* Please note that while Gerben Law Firm, PLLC is not located in Lexington, it can assist businesses from the Lexington region in registering a federal trademark because it is a federal matter.
The trademark attorneys at Gerben Law Firm, PLLC are known for their experience. Since 2008, Gerben Law Firm has registered thousands of trademarks with the United States Patent and Trademark Office and uses that experience to help businesses achieve their goals. The firm’s experienced attorneys can help businesses register and protect their trademarks for reasonable prices that fit into budgets of all sizes.
Federal Trademark Registration For Your Business
Top 5 Questions Lexington Businesses Have About Protecting a Trademark
- Can I trademark the “look and feel” of my restaurant or store?
- Under the law of “trade dress” you can protect the “look and feel” of your restaurant or store if it is “distinctive,” meaning that it isn’t functional and, in general, is not something that others stores need to use. For example, the layout of the Apple Store is a registered trademark.
- Are copyrights and trademarks the same thing?
- Trademark law protects words, phrases and logos that represent a business and indicate that the goods and services are coming from one specific business. Copyright law protects creative works, including writings, photographs, musical competition and more from reproduction (among other things.)
- Is my trademark application public record?
- From the minute an application is filed, all information contained within that application is public record. You are not entitled to any degree for confidentiality in these public records. However, attorney reports and advice is protected under attorney-client privilege.
- What is the difference between a “word” trademark and a “logo” trademark?
- A “word” mark protect a word or phrase is any stylized form. A “design,” or logo mark covers the words and design elements as they appear in the logo. A word mark is, therefore, more powerful than a design mark, but a design mark helps cover the design elements of a logo.
- What is a “specimen”?
- A specimen is the “proof of commercial use” that U.S. applicants must submit in order to register their trademark. For goods, it is usually a photograph of the product. For services, it is usually an advertisement or website.
Common Misconceptions about Filing Trademarks for Lexington Businesses
- I wrote a book with a unique phrase in the title, so I can register the book title with the USPTO and no one else can use it.
- Millions of books are written every year and, if every one of them were able to protect the name of their one-off book, then no one would be able to effectively name their publications. For books, movies, and musical albums, trademark protection generally extends only to words or phrases that are used in a series.
- I can use the ® symbol before registering my trademark, because I own a state trademark registration.
- The ® symbol is reserved for federal registered trademark owner’s only. Even you own a state trademark registration, you may not use the ® symbol.
- Every word is already trademarked.
- Trademark protection is limited to specific words and phrases used on specific goods and services. For example, the existence of the trademark APPLE does not stop anyone from selling apples at the store. Trademark rights are limited and, while some words and phrases may be unavailable to use in certain industries, as a whole, every word does not function as a trademark.
- Trademark registration does not involve legal analysis and I should just register on my own to avoid legal fees.
- Registering a trademark is a complicated legal analysis. Even if you are able to obtain a trademark registration, you won’t know until it is too late if the drafting of the application in some way would affect your rights. An experienced trademark attorney can assist you in crafting a strong trademark application that is valid for the long-term.
- I am internally testing my app with friends and family, so I can submit “proof of use” with the Trademark Office.
- Internal testing of a product like an “app” with friends and family does not generally count as “use-in-commerce.” You must have actual users in the U.S. using your app before you can submit “proof of use.”
The Number of Trademarks Registered by Lexington Businesses (by Year)
How many trademarks have Lexington, Kentucky businesses registered over the years? Gerben Law Firm collected the following data.
||# of Trademarks Registered
*data was gathered from the USPTO’s public database
Types of Trademark Services We Offer
Additional Information on Trademark Registration for Lexington Businesses
While Lexington, Kentucky is probably known most as the home of the University of Kentucky, companies like Xerox, Lockheed Martin, and many others have large-scale offices in the area. Whether you are a student, a big business, or a start-up, if you are developing a business, you should protect your trademark rights.
A trademark is a word or design that “represents” a business and tells consumers who is responsible for the product or service. We use trademarks every day to determine quality, price, and other things just by looking at the product’s name. If you need a product quickly, you might think of the trademark “AMAZON PRIME.” If you want on-demand movies, you might think of “NETFLIX.” These types of trademarks are shorthand for a business and help consumers make decisions in the marketplace.
It only makes sense that you set up your business for success by including trademark protection in your business plan and setting a budget to effectively protect your trademarks. The first thing you must do is select a name. It sounds easy, but a lot goes into selecting a name and you have to choose one that you feel comfortable marketing and that isn’t in use by competitors. There is a sliding scale when it comes to how “strong” a trademark is. Generic words (like PLUMBER for plumbing services, or BAKER for baking) can never act as trademarks, because everyone should be able to use those names for their services. Descriptive trademarks (University of Kentucky for education services, Lexington Chimney Sweeps for chimney services) merely describe the goods and services (a University in Kentucky). While these are easier to market, as they immediately provide information about a service, they do not immediately act as a trademark. Instead, companies and organizations using descriptive trademarks have to show that, with time, advertising, and other factors, the descriptive mark now only refers to one source. The next step up is “suggestive” marks, which require the consumer to make a non-obvious connection between the mark and the goods and services (MR. CLEAN for cleaning solutions). These are strong marks but require effective marketing to ensure that consumers are making the connection between the trademark and the products or services offered by the trademark owner. Finally, the strongest marks are either arbitrary in their industry (APPLE for computers) or are made-up, fanciful words (KODAK for film). These are the strongest marks, but are the hardest to market, because consumers do not have a connection with the word within an industry.
Once you’ve selected a name, a trademark professional should conduct a comprehensive search to ensure the name is available. A trademark attorney can review the results of the search and provide a risk analysis on your trademark. Once you know your risk level, a trademark attorney can develop a registration and protection strategy for your unique mark in your unique industry. The attorney can carefully craft your application and see it through to registration, avoiding common pitfalls that many pro se (representing themselves) applicant’s fall into when trying to apply on their own.
After the trademark registration issues and you are using your trademark, you should effectively monitor the marketplace to ensure that no competitors are using a trademark confusingly similar to your own. You should also consider protecting the trademarks for your product lines, individual services, slogans, and any number of other protect able trademarks to build a portfolio.
Lexington, Kentucky is an incubator for talented businessmen and businesswomen. By effecting protecting your trademarks, you will have a leg-up on the competition and will start building a brand that is at the center of your company’s public image.