Trademark Attorney Services for Your St. Petersburg Business

The top 5 questions St. Petersburg businesses have about obtaining a trademark.

How will trademark registration benefit my business?

As you work to build your brand, you want to be sure that your brand is protected and remains in your control. With a federally registered trademark, you will have the presumption of validity nationwide. This means that anyone across the country that wishes to register a confusingly similar mark will not be approved by the USPTO, and you’ll be free to do business in all fifty states. You’ll also be able to assert your trademark rights in court if potential infringement is found. A trademark registered with the USPTO will be necessary when filing for protections outside the U.S., and you’ll even be able to utilize U.S. Customs to ensure that others aren’t importing or exporting knockoff products using your mark.

What is a trademark specimen?

A trademark specimen shows the USPTO how you will use your trademark in association with the goods or services you plan to offer. If your business will be selling products, acceptable specimens may include containers, labels, packaging materials, and tags. Service specimens could be anything that documents the services you provide, including advertisements, websites, and brochures.

How are trademark filing fees determined?

The USPTO determines filing fees based on the type of application you use and the number of International Classes you include in your application.

Can I register my trademark on my own?

The USPTO doesn’t require U.S. citizens to work with an attorney when filing a trademark application. They do, however, highly encourage it. When you work with an experienced attorney, you ensure that the process runs smoothly and correctly from start to finish. While you can submit your application on your own, many business owners find that they make mistakes along the way, which may lead to rejection of the application and eventually refiling. Working with an attorney from the start increases you chances of approval and may save time and money in the long run. Learn more about the ability to file on your own.

What should I do if someone is using my mark?

If you suspect another business or individual is infringing on your mark, contact your attorney as soon as possible. In some cases, another business may be within their rights to use a mark that is similar to yours, as long as it doesn’t cause a likelihood of confusion in the marketplace. However, in instances of valid infringement, your attorney will evaluate the unique situation and take swift action. Often, a cease-and-desist letter may be all that is needed to stop the infringement, but in some cases, formal legal action will be required.

Common misperceptions about trademarks heard around St. Petersburg, FL.

The State of Florida allowed me to incorporate using my business name, so I don’t need to register with the USPTO.

In the incorporation process, the state often looks to make sure that the business name doesn’t conflict with any other existing business names within the state. If you plan to expand outside Florida in the future, then, you may face challenges or even be prohibited from using your business name in other areas where a similar mark is already in use. In order to have the presumption of validity nationwide, you should still register your trademark with the USPTO.

A registered trademark has no monetary value.

A registered trademark is a valuable asset for your business. It can also increase in value overtime, and can be bought and sold like any other business asset.

International trademark registration isn’t necessary, and is too challenging anyway.

Your federally registered trademark will not protect you in trademark disputes overseas. If you do business in other countries, you should strongly consider obtaining trademark registration internationally. One way to do this is to file a trademark application directly with each country’s trademark office. If you plan to register in many countries, however, you may want to utilize the Madrid Protocol. This international treaty allows you to file a single trademark application in your home language, which then can be forwarded to over 90 member countries. Each country, then, will make its own determination on approval. Read our post on the 4 Reasons why you should register internationally.

I can register a descriptive word for my business name to keep others from using it.

The USPTO will not approve any business or product name that includes generic or descriptive words. For instance, Tasty Tacos or Cold Ice Cream would not be able to obtain trademark registration. Instead, consider selecting an arbitrary name—one which has little or no relation to the product or service being offered—or a completed made up name to represent your business.

I’m an inventor, so I need to patent my invention, not trademark it.

You likely need both a patent and a trademark to protect your invention. The utility of your invention, for example, would require a patent in order to be protected against infringement. Your product’s name, however, should be protected through trademark registration. If you are unsure about what aspects of your business would benefit from trademark registration, contact Gerben IP.