Here is a general overview of Federal Trademark law and how we can help protect your company in the “battle of the brands” global digital universe.
Affordable Trademarks by ZipCounsel.com
For just $995 plus government filing fees (depends how many classes you want to be in), we can search your name and submit you for a federal trademark registration. This means we can protect your name, logos, slogans, and other trademarks so that you can get the coveted “R” symbol to market on your goods (ex. t-shirts are popular), or to help you get a “servicemark” (which is basically a trademark for a service as opposed to goods”). This is not LegalZoom or RocketLawyer.com (which are not law firms and cannot give you “legal advice”). This is Vondran Legal a real business, intellectual property and civil litigation law firm. When your assets are on the line, call Attorney Steve! Please fill out the form below to have a IP attorney contact you.
The process can take about 6 months to a year, so you want to get started as soon as possible. Once we get your federal registration, most companies like to have a corporate counsel on their team. We offer low cost intellectual property counsel legal services through our IP Counsel program.
What is a Trademark?
A trademark is basically a word, name, slogan, sound, scent, or symbol that identifies your brand by identifying the source of goods and services. There are both “registered” trademark rights, and “common law” trademark rights (rights acquired by mere use of the mark in commerce, even though the mark was never registered).
There are many different types of marks that can be registered with the USPTO (United States Patent and Trademark Office):
1.Trademarks – a trademark is anything that identifies a company's source of goods (ex. Microsoft is a trademark that identifies Microsoft software products and you can see this mark on all the software products).
There are many different things that can serve as a corporate trademark. For example:
(a) a sound could be a trademark (such as the Intel, NBC, or AT & T sounds/chime) that identify brands;
(b) A logo can serve as a trademark. A symbol (such as the Nike swoosh) can be used as a trademark;
(c) A color (ex. UPS brown or Owens Corning trademark for “Pink” in regard to its fiberglass insulation);
(d) A scent (ex. the scent of yarn);
(e) A name (ex. Ralph Lauren or Tommy Hilfiger)
(f) Product or restaurant trade dress (ex. the shape of a coke bottle or Kentucky Fried Chicken restaurant decor).
TIP: You cannot get trade dress protection on “functional” items. You must stick to the aesthetic features. A related topic is obtaining a design patent on design elements.
(g) Anything else that identifies source of goods can be used as a trademark (get creative).
2. Service marks – a servicemark is a logo, symbol, phrase, word, etc. that is used by a brand to identify and distinguish a service, for example, where there is no product or package to place your trademark on. For example, if I were to try to come up with a service mark for my law firm I might use something like: “Zip Counsel – fast and affordable legal services.”
3. Collective marks – this might come up where you have an organization, associations or co-op that has a mark that identifies and distinguishes itself (for example “CPA” – for Certified Public Accountants).
4. Certification marks – this is used where you have a mark that identifies a certain type of certification (ex. the use of “UL” on electronic goods identifying “underwriting laboratires” as the source of goods/services).
A trademark allows a company to identify their products and services, as customers like to search for the brand in a crowded marketplace in order to get a consistent experience and find and purchase products they love and trust. Studies show companies with trademarks can have much higher valuations than companies without trademarks, and in many cases a trademark is one of a company's most valuable assets.
What are the requirements to get a Trademark?
Aside from wanting to be the first to use the mark in commerce, in order to qualify to get a trademark a mark must be “distinctive.” There are several ways to show your mark is distinctive:
1. Show that the mark is “inherently distinctive“
(a) For example, prove to the trademark examiner that the mark at issue is “fanciful” (consists of made up words – ex. Xerox),
(b) “arbitrary” (mark consists of words used in common everyday language, but used in a unique way – for example “Apple” is a common word, but when used with Apple computers can constitute a trademark.
(c) Show your mark is “suggestive” (meaning there is some leap required by consumers – for example “Coppertone” suggests something to do with tanning in the sun, but there is something left to the imagination.
2. Show that the mark has acquired a “secondary meaning” in the marketplace. This basically means that your mark is known by consumers in the marketplace. Proof of secondary meaning can come from surveys, and showing advertising sustained over a period of time. The trademark applicant will have to be prepared to make a showing of proof on this point. For example:
(a) Show your mark is descriptive and has acquired a secondary meaning (for example, if your mark consists of an adjective such as “Best Software” while this is descriptive in nature, if you can show you have distinctiveness in the marketplace you may still be able to obtain a trademark.
What are some common grounds a Trademark can be denied registration?
There are some marks that the USPTO trademark examiner will not approve. For example:
1. Slanderous or immoral marks (ex. using cuss words, or racial slurs – see Washington Redskins trademark video);
2. Generic terms cannot be trademarked (you can also LOSE a trademark if your mark becomes generic);
3. Purely descriptive terms (with no secondary meaning) cannot get a trademark;
4. Geographically mis-descriptive marks cannot be registered;
5. Marks that create a false impression they are government related (ex. “Federal Software Company”).
6. Surnames (the USPTO does not want people to get a trademark stamping out others from using a common last name). But as mentioned above, some names can be registered.
This is not a complete list but some general things to think about.
What is an office action letter from the USPTO?
If the trademark examiner believes your proposed trademark cannot be registered as a trademark they will send you an “office action letter.” You have a limited time to respond with more information or to rebut the beliefs of the trademark examiner, or to disclaim channels of trade or disclaim terms to try to get approval. We can help you respond to office action letters for a low flat rate fee. Please fill out the form below, or contact us to discuss.
What is the process for applying for a federal trademark?
