To Trademark or Not to Trademark – That is the Question
Some answers to often asked trademark questions.
1. Why Trademark?Make it easy for consumers to find you and distinguish your business from your competitors. Build that brand recognition that drives traffic to your products and web presence. Trademarks may help you expand your business into new areas or industries. For example, from massages to massage oil and lotions to bathrobes.
2. What is a trademark?A word, phrase, symbol, or design or a combination of words, phrases, symbols or designs that communicates what your company and its goods or services stand for and how you are different from your competitors.
3. Common Law vs. Registered Trademarks.Under common law in the United States, your trademark rights arise when you first use a mark within a product category or geographic market. What does that mean? The first time those golden arches went up representing McDonalds a trademark was born, but that trademark was restricted to certain products (food) and to a certain geographical area (Downey, California) until it was officially registered with the United States Patent and Trademark Office. Once registered with the USPTO, McDonalds' mark, those arches, had statutory protection anywhere in the United States.
Tip - Protect your trademark by using the designation "TM" after it. Once you've registered your mark you will use the "R" in a circle instead.
4. When should I apply to register my trademark?File your trademark application once you've finalized your mark and before its first public use or shortly after you begin using your mark depending on how risk adverse you are.
Note - filing an application before the first use means you will have a little more work to do on your application down the line to show the mark once it has been put into use.
5. How much is registering going to cost me?The application filing fee is currently between $225 and $325 depending on the type of application. This fee must be paid for each class of goods you're filing under ("class of goods" - a topic for another day). While you don't need the assistance of an attorney to apply for a trademark, obtaining qualified help can ease the process. Most attorneys charge a flat fee anywhere from $600 to $1000 which doesn't include the filing fees or responding to "office actions" from the USPTO which will be charged at the attorney's normal billable rates. Be sure to ask any attorney helping you if the flat fee includes a trademark search to discover if your mark or a substantially similar mark is already being used. In sum, you're costs will include filing fees and legal fees to apply for a trademark.
Tip - The application fee is a processing fee and is nonrefundable even if your application is denied.
6. What do I need to meet with an attorney?An attorney is going to need:
a. Your contact information (name, address, telephone, and email address); and
b. A written description of your mark along with a sample of the mark in jpg format no more than 5 megabytes. You may want to include in the description of your mark whether the mark is stylized (e.g. particular font, shading, or certain letters capitalized?), or if it includes a design or symbol element, and if your mark has meaning in English or a foreign language. If your mark is in color - is it important to have color as part of your registration?
c. The name of the person, persons, or entity that will own the trademark.
The attorney will also want to know:
d. What other trademark applications you've filed, if any, and the status of those applications;
e. Whether you've filed an application for this mark;
f. Whether you've conducted a search regarding your mark and any findings and if you are aware of any similar marks; and
g. Whether you are currently using the mark including a description and/or samples of how the mark is being used.
*** Disclaimer:The materials provided here are for general information only and are not legal advice for your particular situation. Seek legal advice from licensed professionals before making decisions