months of the date of the Notice of Allowance from the USPTO, your attorney must file a Statement of Use (to show that you are now using the trademark in actual commerce) or an Extension of Time to File a Statement of Use. The filing of the Statement of Use may be pushed back for up to 3 years by filing a Request for Extension of Time to Submit a Statement of Use.
There are many potentially complex issues that may arise during the trademark application process. To get the best possible result, it is important that you find an experienced trademark attorney who you can work well with.
Should I Make Sure Others Don’t Use My Trademark?
As the owner of a trademark, you should monitor whether other businesses are using confusingly similar trademarks. This process is commonly known as policing your mark. In the case of infringement, an attorney may send a cease and desist letter warning infringers to stop their harmful use of a confusingly similar trademark.
Should I Consider an International Trademark?
Since trademark rights are specific to each country, if you are a U.S. trademark owner selling your goods or services overseas, you should also consider registering your trademark internationally (such as in Canada or Europe, for example).