Trademark Attorney Services for Your Saint Paul Business

The top 4 questions Saint Paul businesses have about obtaining a trademark.

What is a trademark?

A trademark can be anything that indicates a particular product or service is associated with a specific brand. Common trademarks include words, colors, slogans, and logos, but even sounds and smells can be protected through trademark registration.

Should I register my trademark with the USPTO?

The United States is a common law country, which means you will have a limited number of protections simply by using your mark in public. However, these protections may not be enough to fully protect your brand. For instance, your mark will only be protected in the small geographic region where your business is based. If you plan to expand outside of St. Paul in the future, you may be prohibited from certain areas where a similar mark is already in use. You’ll also face more challenges asserting your trademark rights in legal proceedings. In order to have the presumption of validity nationwide, you will need to register your trademark with the USPTO.

What are International Classes?

The United States Patent and Trademark Office, or USPTO, has 47 different groups of goods and services known as International Classes. In drafting your application, you will need to select the classes that best match the goods or services you plan to offer under your trademark. If you are unsure about which classes best match the goods or services you plan to offer, the experienced attorneys at Gerben IP can assist you.

What should I do if I find someone infringing on my trademark?

It’s important to take immediate action in cases of infringement. Allowing infringers to continue to use your mark without permission could damage your brand’s reputation or confuse your customers, potentially steering them away from your brand. If you think someone may be infringing on your trademark, engage an experienced U.S. trademark attorney. Your attorney will analyze the situation and determine the best course of action. Often a cease-and-desist letter drafted by your attorney is all that is needed to put the infringer on notice. In some instances, though, more formal legal action may be required.

Common misperceptions about trademarks heard around Saint Paul, MN.

I should wait to register my trademark until my business is more successful.

Don’t wait until your doors are open to obtain trademark registration. The process to register your trademark should be one of the first steps you take when planning to open your business. Before you select a mark and begin to use it on product labeling, signage, marketing materials, and more, you should conduct a comprehensive trademark search to determine whether it is available for use. You should also complete and submit a trademark application to the USPTO. The date you submit your application will become your priority date. Anyone looking to file a similar mark after that date will not be approved. Waiting to conduct a search and file for trademark registration could leave you vulnerable to infringement in the future.

My competitor has not registered its trademark, so I can register it to keep them from using it.

The United States is a first-to-use country, so your competitor likely has some trademark rights, even if they haven’t registered it with the USPTO. In addition, knowingly registering the trademark of another business is a fraud and cause for cancellation of your trademark. If you’re unsure about the availability of a particular mark, contact Gerben IP.

Trademark registration is simple, so I can do it myself.

The process to register a trademark is complex and detailed, from conducting a comprehensive trademark search to selecting International Classes and responding to Office Actions. Working with a trademark attorney ensures that the process runs smoothly, and, according to a study by the University of North Carolina, your chances of approval will increase as well. The study found that applications submitted with the assistance of a trademark attorney were up to 50 percent more likely to be approved by the USPTO.

I should register for as many International Classes as possible.

This may not be the best strategy. Trademark fees are determined by the number of classes you file, which means filing for multiple classes could greatly increase your overall trademark costs. In addition, filing for multiple classes could cause your trademark application to be rejected. For these reasons, it’s best to include only the classes that represent the goods or services you offer now or plan to offer in the near future.

The symbols “TM” and “®” can be used interchangeably.

These symbols represent a trademark at different stages of the registration process and are not interchangeable. The trademark registration symbol ® specifies that your trademark has been registered with the USPTO. Using the symbol prior to approval is a violation of federal law and could be grounds for rejection of your application. While your application is pending, you are able to use the ™ symbol.