Trademarks and Copyrights FAQ

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Copyrights & Trademarks FAQ

  1. What's a Trademark?

Quite simply, a trademark is a word, phrase, or picture. Whether you realize it or not, you interact with trademarks almost all the time. How often do you use your iPhone? Apple, Inc. has a trademark for the name "iPhone." Maybe you signed up for Instagram on your iPhone. Facebook is the owner of the trademark for the name Instagram (now Meta, Inc.).

Ever worn a pair of Nikes? Nike has trademarked the words "JUST DO IT" and the phrase "Just Do It."

Almost every product or service you use on a daily basis has a name, a logo, and a slogan. And the United States Patent and Trademark Office (the "USPTO" for short) probably has a record of each and every one of them.

Still, trademarks can also be sounds or smells.

When you open Netflix and hear "taduuum," it may make you feel happy or let you know that your day is over. Netflix has registered that sound as a trademark.

Legally speaking, a trademark is a "source identifier." This means that a trademark is anything that consumers use to connect the products and/or services they are using to the source of those products and/or services. If you are starting a business or already have one, registering your brand as a trademark can help you stand out in the market and make it easy for customers to find and recognize your products and/or services.

Intellectual property (also known as "IP") includes trademarks. This kind of property is called "intangible," which means you can't hold it in your hands. But you still own the property. Your protection of real inventions and copyrights are the source of your intellectual property (works of art). This guide only talks about trademarks.

  1. Most Popular Kinds of Trademarks

A trademark is a word, symbol, or other unique sign that stands for a brand and the goods or services it sells. Under U.S. trademark law, almost anything, from business names and logos to soundbites, can be a trademark. There are different kinds of trademarks, but here are the four most common ones and what you should know about them:

Names

The type of trademark that is used most often is a name (or word) mark. This kind of mark can be the name of a brand or the name of a product or service that a brand offers. A name trademark must be unique in order to be registered with the federal government. Being unique means that when people see these names in the market, they know right away where the products or services came from and how good they are.

The uniqueness of a mark lets customers tell a brand apart from its competitors. Some of the most well-known names that stand out are:

  • Computers made by APPLE
  • MCDONALD'S for restaurant services
  • COCA-COLA for soft drinks
  • BEST BUY is a store that sells electronics.
  • TIDE for laundry detergents
  • AMAZON has services for online shopping.
  • NIKE shoes for sports
  • Facebook is used for social networking.
  • CATERPILLAR for building equipment
  • Google for software that lets you search websites and online databases.
  • SHELL for service at a gas station
  • IBM makes computers.

Logos

Logos are one of the most common types of trademarks because many people who own brands also use them. Logos, like all trademarks, are a quick way for brands to tell customers that they are the source or maker of a certain good or service. For example, when people see these logos everywhere, they know right away who provides the service or makes the good.

Design Mark: An image with stylized marks, colors, or designs.

Slogans

Slogans are another type of trademark that is often used.

Taglines are another way for brands to set themselves apart from their rivals. You might not have noticed, but when you hear certain slogans, you automatically think of a certain brand.

For example, you probably think of food when you hear phrases like "Eat Fresh," "I'm Lovin' It," and "Finger Lickin' Good," even though none of these phrases means "food" by definition. So why do we think of these slogans when we think of food? Well, it's because these slogans have been used over and over again in commercials, radio ads, and billboards for each fast-food chain.

Sounds

Songs, jingles, and noises are some of the most common types of sounds. Even though wordmarks, logos, and slogans are more common than sound marks, brands often use sounds to set themselves apart from competitors. To register a sound mark, the USPTO needs proof that consumers think of a certain brand when they hear a certain sound.

  1. Securing a Great Trademark

It is very important to understand that not every trademark is the same. In fact, trademarks have a range of how well they can be protected.

Here's how that scale works, from the most protectable to the least protectable:

Arbitrary / Fanciful:

Names that have almost nothing to do with the products and services they are used for. Random names are already unique and tend to give brand owners the best chance of getting their names registered.

These are the two most powerful types of trademarks. Words or names that have nothing to do with the industry are arbitrary marks. For example, "Shell" is a gas station name, and "Dove" is a soap brand name.

Most words with fanciful marks are made up. "Rolex" isn't a real word, but most people know it because they think of watches when they hear it. If it wasn't for good advertising, people wouldn't know these brands.