The following are the general steps of applying for a federally registered trademark:
1. Conduct a trademark search;
2. Decide which classes you want to apply for;
3. Fill out the trademark application;
4. Submit application with the filing fees, providing specimen sample (usually you can expect the review process to take up to four to six months);
5. Respond to office action letters;
6. USPTO publishes the mark in the official Gazette (provides constructive notice to the world and a chance for anyone to object);
7. Notice of allowance and mark is registered.
TIP: If you are never going to use your mark in “interstate commerce” (ex. across the United States) you do not need a federal trademark, and you might want to instead apply for state trademark office, for example with the California Trademark Office. Consult with your intellectual property lawyer to make this determination of which registration is best for you.
TIP 2: You can apply for a trademark whether you are actually using the mark in commerce, or you can file an “intent to use” which will allow you to secure the registration of the trademark on the condition that you prove your use of the mark within 6 months after your trademark is approved. Intent to use applications require a “bona fide” intent to use the mark once it's registered.
Should I perform a trademark search before applying for a Trademark?
Absolutely. Why? Because you don't want to get denied on your trademark application because someone else, or some other company is already using your mark in commerce. If a prior usage exists, the trademark examiner at the USPTO may deny you on the grounds that given the pre-existing use consumers might be confused (called “likelihood of consumer confusion”).
Some of the sources you can search (this is not an exclusive list, but rather just some general guidelines):
1. Search the USPTO trademark site (see if there are active or dead trademarks)
2. Search google (I like to search for example: “+superior +software +company”). I perform a detailed search on google since if there is another company you can likely find them on sites like google, MSN, yahoo, BING, etc.
3. Search WHOIS (see what domains names are out there). If you find a matching or conflicting domain, check out their website and see what they sell or what line of business they are in. If you find an existing company and the conflict is too risky, move on and pick another company name.
There are other commercial websites you can use for a search, but these resources will give you a good starting point.
What are the benefits of getting federal trademark registration?
There are many benefits of having a federal trademark for your company:
1. Registered trademarks command respect and can induce investment in your brand;
2. Companies with trademarks have intellectual property rights and you can start pouring investment into building your brand;
3. A federal trademark puts the world on constructive notice of your IP rights;
4. Having trademark rights allows you to file a federal trademark infringement action;
TIP: If you file a federal lawsuit for trademark infringement you have to prove three things: (a) you are the owner of the trademark, (b) the trademark is valid (inherently distinctive or acquired secondary meaning); and (c) that the Defendant infringed your trademark (ex. causing a “likelihood of consumer confusion”). When you are the holder of a federal trademark, items (a) and (b) are presumed in your favor, which helps in the litigation.
5. The United States Customs Service will stop the importation of goods that infringe your trademarks (ex. counterfeit goods);
6. After 5 years of federal registration, certain challenges and defenses to your trademark will be CUTOFF (meaning it will be harder for anyone to challenge your trademark). Opposing parties will not be able to contest secondary meaning or inherent distinctiveness. Note, however, that certain defenses like having a scandalous or immoral mark, or abandonment will still be defenses to challenge your mark.
TIP: Just because a trademark is registered does not mean other parties cannot contest your mark. One thing we can do for brands is to oppose or seek cancellation of infringing trademarks. Trademark cancellation proceedings can be brought to invalidate the trademark on any grounds that would have prevented trademark registration in the first place.
Do I need to “police” my trademark once it is registered?
You should. You do not want anyone to challenge your marks on grounds of it becoming generic (common), or that you intended to abandon your mark. You also want to prevent infringing uses as a matter of protecting your brand.
Can I get a trademark on my domain name?
There are some circumstances where a domain name can be registered as a trademark, for example where you can show strong secondary meaning. Here is a good explanation of trademarks in domain names from the International Trademark Association.
What is an international trademark?
Basically, trademarks that are federally registered in the United States enjoy protection in the United States only (i.e. trademarks are “territorial” and depend on each county). In order to get federal protection in other countries such as (China, European Union, Italy, etc.) international trademark protection is required. The United States falls under the Madrid Protocol which the United States joined in 2003. There are approximately 84 countries signed on where a U.S. federal trademark holder can apply to receive registration of their marks overseas.
The process can be done through the USPTO teas filing system, and the price will depend on the number of countries you seek to apply for, and you must pay the WIPO (World intellectual Property Organization) fee. The registations are automatically granted unless you get a refusal letter within the first 18 months. If you get a refusal letter, local counsel will need to be quickly hired to fight for your trademark. If you are marketing goods, services, or products in other countries, you would be wise to investigate the prospect of international trademark registration. You can figure on a minimum of a few thousand as far as filing fees are concerned, and you can start with one country and add other countries later through subsequent designations. Keep in mind, if your USPTO federally granted trademark gets cancelled for some reason, your international trademark will also be cancelled.
BONUS: Guide to fees for international trademark registration (WIPO fee calculator).
Our Trademark Services
Our trademark attorneys can help with the following trademark issues
1. State trademark registration (CA and AZ)
2. Federal trademark registration
3. Responses to USPTO “office action letters”
4. Trademark cancellation proceedings
5. Trademark infringement litigation
6. Trademark parody defense
7. Trademark cease and desist letters
8. Fair use defense
9. Cybersquatting lawsuits
10. UDRP domain name disputes involving trademark
11. International trademark registration
To discuss our services, contact us below.
Federal Trademark Resources
3. How to pick a great business slogan (video)
6. Trademark Trial and Appeal Board (TTAB)
7. World Intellectual Property Organization (WIPO)
Contact a Trademark & Brand Protection Attorney
Our firm works hard to protect your brand. We help you protect and defend your trademarks including registering and policing your marks. We offer low hourly fees for our IP counsel services. We can be reached at (877) 276-5084 or by filling out the firm below. We look forward to working with you. To take advantage of special pricing you must mention “ZipCounsel.”