One of the first steps you should take to protect your brand is to file a trademark on items such as your name, slogan and logo. This is done by submitting a trademark application to the United States Patent and Trademark Office (USPTO). You (or preferably your attorney) can file a trademark through an online portal on the USPTO website. The USPTO website also hosts a variety of important information, including tutorials about how to file a trademark, how to choose what type of trademark application to file, and a list of fees associated with the different applications. This article will go over important items you should consider when filing a trademark.
Do you need an attorney to file a trademark?
You are not required to retain an attorney to file a trademark with the USPTO, however, the filing of a US trademark application is a legal process and it is highly recommend that you hire an attorney to assist with the application process. A recent study conducted by the University of North Carolina School of Law (UNC) found that only 57% of people who filed a trademark without using an attorney received government approval on their application. That being said, 83% of the people who used an attorney got approval.
Furthermore, the USPTO highlights several reasons why making the investment to retain an attorney now, may be worth it in the long run. Several benefits to hiring an experienced trademark attorney to file your trademark are outlined below.
Conducting a Trademark Search- Although the USPTO’s Trademark Electronic Search System (TESS) is available to search for trademark applications and registrations, this is not a comprehensive list of potentially conflicting marks. A trademark attorney can conduct a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before you file your application. This type of search is important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered, and therefore would not show up in TESS. Also, the USPTO considers sight, sound, meaning and overall commercial impression when analyzing trademarks, so an exact search of the database will not show the entire picture.
Ensuring Your Trademark is Filed Correctly- Identifying the types of goods and services your business is, or plans to provide is an important aspect in securing federal trademark rights. If the application misrepresents your business’ goods and services, this could compromise your trademark rights once registered.
Responding to Office Actions or Refusals- Although a USPTO examiner can assist you in understanding an office action issued on your trademark filing, it is important to keep in mind that this attorney is an employee of the USPTO. He/she cannot give you legal advice specific to your trademark filing, including what to do if you receive an office action or refusal on your application. Hiring a private attorney is extremely important to ensure that your trademark application continues to move through the process smoothly if an Office Action is issued on your filing.
Policing and Enforcing Your Trademark Registration- Once you have secured a federal trademark registration, it is the responsibility of the trademark owner (you) to police and enforce your rights. A trademark attorney can provide monitoring services to ensure others are not infringing your trademark rights, and suggest ways to respond to potential infringers.
Legal decisions being made when filing a trademark
If you choose to file your trademark without the assistance of an experienced trademark attorney, there are several legal decisions that need to be made that, if done improperly, could adversely affect the validity and enforce-ability of your trademark rights. Before filing your trademark, be sure to consider the following…
Ownership of Your Trademark- Establishing the proper chain of ownership is key to creating a solid foundation for your trademark application. If you choose to file a trademark with a corporate entity as the owner, first confirm with the state department or department of commerce in the state in which the entity is organized that the entity is active and in good standing. If you file a trademark in the name of a company that does not exist your trademark filing could be void from the start (and the resulting registration worthless).
Proper Identification- Properly identifying the goods and services connected to your mark is a significant aspect of filing your trademark application. Although the USPTO provides an online ID manual to guide trademark filers in assessing which classes your goods or services would fall within, unknowingly misidentifying your goods or services could ultimately limit the scope of your trademark rights. Furthermore, depending on the industry or type of product/service, there might be additional requirements you must meet. For example, an author must have published at least two different books to be able to claim books in the list of goods associated with his/her trademark filing.
Commercial Use (or Not)- Typically, trademark rights are established by using the mark in commerce. Claiming “use” as the basis for your trademark filing requires that the goods and services claimed in the filing are actually being sold or offered in connection with your trademark. Another option available when filing a trademark is to file an application based on an “intent to use” the mark. Filing an “Intent to Use” trademark requires an additional filing following the USPTO’s initial approval of your application, at which point you must prove that your mark is being used in commerce in connection with all the goods or services identified in your original filing. If you are not actually selling all the listed products or offering all the listed services when you submit your proof of use, the resulting trademark registration could be cancelled for non-use (if it was just a mistake) or, even worse, you could be found to have fraudulently signed a sworn statement you knew (or should have known) wasn’t true.
Proving “commercial use” requires legitimate sales of your product or service to real customers (not friends, family, or co-workers outside of the normal course of business), and these sales must be made across state lines or to out-of-state customers. Furthermore, determining the minimum amount of sales sufficient to prove use can vary based on the type of industry, or products being sold.
Proper Specimens- Whether filing a trademark based on “use” or “intent to use” the USPTO requires that you submit a specimen demonstrating that your mark is being properly used on or in connection to your product or service in each class identified in the filing. Establishing proper “use” is based on the number of issues, as discussed above. However, with the above in mind, once your business is operational and has regular customers or clients, a basic screenshot of the website where the service or products can be purchased may be sufficient, so long as the trademark is prominently displayed. If your trademark is associated with a product, generally a photograph of the product, with the trademark clearly visible on the product, packaging, or hang-tag is also necessary to act as a proper specimen. Remember, at this point in the process, your application has been approved, but your trademark has not been officially registered. The specimen must not contain the registered trademark symbol, ®. The USPTO may reject a specimen which improperly and prematurely uses the registered trademark symbol. Instead, you can use the ™ symbol to indicate that your mark is functioning as a trademark while you wait for the USPTO to issue a final certificate of registration.
DISCLAIMER: Please note the foregoing is not legal advice and is not a comprehensive review of all the legal decisions you will face when filing a trademark application. It is meant to be an illustrative discussion and not one to be relied on by anyone filing a trademark application.
Protect your brand by filing a trademark
As an entrepreneur, you have a number of factors to consider to successfully launch and run your business or brand. Filing for a trademark is just one issue to consider. If you are unsure about how to file a trademark, our trademark attorneys are happy to talk with you about the services we offer.