You are starting a business and want to make sure that your business name and logo are protected from the get-go. You think you need a trademark, but aren’t positive. If you do need one how do you get one?
A mini-lesson in trademarks is a great place to start!
What is a Trademark?
Trademark is defined as, “any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.” For example, the name “Coca Cola” is a trademark for the soda.
Closely related to trademarks are service marks, collective marks, and certification marks. A service mark is a trademark that is used to identify services rather than goods. A collective mark is a mark used by an organization or collective to identify members and/or services or goods made by members. A certification mark is a mark used by someone other than the owner of the mark for identification purposes.
All of the above terms may be referred to as “marks”.
Do You Need a Trademark?
A trademark is commonly confused with patents and copyrights. In it’s most basic level, according to the United States Patent Office (USPO), “a trademark typically protects brand names and logos used on goods and services. A patent protects an invention. A copyright protects an original artistic or literary work.” So if you are wanting to protect your photograph or your new idea for an automatic pen ink re-filler you probably don’t need a trademark…until you want to protect the name or logo of said photo or ink re-filler.
Before you begin the actual steps of registering a trademark, you need to make sure that the words or logo that you wish to trademark is actually registrable. The main concerns are:
- That the exact mark you wish to trademark is already in use, or a mark is already in use that is too similar to what you want to trademark.
- That the name/logo is not protectable or difficult to protect. The more unique or distinctive a mark, the easier it is to protect.
You can run a trademark search through the Trademark Electronic Search System (TESS) to determine whether what you want to trademark is already trademarked.
Filing an Application to Register a Trademark?
Now on to the good stuff! The process of registering a trademark is relatively quick and inexpensive (in the grand scheme of starting a business).
When you are ready to register your trademark visit the Trademark Electronica Application System (TEAS) at http://www.uspto.gov/teas. You can also file a paper application, but electronic filing has a wealth of benefits over paper applications, such as it is open 24/7, the fees are lower, certain parts of registering will be faster.
According to the USPTO, the application must include the following information:
- The owner of the mark (“applicant”)
The owner is the person or business that controls the good or service being identified by the mark.
- Name and address for correspondence
This information will be public, so many people use a P.O. Box. Email is also an option if you select it for official correspondence.
- Depiction of the mark (“The Drawing”)
You must include at least one drawing depicting the mark that you want to trademark. If you have variations of the mark you must include a drawing for each. There are two kinds of drawings:
- Standard character: This is generally used for a mark solely consisting of words.
- Special form: This is generally used for a mark consisting of a design or logo and/or wording. It is a more specific protection than a standard character.
Generally the drawing is in black and white, but if you want to protect the mark in a specific color than you must submit a color claim.
A good is a product and a service is an act performed for the benefit of the customer. In your application you must classify whether you want to register your mark for a specific good, a specific service, or both.
- Application filing fee
The fee will depend on how you file and the international classes you are registering under (category of good/service).
- Basis for filing
The basis for filing is your current use of the mark in commerce or an intended future use of the mark in commerce. For use in commerce you must provide the date of the first use of the mark, the date of the first use of the mark in commerce, and an example of how it is used in commerce. For future use, you must file with a “bona fide intent” to use the mark in commerce.
- A specimen for use-based applications
This is an example of how the mark will actually be used in commerce. For example, instead of a drawing of the coca cola label it will be a sample of the label used on the bottle.
Signature may be completed by the owner of the mark, an agent of the owner, or an attorney for the client.
What Happens After Filing?
Once you submit your application you will receive a filing date. If you filed online the date will be when it reached the USPTO server in Eastern Standard Time. If you filed a paper application the filing date will be the date the USPTO received the application. The filing date is important because it gives you “priority” over those applications after you. For example, if you want to register “Sandy’s Beach Blankets” and an application comes in after you for the same name, your application will receive priority. However, this “priority” is not a guarantee.
You must continually check the status of your application. This can be done through the Trademark Status and Document Retrieval (TSDR) system. Make sure that you meet all deadlines and respond to any correspondence in a timely manner.
An examining attorney will either issue a letter explaining why your mark was refused or other requirements or approve the mark for publication in the Official Gazette (OG), a weekly online publication. If you receive the letter you have six months to submit a response. If your mark is published in the OG there is a 30-day period for objection.
What happens after publication depends on how your mark is currently used. If no objection is made a registration certificate will be issued if your mark is currently used in commerce. If no objection is made and you have intent to use the mark in commerce application then a Notice of Allowance (NOA) will be issued. Within six months you must submit a statement of use showing it is being used in commerce or request an extension.
Once you have a registered trademark that is not the end! Remember you must maintain it too in order for the mark to remain protected!
If you need more help check out the USPTO FAQs here!
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