Trademark Attorney Services for Your Philadelphia Business

The top 4 questions Philadelphia businesses have about obtaining a trademark.

Should I register my logo or the word itself

Whenever possible, we recommend protecting both. A “word mark” will protect the word within almost any font or logo and gives a wider protection of the word compared to the logo alone. A logo will protect the design elements of the logo, but it will limit your rights in the word mark to how it appears in the logo, potentially giving others the opportunity to use the same word in a different logo. There is legal strategy involved in this decision too and your trademark attorney can help you decide which is best for you.

How long does it take to register a trademark with the U.S. government?

After you apply, expect the process to take nine to twelve months to complete (potentially longer.) Once you apply, however, everyone else must “get in line” behind you. There are, however, some important milestones. Within three to four months, the government will review the application and either accept it or issue an “office action” with reasons for rejection. If accepted, then it will be processed for another 2-3 months, until it is “Published for Opposition,” a period of time for other companies to object. If no one objects, then in 3-4 months, the registration certificate will issue.

Should I wait until I have firmly established my business before filing a trademark application?

We recommend filing as soon as you start to form a business plan, reach out to vendors, and start pre-sale marketing. Unless you reserve rights, you do not gain trademark rights until you begin to sell products (or render services.) You can reserve rights (for an additional fee) for up to three years to make sure no one else “swoops in” and uses the trademark you wanted to use.

What are “classes” and how do I pick the goods and services to protect?

The US government requires applicants to provide a detailed and specific list of the products and services they seek federal protection for. To do this, first you must select from one or more of 47 different government categories called “International Classes” covering every conceivable product and service. Next you must draft the list of goods and services. This part requires a detailed legal analysis – apply for the wrong thing, your application may be delayed or even denied outright. Apply too broad, and you may get rejected because of an existing registration that is, in truth, not even in the same industry as you. Too narrow, and your registration may not accurately protect your business offers.

Common misperceptions about trademarks heard around Philadelphia, PA.

I did a search of the USPTO’s database and did not find any exact matches. This basic search is sufficient and I should start using my trademark.

Even if you do not find an exact match, you can still be liable for trademark infringement and risk rejection from the USPTO. The USPTO looks at whether your trademark is similar in sight, sound, meaning and commercial impression to other registered trademarks when deciding whether or not your application should be approved. A comprehensive trademark search conducted by a law firm will look these considerations and give you a detailed analysis and risk level.

I purchased a domain-name containing the trademark I plan to use. This gives me sufficient rights in the word or phrase.

Purchasing a domain-name (without more) is not sufficient to gain trademark rights. You must sell products bearing the trademark (for goods) or render services (for services) before you gain trademark rights. Until then, you will not have a protectable trademark.

After my trademark has been registered, the USPTO will notify me of any potential infringement.

The USPTO registers trademarks, but they do not monitor the exclusivity of their use. That is the responsibility of the trademark owner. Many trademark attorneys, however, offer monitoring services to assist you in this effort.

If you find potential infringement, it’s important to take action to stop it. Often, a cease-and-desist letter is all that is needed to put an infringer on notice, but in some cases, more formal legal proceedings may be needed.

I have a popular blog but I do not currently have advertisers. I cannot register my trademark because I am not making money.

While “use in commerce” is a requirement for trademark registration, earning money or selling products is not a requirement. If you have an active readership in the United States, then you may be able to register your blog’s name. Consult a trademark attorney for learn more about the best way to move forward!

I came up with a unique business plan. I should register a trademark to stop other people from using a similar business plan under different names.

Trademarks cover brands, logos, slogans, tag-lines and other things that ‘represent’ a business. It will not stop others from offering the same idea or process under a different name. Potentially, you may be able to protect your idea under patent law, but not trademark law.

I have a clothing boutique in downtown Philly. Because I am still starting out, I should wait to register my trademark.

You should protect your rights as early as possible, through a standard trademark application or through an “intent-to-use” application, which allows you to reserve rights while you launch your business. Moreover, the federal application will provide a presumption of federal ownership in your brand which will make expansion outside of the Philadelphia area less risky.