Suggestive:

Names that give consumers a hint about what the goods or services are, but they still have to use their imagination to figure out what they are.

These can be good trademarks because they can be protected and they have something to do with your business. To get from the name to the goods or services, you have to make a "mental leap." "Netflix" is a good example of this. The name of the trademark isn't "Movie Streaming App," but it lets people know that they can watch movies (or "flix") on the internet (or "Net").

Descriptive:

Names that tell you right away what the product or service is about. To register a descriptive name, the USPTO needs proof that consumers can recognize a single brand as the source of the product or service when they hear the name. These are a little more unique than a generic mark, but usually not as strong as a suggestive mark.

"Comfortable Clothing" could be a mark for clothing that describes it. But you can't get a trademark registration on the Principal Register for most of these unless you can show that people recognize the mark as yours. A trademark that has reached this level of recognition would be "American Airlines." This is not a good way to build brand awareness because it can be hard to get so popular.

Generic:

Names that are commonly used to refer to a group of goods or services. These names are used so often to refer to a large group of products or services that they are the only (or most common) way to talk about a certain product or service. This would be like trying to register "T-shirts" as a trademark for a brand of shirts or "Taxicab" as a trademark for a car service. No one can get these kinds of trademarks registered.

Even if your mark is strong, it needs to be different from everything else on the market. "Rolex" and "Shell" are strong trademarks because they are unique. However, if every gas station had names like "Shell," "Seashell," and "Beach Shell," then having a funny or random name would be pointless, and your protection would be limited again.

  1. Federal Trademark Registration

Difference between rights under common law, rights registered with a state, and rights registered with the federal government

Under common law, the first company to use a mark gets the rights to it. These rights aren't federal, so they can't be enforced everywhere in the country. For example, a store in a small town can only use its rights in that small town.

There is no "presumption of validity" for a common law trademark, which makes it harder to enforce than a federal trademark. If you want to get a trademark right, you have to show that people know your trademark well enough. Still, some small businesses that can't afford federal registrations or don't plan to grow to other places can rely on common law protection if someone steals their trademark locally.

At the state level, you can get the second type of trademark registration rights. Each of the 50 states has its own trademark database that is run by the state government. When you register your trademark in the database of a single state, it only protects your trademark in that state.

Trademarks that are registered with the government are the safest. A trademark that is registered with the federal government is assumed to be valid all over the country. It is the best way to stop other companies or people from using your name on similar goods or services anywhere in the United States.

Do I need a trademark that is registered with the federal government to sell goods or services?

  1. U.S. vs. International Trademarks

There is no legal requirement that you register a trademark before using it, but it is highly recommended. Once you go through the federal registration process and get a trademark registration, you are less likely to be infringing on someone else's trademark. Also, you are better protected in case your brand goes viral or brings in a lot of money.

If you don't register your business with the federal government when you start it, you might also find out that a competitor with a similar name already has a trademark registered. This would make you have to make changes after you've already started marketing. So, even though getting a federal registration isn't required, you should start as soon as possible if you want to get one.

Even though many businesses do business around the world, trademark applications filed with the USPTO only protect the trademark in the United States. If you want to do business internationally or are worried about fakes coming from another country, you might want to file trademarks in other countries to protect your brand around the world.

In different countries, there are two ways to apply for a trademark.

The Madrid Protocol is used (an international system that avoids the need to engage local attorneys).

Having local lawyers file separate applications in each country where a person wants rights.

A. Using the Madrid Protocol to protect trademarks around the world

Even though there is no international law that protects trademarks everywhere, the "Madrid Protocol" tries to make the process easier. Over 90 countries, including the European Union, China, the United Kingdom, Canada, and Mexico, have signed the protocol.

Before you can use the Madrid Protocol, you have to file a regular application in the United States. As soon as that application has been sent in, the Madrid Protocol filing process can begin without waiting for approval. The first step is to fill out one application in the native language, and then choose which countries to send it to.

Why you should use the Madrid Protocol

      • It may cost less than hiring a lawyer in each country. To file under the Madrid Protocol, you must pay one application fee and a registration fee in each country where you register your mark. Even though it can get expensive, each person will save money on legal fees and filing fees.
      • Applications for the Madrid Protocol can't be different from or bigger than the original application. For example, if a USPTO application is filed for "shirts," a separate application for "purses, hats, and shoes" is "outside the scope" of the first application and cannot be filed. When filing with the Madrid Protocol, the original application must clearly list all of the goods and services that will be offered. If this is not done, the application may be limited.
      • It is much easier for a trademark applicant to fill out a single application in his or her native language than in a foreign language. If a mistake is made because a form was translated badly or by a computer, it could cost a lot if it leads to a refusal or an office action.

