Trademark Attorney Services for Your Boise Business

The top 5 questions Boise businesses have about obtaining a trademark.

How is a trademark different than a copyright or patent?

Trademarks, copyrights, and patents are all forms of intellectual property that protect different things. A trademark, for instance, protects the things that represent your brand, like business and product names, slogans, logos, and colors. Copyrights, on the other hand, protect works of authorship, including art, novels, and song lyrics, while patents protect new and novel inventions.

What is a USPTO?

The United States Patent and Trademark Office, or USPTO, is a division of the Department of Commerce. Examiners at the USPTO review applications for patents and trademarks and make determinations about approval. The USPTO also maintains the records of federally registered patents and trademarks.

Another business is using my preferred business name. Can I still use it?

It depends. The USPTO will reject your trademark application if it’s confusingly similar to an existing mark. However, it may be possible to use the same name without a likelihood of confusion. Dove, for example, is the brand name for both chocolates and soap. Because consumers aren’t likely to confuse the products of both businesses, each is allowed to use the name. If you are unsure about the availability of a particular mark, Gerben IP can assist you.

Do I need to work with a trademark attorney?

The USPTO doesn’t require U.S. citizens to work with an attorney, but there are many benefits to doing so. The process to register a trademark is detailed and requires knowledge of trademark law. Most business owners are incredibly busy growing their own businesses and may not have time to familiarize themselves with the ins and outs of trademark registration. When you partner with a trademark attorney, they can conduct a comprehensive trademark search, draft your application, and even respond to non-substantive Office Actions on your behalf, all while you remain focused on your own business.

What should I do if someone is infringing on my registered trademark?

In order to maintain control of your brand and its reputation, it’s important to monitor your mark and take quick action if potential infringement is found. If you think another business is infringing on your trademark, engage an experienced trademark attorney to assist you. Your attorney will evaluate the situation and determine the best course of action. Often, a cease-and-desist letter is all that is needed to put the other business on notice. Sometimes, however, your attorney will suggest more formal legal action.

Common misperceptions about trademarks heard around Boise, ID.

The USPTO will conduct a trademark search once I submit my application, so I don’t need to do one first.

Once you submit your application and pay your filing fees to the USPTO, an examiner will conduct a comprehensive trademark search. However, if your examiner finds a confusingly similar mark is already in use, your application could be rejected and your filing fees lost. Work with your trademark attorney to conduct a thorough trademark search before you submit your application (additional info on how to conduct a search). If a similar mark is found, you can make changes to your mark or select a new one before proceeding with the application process.

I won’t have a problem registering a business name that includes my last name.

The USPTO has strict requirements for approving trademark registrations that include surnames. If you choose to include your last name in your business name, it will not appear on the Principal Register until you can demonstrate deep market penetration and secondary meaning. When someone mentions Macy’s, for example, you likely associate it with the department store, not its founder, R.H. Macy. For most businesses, however, it can take many years to establish secondary meaning, and often, it’s not possible to do so.

As long as I renew my trademark on time, it will always be protected.

Meeting the USPTO’s renewal deadlines is one part of maintaining your protections. However, you must also continue to use it in the marketplace and only use it just as it appears in your trademark application. If you make changes to your mark or stop using it in public, your registration may be canceled.

I registered my logo, so it’s protected no matter what product I put on it.

When you complete your trademark application, you’ll need to include the classes of goods and services you plan to offer under your trademark. Your logo will only be protected in association with products or services included in those trademark classes. For example, if you registered for Class 25, which includes clothing, and decide to sell jewelry as well, you’ll need to register for Class 14 to ensure your logo is protected on in association with jewelry also.

International trademark registration is only important for large businesses.

In today’s global economy, it’s not unheard of for a small business to do business in other countries, through sales or manufacturing. If you plan to reach customers outside the U.S. or are manufacturing your product in another country, you should strongly consider trademark registration in those countries.