Trademark Attorney Services for Your Minneapolis Business

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

What is a trademark?

A trademark protects anything that represents your brand in the marketplace. The most commonly registered trademarks include business or product names, logos, and slogans, but even sounds, colors, and smells can be trademarked if they represent your brand.

Do I need to work with a trademark attorney?

At this time, U.S. citizens are not required to work with a trademark attorney. However, there are many benefits to working with an experienced attorney throughout the process. Trademark registration is both detailed and time consuming. When you choose to do-it-yourself, you will spend a significant amount of time learning about the process, which means less time focusing on your business. Your attorney can conduct a comprehensive trademark search, submit your application, and even respond to non-substantive Office Actions on your behalf, so you can focus on building your business, not trademark law. You’ll also have a greater chance of approval when working with an attorney. A study by the University of North Carolina found that applications submitted to the USPTO through an attorney were fifty percent more likely to be approved!

When should I file my trademark application?

File your trademark application as soon as possible. In fact, it should be one of the first things you do when starting your own business. No one wants to invest time and money into their business only to learn that their trademark is already in use. You’ll also want to ensure that no one can register your trademark before you have a chance. The date you submit your application will become your priority date, so anyone looking to submit a similar trademark after that date will be rejected. Registering early protects you from infringing on others and protects your mark from being infringed upon as well.

What does the USPTO do?

USPTO stands for United States Patent and Trademark Office, which is a division of the Department of Commerce. The USPTO reviews applications, then registers trademarks for products and services and grants patents for new inventions. They also maintain the records for trademarks and patents. They do not, however, monitor your trademark’s use after it’s been registered or enforce your trademark rights. As a trademark owner, these will be your responsibility.

Common misperceptions about trademarks heard around Minneapolis, MN.

Because the United States is a common law country, I will have trademark protections as soon as I use my mark.

While it’s true you will have some protections as soon as you use your mark in public, those protections are extremely limited. First, you will only be protected in disputes that occur within the Minneapolis area. This means you may be locked out of expanding to other regions in the future, if a similar mark is in use there. You will also have a more challenging time asserting your trademark rights in court. In order to have the presumption of validity nationwide, you need to register your trademark with the USPTO.

Once I’ve registered my trademark, no one else can use it.

This is not necessarily true. It’s possible for another business to use the same mark, or one that is similar, as long as there is no likelihood of confusion between the two brands. For example, United Van Lines and United Healthcare both use the trademark ‘United’ because there’s little chance that consumers would confuse the van line with the health insurance company.

I don’t need to conduct a trademark search, because the USPTO examiner already does one.

Your USPTO examiner will conduct a trademark search, but only after you’ve submitted your application and paid your filing fees. If the examiner finds a similar mark in use, your application can be rejected. For this reason, it’s best to conduct a comprehensive search before you submit your application. If you and your attorney find a similar mark is already in use, then you can make necessary changes prior to submitting your application and paying your fees.

My federally registered trademark will protect me in other countries where I do business.

Your U.S. trademark offers valuable protections within the United States, but it will not protect your trademark in disputes outside the United States. If you are currently doing business outside the U.S., or if you plan to do so in the future, you should consider international trademark registration.

I should include as many International Classes as possible on my application.

While it may seem like a good way to obtain broad protections for your trademark, choosing many International Classes isn’t always the best idea. Because filing fees are based on the number of classes associated with the mark, choosing too many could greatly increase your registration costs. In addition, selecting classes that you don’t plan to use soon could result in cancellation of the mark. When submitting your application, choose only the classes that represent goods or services you are currently offering or plan to offer in the near future.