LISTEN UP JABRONI'S - WANT TO CHECK YOUR COMPETITORS INTO THE SMACKDOWN HOTEL?
Just kidding. But seriously, every brand can benefit from a trademark registration.
Trademarks are quintessential to your brand. Trademarks tell the world where your goods or services came from. It also helps capture the feeling that you've worked hard to associate with your brand. As awareness of your brand grows, the value of your trademark assets increase. Known brands can monetize this brand awareness and "goodwill" associated with the brand.
Trademarks are "the people's intellectual property asset." They are not technical and there is no real barrier to entry. You only need to conceive of a mark that encapsulates your brand. Once you do, trademarks are relatively inexpensive to protect.
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of other parties. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service as opposed to goods. The term “trademark” commonly refers to both trademarks and service marks. Trademark rights arise from priority of use regardless of formal registration.
The most common species of trademark are word marks and design marks. However, even sounds are eligible for trademark protection! See e.g. Southwest DING! For your mark to be eligible for federal trademark registration: 1) it cannot be confusingly similar to another mark; and 2) it must identify goods or services traded in interstate commerce.
You can protect your trademark in the United States by registering your trademark in the federal Principal trademark register. A trademark registration can last indefinitely, provided the owner renews the registration at the intervals specified by the Trademark Office. A filing is due between years 5 and 6 and a renewal filing is due every 10th anniversary. You can register a trademark for international protection under the Madrid System. This post focuses on registration in the U.S. only.
To register your trademark in the federal Principal Register first you will have to file an application.
A single-class application limits the goods or services for which registration is sought to goods or services in only one of the classes in the classification schedules. The application may recite more than one item, if the items recited are all classified in one class.</li>
A combined or multiple-class application is an application to register the same mark for goods, services, and/or a collective membership organization in multiple classes in a single application. In a combined or multiple-class application, an applicant must pay a filing fee for each class.
A trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others.
A trademark distinguishes the source of goods and a service mark distinguishes the source of services, although both are commonly categorized as "trademarks"
When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the 1946 Trademark Act. The advantages of owning a registration on the Principal Register include the following:
- Constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. §1072);
- A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods/services listed in the registration (15 U.S.C. §§1057(b), 1115(a) );
- A date of constructive use of the mark as of the filing date of the application (15 U.S.C. §1057(c); TMEP §201.02);
- The ability to bring an action concerning the mark in federal court (15 U.S.C. §1121);
- The ability to file the United States registration with the United States Customs Service to prevent importation of infringing foreign goods (15 U.S.C. §1124),
- The registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become "incontestable," subject to certain statutory defenses (15 U.S.C. §§1065, 1115(b) ); and
- The use of the United States registration as a basis to obtain registration in foreign countries.
If the applicant does not specify a register, the United States Patent and Trademark Office (USPTO) will presume that the applicant seeks registration on the Principal Register.
Certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register. The supplemental register is a continuation from the 1920 version of the Trademark act. Marks registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the 1946 Act. For example, owners of a mark can oppose registration of a similar mark but they do not own a proprietary interest in the registered mark.
An applicant may not seek registration on both the Principal and the Supplemental Register in the same application. The default register is the Principal Register.
To file a mark on the Principal Federal Register, the first step is to search for competing marks that may be similar to your mark. Prior registrations may affect your chances of success so you should do your due diligence before searching. An attorney can help you search and advise on the significance of what you may find.
The second step and the first step required by the trademark office is to file an application for registration. Most applicants should file their application(s) electronically via the USPTO’s trademark applications portal. The government charges $250 to file an electronic application for trademark registration per class of goods and services. Of course, the application is a bit technical so you may be best served delegating this task to a skilled practitioner. According to a survey of IP attorneys, median fees for attorney support was $838 for 2021.
Once your application is filed it will be in pending status until it is examined by a trademark attorney. The trademark attorney will assess whether your application meets the legal requirements to be added to the principal register and send an official communication called an “Office Action” if it does not. You will have to respond to the Office Action in the time specified by the Office – usually 6 months – or risk abandoning your application. If and when your application meets the requirements for registration then your mark will be published in the Trademark Official Gazette – a publication of the US Trademark Office – for 30 days to give the public an opportunity to oppose the mark. Any third party can oppose a registration if they have a legal basis to do so. After the public notice period if no third parties oppose the registration then your registration is done and you will receive an official Certificate of your trademark registration! As of Q4 2021, applicants can expect to get a first substantive response from the trademark office in about 6 months and the total application processing time was about 11 months.
You may be ready to filed an application if:
- You have a mark;
- You use the mark to identify your goods or services;
- You are selling the goods/services now or will be within one year; and
- You searched for marks like yours (An attorney can help with this).
Tinch Law helps startups and companies at any stage protect and enforce their trademarks. We support registration of trademarks on the principal trademark register in the early stage of your mark’s life. We help clients protect the uniqueness of their brand and enforce trademark rights against competitors. Finally, we litigate trademark matters before the Trademark Trial and Appeal Board.
Ready to get started protecting your trademark? Book a strategy meeting here.
J. Greg Tinch - Founder and Principal of Tinch Law Firm, P.C. - is a patent attorney helping clients realize wealth and legacy in their ideas. Greg has counseled clients from early-stage startups to the federal government on patents, trademarks, copyrights, and transactional and entity formation aspects of business law. Greg's intellectual property practice is informed by his interest in public policy, experience working in Congress and litigating civil cases in Maryland.