*Please note that while Gerben Law Firm, PLLC is not located in Missouri, it can assist businesses from Missouri in registering a federal trademark because it is a federal matter.
Gerben Law Firm focuses its practice on trademark matters. In 2008, attorney Josh Gerben started the firm to help businesses with their trademarks. Having registered over 3500 trademarks clients, the trademark attorneys at Gerben Law Firm are ready to assist you and your business with your unique trademark needs.
Gerben Law Firm is based in Washington, DC. However, Gerben Law Firm assists clients all across the country on federal trademark matters, including from St. Louis. With competitive rates and individualized service, Gerben Law Firm’s attorneys pride themselves on providing cost-conscious legal services and delivering quality results.
Federal Trademark Registration For Your Business
Top 4 Questions St. Louis Businesses Have About Protecting a Trademark
- What are the benefits of a federal trademark registration?
- There any many benefits to a federal trademark registration. First, as the owner of a registration, you are presumed to be the owner of the trademark and the trademark is presumed valid. These presumptions are vital in protecting your trademark against infringers. By registering a trademark you are also providing national “construction notice” of your rights — meaning that no one (throughout the entire United States) can say they had not “heard of you” before they picked a similar name for similar goods and services. It is also easier to enforce trademarks on Etsy, Amazon, Ebay and other online marketplaces with a registered trademark.
- What are the different types of trademark applications?
- There are four basic types of trademark applications – (1) applications based on current use in the United States, (2) applications based on an intent-to-use a trademark in the United States, (3) applications based on foreign applications/registrations, and (4) applications filed as extension of international protection under the “Madrid Protocol.” When filing under #1, business owners must have actual use of a trademark on the goods and services listed in their application (otherwise, the application will be void.) When filing under #2, business owners can file based on their intent to use a trademark, but must file “proof of use” within 1-3 years. Trademark applications under #3 and #4 are ways for foreign companies to apply in the United States using their foreign registration (or application) from their home country.
- Where can I do a basic search of registered trademarks?
- The USPTO’s TESS database is a database of every trademark that has anyone has ever applied for in the United States. You can search the database from the website, but beware, just because you do not find an exactly match, your trademark still may not be available for use or registration. The USPTO will look at any trademark similar in sight sound and meaning for related goods and services, not just exact matches.
- Does registering a business name with my state’s Secretary of State’s website offer me trademark protection?
- A business “name search” conducted by a state government is not the same as a federal trademark registration. State business name searches only look within the businesses formed within that state for exact matches to see if a name is “available.” Obtaining a business name does not give you trademark rights in the name unless you use it as a brand.
Common Misconceptions about Filing Trademarks for St. Louis Businesses
- I own a trademark registration in my state, so I am fully protected.
- A trademark registration in a specific state is of limited value, as federal trademark law is given more weight than state trademark law. A state trademark will be compared to registered trademarks within that state – it does not consider that a company may already have national trademark rights that are superior to a state trademark registration.
- When applying for specific goods and services, I should just copy the goods and services from a competitor’s registration, even if I am not using all of those goods and services in commerce.
- To file a trademark application in the United States, you must have, at the very least, a bona fide intent to use a trademark on the goods and services listed in your application. This means that you must be working towards creating or offering all of the goods and services. Do not list goods or services that you do not plan to offer. If you do, then the application could be void if someone else challenges it.
- If I own a trademark registration, no one can use that word on any other product.
- Trademark infringement occurs when someone uses a similar trademark to one already being used in commerce that is “confusingly similar.” Two companies, however, can use the same word in completely different industries and not cause confusion. Companies use “SquareTrade” for computer warranties, “Square” for a payment processor, and “SquareSpace” for website hosting. Even though they all use “square,” they are in different industries.
- I can register the names of other companies’ products if those companies do not own trademark registrations for those product names.
- Trademarks can be protected even if they are not registered (although that protection is much more limited.) You would not be able to register a company’s distinctive product name that you know if already in use by someone else.
The Number of Federal Trademarks Registered by St. Louis Businesses (by Year)
How many trademarks have St. Louis, Missouri 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 St. Louis Businesses
St. Louis has an established corporate culture and a growing group of ambitious entrepreneurs looking to innovate and provide new, exciting products and services. Trademark protection can help both small and large businesses create long, lasting brands that represent the companies’ goods and services. By searching, registering, and protecting your company’s brand, you can avoid legal pitfalls and snags that could severely hamper your company’s ability to expand and succeed in the marketplace.
Every day there are stories similar to this one: a small company, just starting out, gets a cease-and-desist letter from a company for trademark infringement and are forced to change their name. For example, let’s imagine there is a new ride-sharing company that opened in St. Louis called “Lark.” The owners of the company work don’t work with an attorney to conduct a search and decide to just apply for the trademark “Lark” themselves before they start offering the service. They get busy with other things, and suddenly they forget to answer the USPTO’s inquiry and their trademark application is “abandoned.” Before Lark launches, another company in New York files a trademark application for “Lark” and that application is approved. Shortly after, the St. Louis company launches their Lark services. Six months later, the New York City company launched their services. Because the New York City company successfully reserved rights in the “Lark” trademark, then that company will very likely be able to stop the St. Louis company from using the name “Lark” even though the St. Louis company may have been first to use it.
Let’s consider a different situation, where the St. Louis company is the sole owner of the “Lark” trademark in the United States. It registers its trademark and then sees that a national car rental company begin using the word “Lark” in their advertising. The St. Louis company will be in a strong position to tell the other company to stop, because that other company is presumed to have checked the USPTO Federal Register for marks that could be confusingly similar. This could be the difference between a friendly letter settling the dispute and full-scale litigation.
This example highlights the importance of working with a trademark attorney to develop a trademark protection plan that is specific for your specific needs in your specific industry. There is no one-size-fits-all approach to trademark protection, but every company should think about their trademarks and make informed decisions to avoid unnecessary legal disputes and irreparable damage to their brand.