Why you shouldn't use the Madrid Protocol

      • Applicants must hire local counsel if there are any problems with the registration process in the country, such as problems with identification, a chance of confusion, disclaimers, or refusals because the name is not descriptive enough. This can be very stressful if the deadline is close or if a complicated or expensive answer is needed.
      • With one more filing, all Madrid Protocol applications can be brought up to date. For example, if the owner's address changes, the Madrid Protocol makes it easier to keep trademark portfolios up-to-date and correct. Instead of filing 10 different address changes, the owner only has to file one.
      • A Madrid Protocol application can only be made if the United States application is registered. If the home application fails because of an Office Action or because the deadline was missed, the Madrid Protocol application will also fail.

B. Filing trademarks through a local attorney for protection around the world

Even though the Madrid Protocol can be helpful for simple cases, there are still good reasons to think about hiring local counsel.

Pros of Hiring a Lawyer Nearby

      • It can make the process easier in each country and be the quickest way to get registered.
      • The approval of the foreign application does not depend on the approval of the U.S. application.
      • It can be cheaper if you are only looking for protection in a few countries.
      • Someone who knows the local language may be needed to fill out a complicated or nuanced application.
      • Some countries have different rules than the U.S., and a lawyer in that country will know how to best protect a trademark there.

Cons of Hiring a Lawyer Nearby

      • If there are a lot of countries, it can be much more expensive to hire local lawyers in each one than to use the Madrid Protocol.
      • It can be hard to find reliable local counsel in each country because some lawyers may not have the right skills.
      • Keeping track of the files for each foreign application can be a hassle for applicants and can cause them to miss deadlines or lose their applications.

When filing through the Madrid Protocol, many trademark owners who live outside of the U.S. will have to hire a local U.S. trademark attorney to fix a problem with their application. Most of the time, a U.S. trademark attorney will suggest filing a new application to make sure everything is in line with USPTO rules. This complicated process can make things less important and cost more.

In a world that is becoming more global, international trademark registrations are becoming more important. You should talk to a lawyer to figure out the best and most effective way to protect your trademark internationally.

  1. How important it is to register a trademark?

Notice to the Public of Your Trademark: A registered trademark is a clear sign that you own a brand. With the Circle R symbol, you can only show that a trademark is registered. With the letters TM, you can show that a trademark is not registered. Trademark registration also builds the reputation of your brand and lets customers know that the products or services tied to your trademark meet the quality and control standards of your brand. It's a shorthand that helps people decide what to buy by making it easy for them to tell your products or services apart from those of your competitors. A federally registered trademark also gives people who might try to steal it "constructive notice." Under federal trademark law, the "priority date" is the date your application is filed. This is also the date your trademark rights start. Since this date, everyone in the United States knows that your trademark belongs to you. If someone uses your mark, even if they have never heard of your brand, they could be responsible for trademark infringement.

Nationwide Presumption of Validity and Ownership: A trademark registration works all over the country and gives you the right to assume that your trademark is valid and that you own it. Under federal trademark law, every registered trademark is assumed to have met all of the USPTO's substantive requirements for registration and to rightfully belong to the owner of the trademark registration. These presumptions allow you to expand your business into any U.S. location with confidence that your trademark will be protected there and without worrying about trademark infringement. They also give you an advantage in lawsuits and disputes over your trademark because you don't have to spend time and money proving that the trademark is properly registered or that you own it.

Stopping people from using your trademark without your permission: A trademark registration is a legal shield for your brand. It makes it less likely that competitors will steal your trademark and gives you the power to control how your mark is used. You can tell people who are using your mark without permission to stop, and you can ask social media sites and online markets to take down content that is using your mark without permission. You can also ask U.S. customs agents to stop fake versions of your products from getting into the country. This blog post has more information about U.S. Customs and protecting your brand are two reasons to register. Another benefit is that your trademark will be added to a database of registered trademarks. This means that anyone who searches for trademarks will find yours and be less likely to use it or a similar mark.

