Archives For January 2016

Understanding how to protect your brand and avoid infringing trademarks owned by other businesses can be complicated at times. But, for every startup and small businesses out there, understanding trademark law is critical to building a successful brand.

In this post we will cover a lot of ground and focus on the six topics below.

  1. Trademark Law
  2. Don’t Pick a Generic or Descriptive Mark
  3. Researching Trademarks
  4. Trademark Applications
  5. Post-Application Filings
  6. Post-Registration Filings

1. Trademark Law

A trademark is a name, slogan, or other mark that serves as a source identifier. That means consumers can purchase a good or service and rely on the trademark attached to it as an identification of who is selling that good or service.

To get trademark rights, you first need to use your mark in commerce. Once you use your mark in commerce, you gain a “common law” trademark that you can enforce in court. Of course, it is always a good idea to register your trademark with the United States Patent & Trademark Office for better protection. For example, a federal registration can help you protect your mark throughout the entire country rather than just in the geographical areas in which you are using your mark.

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2. Don’t Pick a Generic or Descriptive Mark

When picking your name, be sure to pick something that is not generic or descriptive. That’s because generic and descriptive marks cannot be protected. As an example, if you want to open a barbecue restaurant, don’t call it BBQ Shack because you will not be allowed to own those words in connection to the sale of barbecue. If you could, other companies would be prohibited from using those words to describe their business.

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3. Researching Trademarks

Before you use a mark in commerce (and certainly before you file a trademark application) you should do some research to see if anyone else is using the mark in association with similar goods or services. That’s because, generally speaking, the first person to use a mark will be deemed the owner of that mark.

You should look for anyone using an identical mark or any mark that is confusingly similar to your mark because trademark protection extends to any mark that might confuse consumers. Further, your search should mostly focus on other marks being used on similar goods and services to your goods and services. That’s because trademark rights are specific to a type of good or service (think Delta Airlines v. Delta Faucets).

Once you have confirmed that no one else is using the mark you want to use, you can move on to an application.

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4. Trademark Applications

When you are ready to file your application with the USPTO, you can do so online. While anyone can file for an application, using an attorney is highly recommend (read more on that here). The application process includes completing the form, identifying the goods or services you will sell under your mark, submitting a specimen showing your use of the mark in commerce, paying the application fee, and submitting your application.

We’ve covered all of those topics a lot on this blog. Read more about them at the links below.

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5. Appealing a Denial

After you file your trademark, you may receive various correspondence from the USPTO (and you’ll probably get some spam too). Some of those communications will be simple requests to disclaim a portion of your mark (meaning you won’t claim protection for that word) or to correct your identification of your goods or services.

Unfortunately, your application may be denied. If that happens, you should read out post What You Should Do If Your Trademark Application Is Denied. Sometimes you can overcome the denial, sometimes you can’t.

If you don’t appeal the denial, or if your denial is not overturned on appeal, your application will be deemed “abandoned.”

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6. Post-Registration Filings

If your application is approved, you will receive a federal trademark registration certificate. But don’t forget to keep up with post-registration filings. The most important filings occur five years after your registration date, ten years after your registration, and every ten years thereafter. We’ve covered this on our blog before and you can read more at the links below.

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That’s A Lot! But Mighty Marks® Can Help

Our online trademarking service helps startups and small businesses obtain federal trademark registrations.

Learn more at www.mightymarks.com.


Image: Adobe/Rawpixel.com
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

A common question many startups and small business owners ask is how much will it cost them to get a trademark registration with the United States Patent and Trademark Office (the USPTO).

Generally speaking, most applicants will spend several hundred dollars on the application, plus additional fees for lawyers and search companies. In this post we will break that down.

USPTO Application Fee

Depending on which application you file, you will likely pay $225, $275, or $325. The cheapest option, $225, is only available if you use the USPTO’s online application process and agree to use a pre-approved goods/services description. In most situations, you will be able to do that.

If you cannot use a pre-approved goods/services description, then you will most likely end up paying $275. To get that rate, you must agree to use the online application process, but most people prefer that anyway. However, if you need to file using a paper application, then you will pay the highest rate, $325.

Keep in mind, however, that if you file an Intent to Use Application (sometimes called a 1(b) application), then you must pay an additional $100 at a later date when you file your Statement of Use (evidence showing actual use of your mark in commerce).

Trademark Search Fees

Although you can perform your own trademark search, you are usually better off using professional help to make sure you have superior rights in the mark you want to register. Sometimes the attorney helping you file the application has the tools necessary to perform the search. But other times they will recommend a third party perform the search. In either event, it is likely to cost you at least $300 to obtain a professional trademark search and sometimes a lot more depending on what you want to search.

Although it can be expensive, performing a search is a good idea because it can prevent a lot of headaches down the road if you try to protect a mark which someone else is already claiming.

Trademark Attorney Fees

You will also likely want to hire an attorney to assist with your search and your application. There are many benefits to hiring an attorney to help. First, an attorney can help you decide whether you can even protect your mark in the first place (because some marks cannot be registered). Second, they know the ins and outs of the application and can increase your odds of getting the application approved. Third, they understand what to look for in a trademark search and might spot something you might miss. Fourth, if your application is denied, you will absolutely want legal assistance to respond to the denial and having an attorney assist you from the start will be better than bringing in an attorney later. And there are more benefits, but that’s for another post.

So what will they charge? It depends. Some will charge you over $1,000, while many will charge you less depending on the work load involved. For example, at mightymarks.com we charge a $495 fixed fee to provide counsel, research, an opinion, and to draft the application.

The Total Cost

In the end, if you obtain a professional search and get legal help, you will likely spend between $750 and $1,500 to get your application drafted and filed. But also note that if the application is denied, most attorneys will charge extra for time spent handling an appeal (if you appeal).

Want to Get Started?

If you want to file a federal trademark application, we can help! Just head over to mightymarks.com to learn more.


Image: Adobe/gustavofrazao
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.