Filing for, and protecting your trademark or marks is arguably the most important thing to do when you start your business. A lot goes into picking a great brand name and logo. This includes finding an attorney to perform a proper search to see if that name is available for use. For the record, I do those types of searches- so feel free to email me if you have a name you’re ready to get started using!
In any event, trademarks can be somewhat confusing so I wanted to take a minute and answer some of the questions I get asked most frequently. I want you to read through this, then sit down and examine your business and brand and determine if you have a protectable mark and if you want to take action.
So let’s clear up some of the confusion, shall we?
1. Do I need to register my Trademark?
Short answer, yes. Long answer, well it actually depends.
Whether or not you need to register your brand name and/or logo depends on a few factors. What type of business are you in? Do you serve clients primarily through a brick and mortar location or are you doing business online as well? Also, does your brand name have the ability to be registered? Or is it too descriptive to qualify for protection?
If you are a brick and mortar business that is only located in one city, with no plans to ever expand into other cities or areas, then I might advise you to wait on filing for protection in the beginning. It may not make sense for you to spend the money on registration if the likelihood of infringement is very low with what you are doing. Also, if you’re calling yourself Mom’s Pizza Shop- that might not be eligible for registration anyway.
In the alternative, if you’re an online business doing work with customers all over the world, then registration of your brand name might be the first thing I’d suggest doing. As an e-commerce business, you want to protect your brand and keep competitors from using your name in a way that would a) take business from you and b) dilute your goodwill as a brand.
So as you can see, it is highly important to consult with a trademarks attorney before jumping into the registration process. And ps I can help with that!
2. How do you register a Trademark such as your company name?
Hire an attorney to do the work for you! No, but seriously. It is a semi-lengthy process and having a trained professional handle it will increase the odds of you gaining that registration in a timely manner. I recently wrote about the dangers of using a company like LegalZoom to do this, you can and probably should check out that article here.
The basics are this: You do a proper search to see if your mark is available, and then you file through the USPTO website.
There are different types of applications each with different costs. How to know which to use will depend on how much you want to spend, whether the mark is in use or not, and whether you want to file electronically or not. The actual application requires quite a bit of information plus specimens and good descriptions of the mark. Again, this will vary depending on what type you are filing for; wordmark or design mark.
So if you can’t tell. This is something that an attorney needs to do for you. There are tips and trick to filing and gaining that registration that only attorneys with experience know. I suggest getting a trademark attorney to get your application filed.
3. How much will it cost to register my Trademark?
I know this is everyone’s least favorite answer, but again, it depends. The typical filing fee is $225 or $275 depending on the type of application sought, and both of those prices are for electronic applications only. And, if you are applying for more than one international class (class of goods and services) for example apparel and coffee mugs- you would pay for each class a fee of $275.
Attorney’s fees range from $1,000 to $3,000 for the application, and will likely be $300-$600 for the initial search and consultation of the mark. If there are any office actions, and that is highly likely, the attorney may charge an additional flat fee to handle it. It all depends on the attorney!
If you have more questions about my fees email me!
4. What do I do if someone is using my Trademark?
After you have obtained the registration you have a duty to maintain that mark and ensure no one else is using it in commerce, or you can lose the rights to the mark. This is the fun part if you’re into confrontation, and if you’re not, this is another area having an attorney on your side is beneficial.
Monitor the industry your mark is associated with for others that may be using something that is the same or confusingly similar. If you see another company or brand using a similar mark reach out and let them know that you are not ok with that! Having your attorney send a cease and desist letter is a good idea. And, eventually, you may need to file suit to stop them from using the mark. I have a YouTube video addressing this subject in more detail so check that out too. You don’t need an attorney for everything and handling an infringer is one of those things!
5. If the common law protects my mark once I begin using it in commerce, why should I bother registering it?
There are multiple reasons not to rely on common law protection but here are the top few.
One, if you’re not registered with the USPTO no one else will know that you have that mark. Another company might set up shop thinking the mark is available, and it could be years before you learn of the infringement. Registration is a way to put everyone on notice that the mark is in use and untouchable.
Second, if you don’t register you are limited in where you can stop someone from using your mark. A trademark is somewhat of a limited monopoly, but without the registration, that monopoly is decreased in scope.
Next, you have the ability to sue in federal court if someone is infringing on your mark, and you get the presumption that you own the mark. You are not required to show actual evidence that you own the mark in connection with your particular goods or services. Plus, if you have a registered mark the amount of money damages that are available to you increase.
Finally, if you do own a registered mark that makes your brand or company more valuable. Registration will allow you to license out the name and logo, and this allows you to bring in more money for your company.
6. What are my responsibilities once I have a registered mark?
I touched on this above but you have the duty to monitor the mark and ensure no one is infringing. If you find someone is, then it is your responsibility to stop them. You must also continually be using the mark. If you stop using it or fail to stop others from using it, you will likely lose your rights in that mark and you generally can’t get those back.
On a more technical note, you must file certain documents between years 5 and 6 of registration showing you are still using the mark, and then every 10 years after that.
Another reason having an attorney register, monitor, and handle your filings can save you a lot of time and headaches!
7. What can I expect from the registration process?
I will try to keep this brief because the registration process can be very different depending on the client and the mark sought. But I know if you work with me this is how it goes. First, we will determine what mark you can register by doing a thorough search and analysis. I will give you my opinion on your chosen mark and whether or not I think it is doable. At that point, if it’s a go from the client I begin the application process. After I have drafted the application, I will submit it to the client for final review. Once it is approved it is submitted to the USPTO office. At that point, it is a gamble for how long until you hear back. Generally, 3-6 months is a good estimate. When I do hear back it is usually with an office action. Even the best attorneys get these. An office action is a request from the USPTO examining attorney to make changes or amendments to the application, or file an explanation as to how the mark does not carry a likelihood of confusion with another registered mark, or that it is not merely descriptive.
After that office action is handled the examining attorney makes a final determination. Hopefully, they are satisfied and approve the mark for publication. This is a 30-day period where others have the right to oppose the mark. If no one does, after that you have a registered mark!
This process will vary slightly if you are filing an intent to use application but only by a few weeks.
Again, having an attorney handle the above timeline is highly recommended as the USPTO examining attorney does not want to approve, and deadlines require strict adherence.
I hope you found this helpful and are ready to get your trademarks registered with me! As always, if you have more questions on the subject please feel free to reach out to me through the contact form on my website, or find me on Instagram at MontgomeryLawPllc.
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.