When you register a brand's name, slogan, or logo as a trademark, you prove that you own it and are protected from infringement. Getting a trademark registration may seem like a lot of work, but it is an important part of any brand's growth and stability. If you don't know how to get a trademark registration or how to use all of the rights that your trademark registration gives you, you can talk to an experienced trademark attorney at Asbury Law.

  1. Should I hire a lawyer, or can I register a trademark myself?

You can register a trademark without the help of an attorney if you are a U.S. citizen or your business is based in the U.S. But you should know that registration is a complicated, but rewarding, process that requires accuracy and precision at every step. Hiring a lawyer with a lot of experience will give you the best chance of getting your mark registered.

You can sign up for your own trademark.

Many people and business owners think that they can save money and time by registering their own trademarks instead of hiring an attorney. But this doesn't take into account the possible problems and consequences of filing an application without help from a professional.

Applications for trademarks are complicated documents that are full of legal terms and details. The USPTO won't register your mark if your initial application has even one mistake or omission.

If you don't meet the requirements for these documents, the USPTO may ask for more documents and information before letting your application move forward to registration. This can make the process take longer and add a lot to the cost of registering.

In the long run, clerical mistakes caused by a lack of experience can hurt your application and force you to hire an attorney to fix the mistakes or resubmit the application, which can cost more than hiring an attorney from the start.

Advantages of Getting a Lawyer.

Working with an attorney who specializes in USPTO filings and does them often is better than doing it on your own. There are four main ways in which a lawyer adds value to the process of registering a trademark:

Professional writing and filing: Trademark applications are often turned down because they have mistakes or were not filled out correctly. An experienced lawyer knows how the USPTO's forms are supposed to be filled out and what information is needed to do so. This lets your lawyer use the information about your brand to choose the right application form and filing basis for your mark and file your application according to the USPTO's rules.

Tracking a Filing.

Once your application has been sent in, the registration process takes a few months to finish. Before your application is approved for registration, it must go through the examination and publication phases, which your lawyer will keep an eye on. During the examination phase, a USPTO examining attorney looks at your application to see if it meets the substantive requirements for registration. If your application is denied registration, your attorney will let you know, help you figure out what to do next, and make sure that all USPTO deadlines are met. If your application is approved at the examination phase, or if your attorney was able to overturn the initial rejection, your application will move on to publication. This means that it will be listed in the USPTO's official publication, which lets the public know that you want to register your mark. Your lawyer will keep an eye on the application from start to finish and give you updates as it moves through the registration process.

Filing responses on your behalf: Some applications run into problems before they can be accepted. If the USPTO has a good reason not to register your mark or if it wants to know more about your mark or application, it will send you a formal letter called a "Office Action." If you don't respond to the Office Action within six months of the date it was sent, your application will be dropped. Your attorney can respond to "non-substantive" Office Actions (requests for clarification or more information) without much extra work, allowing your application to move forward to registration and letting you focus on other aspects of your brand.

Higher chance of approval: If you work with an attorney, your chances of registering your trademark will go up. A study done by the University of North Carolina (UNC) found that applications filed by lawyers are more likely to be approved than applications filed by people who are not lawyers. The UNC study found that only 57% of applications for registration by people who are not lawyers are approved. On the other hand, applications filed by attorneys have an 80% approval rate, which is much higher.

You can register a trademark on your own but hiring an attorney will make a big difference in how the process goes and what the result is. A lawyer can help you avoid making mistakes in writing and filing, meet deadlines, respond to requests from the USPTO, and, most importantly, increase the chances that your trademark will be registered.

Filing a trademark with the USPTO and paying your lawyer's fees can make the process seem like it will cost a lot. But in the long run, it can save a lot of money in legal fees.

Government Filing Fees.

How to Figure Out Filing Fees: Trademark applications are broken down into "classes" of goods and services on which the trademark will be used. These classes are based on the "Nice Classification," an international system for grouping similar goods on the market that is used all over the world. For example, at its broadest, Apple would include cell phones, smartwatches, and desktop computers (Class 9), as well as retail stores (Class 35) and the hardware and software repair of cell phones (Class 37 and Class 42). The USPTO charges per class, so knowing which classes are important can affect how much it costs to apply for a trademark.

Filing Fees: It can cost between $250 and $350 to file for each class that the trademark will cover. The rate is lower if the USPTO has already approved all of the language, which can happen if the goods and services are common (clothing, general merchandise, retail services, etc.). But if you offer complicated or unique services, it might be best to use the $350 rate to give the most accurate description of what the trademark will cover.

