Trademark Registration Lawyer
Intellectual property is one of the most valuable assets a new business can develop, and protecting that asset is always a high priority. Proper trademark registration is an important aspect of growing the value of a brand, and it also protects your legal rights and ensures that value for years to come. Here’s everything an entrepreneur needs to know about trademarks and why you should work with a trademark registration lawyer.
What Is a Trademark?
In the U.S., a trademark is a name, word, phrase, logo, symbol, design, or image that identifies a specific product or service and differentiates it from others. It is used to identify the source of a product rather than the product itself, as in “LEGO brick” or “Ford truck.” It serves as the badge of origin of a product and can thus add value or prestige to a product.
Why Would I Want a Registered Trademark?
Registering a trademark with the appropriate government agency allows the owner exclusive use of the trademark. It prevents anyone else from using the relevant mark and gives you legal options to pursue in the case of trademark infringement. Registering the trademark also prevents the use of other marks that are “substantially similar” to yours and are intended to deceive the public about the product origin, as in “Nyke shoes” or “Proda bag.”
Trademark laws vary widely around the world, and not all jurisdictions recognize and apply trademark law in the same way. However, registering a trademark in compliance with laws in your country helps protect your brand around the world.
Difference Between Trademark and Copyright
The differences between trademarks and copyrights are significant but can sometimes cause confusion. Generally speaking, a trademark protects the brand or company that creates a product, while a copyright protects the product itself. Trademark protects the name or brand of origin, preventing misuse of the brand name. Copyright protects specific original design elements and creative features, preventing the exact copying of a product by a competitor. Many innovators and startup businesses will want both kinds of legal protection when it applies to their work.
Can I Get a Registered Trademark?
Yes, you can get a registered trademark, provided your mark is sufficiently original and complies with the U.S. Trademark Manual of Examination Procedure. In order to register your trademark, you will need to know:
What Type of Trademark You Want to Register
You can choose a “standard character” trademark — a plain text word, like “Porsche,” with no special characters or design attributes — or a “special form” trademark. This may include a graphic element like the Nike swoosh, a specific typeface, a special character, or a specific color.
For the greatest protection, most companies file separate trademark applications for the standard character, special form, graphic logo, slogan, jingle, and every other specific mark of their brand.
The Specific Class of Goods and Services You Want to Protect
In most cases, registering a trademark protects your brand only within the scope of your class of services. For example, Dove Soap and Dove Chocolate are both allowed to use the “Dove” name, because their products and consumer base are so different. Famously, Apple was allowed to use that trademark for computing devices until they launched iTunes, a music service that competed with the existing Apple Music trademark owned by the Beatles, leading to a lawsuit.
Once you have filed your initial trademark application, you cannot expand your trademark to cover additional goods or services; you can only reduce protected goods and services over time. To add new goods or services to an existing trademark, you must file a new trademark application with the new classes. Entrepreneurs should make sure that their initial trademark filing covers all their core services, as well as any planned expansions.
Your Filing Basis
Your filing basis is the intent or reason you are registering the trademark. In the U.S., the use in commerce, or intent to use in commerce, is the most common filing basis. Each filing basis has a separate procedure and different requirements.
Before filing, you are required to search the U.S. trademark database to ensure that there is no existing registered trademark that is identical or substantially similar to yours. If your trademark is likely to be confused with another, your application will likely be rejected.
Do I Need a Trademark Attorney to File a Trademark Application?
You do not need a trademark attorney to file a U.S. trademark application if you are an American person doing business in the United States. That said, it is highly recommended to consult with a trademark attorney before registering because the legal issues can be very complex and because registering a trademark is crucial for your brand, products, and business. It is critical to understand what you are and are not protecting, what rights you are reserving, and how these rights affect your brand and company going forward.
Note that foreign-domiciled businesses and registrants must be represented during the U.S. trademark application process by a trademark attorney licensed to practice in the United States.
How Does the Trademark Registration Process Work?
Generally speaking, the trademark registration process requires you to complete the United States Patent and Trademark (USPTO) application form online and pay the applicable fees. After you file your application, the basic process is as follows:
- USPTO review. The USPTO will review your application for compliance with trademark rules and is sufficiently unique.
- Letter of action. If the reviewing attorney finds your application insufficient, they will issue a letter explaining the requirement or refusal. You have three months to respond to the letter or file an extension for a later response.
- USPTO approval and publishing of your trademark. If your application is complete and approved, the USPTO will publish your trademark.
- Opposition period. After publishing, there is a 30-day period when other entities may file an opposition if they believe your new trademark will harm their brand. If someone files an opposition against your trademark, a hearing will be held. It is highly recommended to work with a trademark attorney during an opposition hearing.
- Notice of Allowance is issued. If your trademark is not opposed during the 30-day period, the USPTO will issue a Notice of Allowance. You then have six months to file a Statement of Use (SOU)
- The SOU is filed. The Statement of Use is an example of the trademark exactly as it will be used in commerce, along with a declaration on behalf of the mark owner indicating that the trademark is in use in commerce. There are also fees associated with filing this form.
- The SOU is reviewed. If no SOU is filed, the trademark application process is considered to be abandoned, and the mark is not protected. When submitted, the SOU is reviewed for compliance. If the SOU is approved, your trademark is approved.
- The trademark is registered. After the SOU and the trademark are approved, the trademark will be registered with the USPTO.
Registering a trademark can be a complex, lengthy, and expensive process, even for applications that are straightforward and simple. When matters become more complex, the process can take years.
How Long Does it Take to Register a Trademark?
It takes so long to register a trademark that the USPTO keeps a page of current wait times. According to their current statistics, it takes an average of 22.8 months from initial application through final trademark registration.
How Much Does a Trademark Registration Cost?
There are several costs and fees associated with U.S. trademark registration, and not all of them apply to every application. Here is an overview of trademark registration costs and fees:
- Initial application fee. This will be $250 or $350 per class of goods and services.
- NOA extension fee. If you have not yet used your mark at the time of receiving the NOA, you will need to request an extension and pay a fee of $125 per class of goods or services.
- SOU filing fee. The Statement of Use filing fee is $100 per class
- Abandonment fee. If you abandon the registration process and wish to continue it, a fee of $150 will be charged.
- Maintenance fee. Trademark maintenance fees cost between $225 and $1225 per class every fifth year of trademark ownership.
Remember that you need to file an individual application for each type of mark that you want to register, and you may need to file individually for different classes so these fees can add up quickly.
What Are the Steps to Maintaining a Trademark Once it’s Filed?
Once registered, trademarks must be maintained. Every fifth year after registration, you are required to file a “Section 8 Declaration” that indicates that your trademark is still in use in commerce, along with an example of that use. Every tenth year, you must file a combined “Section 8 and Section 9 Declaration” that indicates continued use of the trademark and a renewal of the trademark ownership.
How Can the Fridman Law Firm Help?
Because the U.S. trademark process is so long and complex, and because the stakes for your brand and your company are so high, it is essential to work with a trademark registration lawyer to understand how to protect your company and how the trademark fits into your I.P. portfolio.
The team at the Fridman Law Firm are experts in intellectual property and can help you protect your company and your brand. Contact us online today or call 212-262-9823