In Use: An "In Use" application is the easiest way to get registered. This is the form you fill out if you are already selling or giving away the goods or services you want to trademark. The applicant only has to pay the filing fees for a "In Use" application, which makes it a cheaper option.

"Intent to Use" is a second type of application that can be filed. When you want to use the trademark in business but haven't had any sales or customers yet, you need to fill out one of these applications. With a "Intent to Use" application, the federal priority date will be the date the application was filed, not the date of the first use. Sometimes, applicants want to make sure that the name they want to use for their product isn't too similar to another name, so they try to get through the application process before using the mark in business. This filing method costs more, though. After the USPTO clears the name for the first time, it will send you a Notice of Allowance. You will have six months to show proof of use, or proof that your trademark is being used in commerce. At the end of this first six-month period, you have two options: you can file proof of use in commerce, which costs $100 per class, or you can file an extension. Extensions cost $125 per class, and you can file up to six (6). This gives you three years to get the brands off the ground. Intent to Use applications can be expensive if you need to file all available extensions in multiple classes. Still, the earlier priority date and name protection could save thousands of dollars in rebranding costs in the future.

Price for Help from an Experienced Trademark Lawyer

Costs of Hiring an Experienced Trademark Lawyer When you look for a trademark lawyer, you'll see ads for "fast and easy" filing help for less than $100. These advertisements can be misleading because they don't include the USPTO fees, any clearance search, and any additional responses the USPTO may require before issuing a registration. On the other hand, some lawyers charge by the hour for trademark searches and filings. This can cost up to $5,000 or more, depending on how much help an applicant needs while filing.

Asbury Law's Fees: We offer a flat fee search and filing to make our fees clearer. Our search includes the federal register, state registers, and the common law marketplace to make sure that your unique name isn't being used anywhere else in the country and to get an accurate idea of the risk of your trademark filing. In addition, our flat fee covers:

  • Calls with an experienced attorney to talk about the results of the searches or the searches that were done to better understand the risks.
  • Counseling before filing (what constitutes proof of use, which filing method is best for your application, and any questions that may arise for first-time trademark filers).
  • We will keep track of your application as it goes through the USPTO and send you updates as soon as we get them.
  • We also cover any non-substantive Office Actions that the USPTO may issue. For example, the USPTO might ask you to explain what goods and services you are selling, give an address where you live, or disclaim a word. We will keep track of the trademark application through all of these steps at no extra charge.
  • There will be bigger problems with some trademark applications. Still, these are things that we usually tell applicants about ahead of time, and we will always tell you how much these answers will cost before we charge you.
What it will cost you if you don't register your trademark

It might seem like putting in for a trademark is expensive, and even if you do that, you might not get a trademark registration. But it's important to know what not having a registration will cost.

If the brand is too similar to another brand, you might have to pay to change it. Say an applicant starts a brand that is the same or too close to the name of a business with a federally registered trademark name. When this happens, the person who started the brand later and has fewer rights often has to choose between expensive lawsuits or expensive rebranding. Litigation is complicated because the business owner is already in a weaker negotiating position, so newer businesses will often choose to rebrand.

Rebranding an existing business is difficult not only because a business must create all new branded materials, but also sometimes destroy all existing materials they have already printed. This can include advertising materials, decorations, and online presences like domain names and web design. The business also loses the goodwill they have built up in the name, which can often have a big effect on its value.

If the brand is too similar to another brand, business owners can become personally liable for their common law trademarks. If you want to pursue litigation and damages against another business that uses a confusingly similar name, the infringing business may be personally liable for damages. Federally registered trademarks are usually owned by businesses, not individuals, to limit their personal liability.

However, some common law trademarks are recorded under the individual, not the business. If a business owner uses an infringing name to advertise their business, they could be held personally responsible for lost profits and other damages.

If you don't have a federal trademark registration, your brand may not be able to grow as much as it could. Common law trademark rights may stop growth even if they don't cost you any money. Investors look for savvy business owners, and one way to show that is to protect intellectual property. A trademark portfolio shows investors that the brand is valuable and well-protected or monitored. It also makes licensing deals easier and clearer, which gives your brand the chance to grow.

Lastly, federally registered trademarks are protected all over the country, while common law rights are only protected in the place where they started. This can make it hard to grow and is another expensive thing that can happen if you don't register your trademark.

A federally registered trademark often takes a year or more to get. To register successfully, you need to spend time and money. When getting ready to register a trademark, you should think about how long each step will likely take so that a budget and plan can be made to cover the estimated time.

The process of signing up

On average, it takes between 12 and 18 months for the USPTO to finish the registration process for a trademark. Because of this, you should start the registration process as soon as you can. The process even rewards people who start early. Under U.S. trademark law, you will get protection and rights in your mark from the date you filed your application, no matter when your trademark is approved for registration.

Here are the times for each step of the process for registering a trademark.

Application Period: This is the time you have to write up and send in your trademark application. This includes choosing what you want to register with the federal government, figuring out the right filing basis for your mark, choosing the right application documents for your mark, filling out these documents with information about your brand, and sending them to the USPTO for review. As soon as you file an application, you should get a serial number that you can use to track your application as it goes through the USPTO process. At this point, you should start using ™ or a similar identifier after your mark to indicate to others that this is a brand identifier.

Examining Period: Once you send in your application, it will be given to a USPTO examining attorney for review. At the moment, it takes about eight months between filing and examination. To deal with this, the USPTO has recently hired more examining attorneys. The goal is to look at the mark within six months. The attorney in charge of the examination will look at it to make sure it is correct and that it meets the real requirements for registration. The examining attorney will also do a conflict check to see if your mark conflicts with any other trademarks that are already registered. If the examining attorney finds any reason, such as your mark not meeting the substantive requirements of registration or being too similar to a mark that is already registered, your mark will be denied registration at first. You will receive notice of this refusal through a formal document called an Office Action. You must respond to the Office Action within 60 days of the date it was sent, or your application will be dropped. If your application meets the requirements for registration and there are no conflicts with an existing trademark (or you've solved any problems raised in an Office Action), then your application will be initially approved for registration and go to publication.

Publication: If your mark has been initially approved for registration, the USPTO will send you a Notice of Allowance. This lets you know that your mark passed the examination phase. Within 30 to 60 days of sending you your Notice of Allowance, the USPTO will announce your mark in its official publication, letting the public know that you want to register your mark. Publication of your mark also starts a 30-day period during which anyone who thinks that your mark is similar to their own mark can object to your mark being registered.

Registration: If no one objects to the registration of your mark within the 30-day time limit, the USPTO will send you a certificate of registration, which is the final step in the registration process.

Can You Expedite the Process?

Getting help from an experienced trademark attorney can speed up the registration process by a lot. An attorney will make sure that your application is filled out and filed according to the USPTO's rules. This will reduce the chance of making a mistake during the application phase and make it less likely that your mark will be rejected during the examination phase.

An attorney will also conduct a comprehensive clearance search to assess the likelihood that your mark will be approved for registration and whether it conflicts with existing trademark registrations. This search will help you come up with a unique trademark, which will make it less likely that someone will object to the registration of your mark during the publication phase.

  1. Things to think about before filling out an application

Here are some things you should do before you apply for a trademark that will make the process easier and help you avoid problems.

Find Out Who Owns It: You can file for a trademark registration on your own, but one of the first things you'll have to decide is who will own the trademark. To get and keep a valid trademark, you must name the right owner in the application. Advice from an experienced lawyer can be very helpful. If you choose to register a trademark in your own name, you could be personally liable in some situations. It would also be hard and expensive to fix if a business entity is created and the trademark rights need to be transferred. However, most applicants choose to protect themselves individually and use an LLC, corporation, or other formal business entity to take advantage of the benefits of trademark ownership.

Description of Goods and Services: Trademarks don't cover every good or service on the market. They only cover the goods and services the applicants plan to offer. For example, the Dove trademark is owned by two different companies, one that makes soap and the other that makes chocolate. Once you know what goods or services you want to offer, you must put them into "classes" based on the Nice Classification. There are 45 classes, and each one covers a group of items. For example, Class 25 includes clothing, Class 9 includes electronic hardware and downloadable software, and Class 45 includes legal services. Some applicants think this is the hardest part of the trademark application process.

Filing Basis

In Use (1a) – The easiest way to get registered is to file "In Use." This means that you are already selling the goods or providing the services listed in the application. A trademark registration requires that every good and service listed is available to consumers and being used by them. If even one item is not yet being sold, the applicant will have to file as "Intent to Use."

Intent to Use (1b): If you are starting a business or growing an existing one, you may not have started selling goods yet. Smart business owners will file an "Intent to Use" application, which says they have a real plan to sell products in the United States under that trademark. This gives them priority or protects their intellectual property. You may file an "Intent to Use" application if you want to get a federal priority date sooner than you would with an "In Use" application or if you want to get permission from the USPTO before making branding or advertising materials. An "Intent to Use" application also needs a "proof of use" filing. Since all trademarked goods and services must be sold to consumers at the time of registration, the USPTO requires the applicant to sign a legal document saying that these are all in use.

Can You File Your Name and Logo on the Same Application?

Yes, your name and logo can be filed together, but it is not always a good idea. A trademark is supposed to be unique. If you include both your name and your logo in the same application, you are asking for a design mark, which is a single mark made up of both your name and your logo. Before you apply for your name and logo together, you should think about the pros and cons of registering a design mark. If your application is accepted, you will have trademark rights for your design mark and for your name and logo as separate parts that can be enforced by the federal government. For example, the mark below is a registered design mark consisting of Nike's name and logo. This registration protects Nike's name and logo from being used by an unauthorized party in a way that violates their rights. However, if an unauthorized party were to use Nike's name and logo in a very different design mark, the rights given by this registration would be decided by comparing the marks' "commercial impressions" (their appearance, sound, and meaning). If the two marks are the same, but their designs are very different, a third party could say that because the designs are so different, they give off different commercial impressions and therefore do not violate Nike's trademark rights.

Keeping a Trademark Registration Current

A trademark is still valid as long as it is still being used in business, unlike a patent. But registrants must file "maintenance" documents to show the USPTO that they are still using their trademark in the right way.

The first document for maintenance must be filed between the fifth and sixth year after the mark is registered. This means that if the mark was registered on January 30, 2020, the Registrant can file a renewal as early as January 30, 2025, but has until January 25, 2026, to do so. The USPTO also allows "grace periods" of six months after the last date, but there are extra fees for the delay.

Between the ninth and tenth year, the next maintenance document is filed, with the same grace period. After this second renewal, all maintenance papers are due ten years after the last one.

Keeping up with ownership

A registrant must continue to make sure the information about correspondence, attorneys, and ownership is correct, in addition to filing maintenance documents. By keeping accurate records with the USPTO, deadlines won't be missed, and all correspondence will go to the right people.

Keeping an eye on the market and USPTO applications

To keep a registered trademark as a source identifier for your goods and services, it is important to keep it unique. Here are some ways to make sure that other marks that a registrant thinks are fake, too similar to their own, or do not have priority do not get registered or stay registered with the USPTO.

Letters of Protest: This letter is sent to the USPTO as soon as an application is sent. It asks that the registered mark be considered when the protested application is looked at. You can sign up for a monitoring service or keep checking the USPTO database for words that you think are similar to your trademark.

Oppositions: As we've already talked about, there's a time when an application is made public, and people can speak out against it. Registrants can say that the USPTO should have taken their mark into account when looking at the application. These objections go straight to the Trademark Trial and Appeal Board (TTAB).

Cancellations: If a mark has been registered that is too like the registrant's mark, the registrant can start a "cancellation" with the TTAB to argue that the infringing mark has problems with its similarity, priority, or something else.

Demand Letters: If the person using the infringing mark doesn't register it with the USPTO, the person who registered the original mark will have to contact the infringer separately and tell them about the original rights and federal trademark. This can make problems worse, let other people know that another trademark is being used, and put the Registered mark in danger if the infringer has priority.

Federal Litigation: For many registrants, federal litigation is their last resort. This takes the case out of the USPTO/TTAB and puts it before a federal judge. Federal litigation is the most expensive option and can cost tens of thousands of dollars. However, it is the most aggressive way to go and can permanently stop an infringer from using a confusingly similar mark.

None of these filings guarantees that the infringing mark won't be allowed to register. Whether or not the marks can coexist is up to the USPTO examining attorneys, the TTAB, or the local courts. But it's an effective way to let people know that the marks shouldn't be used together and that someone is actively watching over the space.

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While many of our clients are from Jacksonville, Florida, and surrounding counties in Northeast Florida (including Baker County, Clay County, Duval County, Flagler County, Nassau County, Putnam County, and St. Johns County), Asbury Law serves individuals and corporate clients (e.g., family-owned business, single-member LLCs, and much larger and/or publicly traded companies) throughout the State of Florida.

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