Is this the year you start that new business or launch a new product or service? You may be wondering if you need a trademark to protect your brand. Here are the basics of trademarks: what they are, how they work, and how a trademark attorney can help you obtain one.
What is a Trademark?
A trademark can be a word, phrase, symbol, design, or any combination of these that identifies your business or the goods or services you offer. Trademarks protect your brand, setting it apart from the competition.
Some people confuse trademarks with patents and copyrights. All three are forms of intellectual property, with distinctions.
Unlike a trademark which protects a brand’s unique identity, a patent protects a technical invention. This includes machines, chemical compositions, and processes. A new kind of knee brace, an original formulation for treating acne, and a new way of laying paving stones could all be patentable.
Copyright protects creative works, like books, music, screenplays, sculptures, paintings, and even software code.
What are the Benefits of a Registered Trademark?
When you put blood, sweat, and tears into building a company or creating a product or service, the last thing you want is someone trying to copycat you — and in the process, potentially siphoning off profits that should have gone into your pocket.
For example, suppose you spent years building up a small chain of gourmet ice cream shops throughout Florida that you call “Designer Ice.” One day, someone opens an ice cream shop a block from one of your locations and calls it “Ice by Design.”
It would seem the owner of “Ice by Design” is trying to confuse consumers with a business name similar to yours. Why? So they can profit from your hard-earned reputation every time someone mistakes them for you.
However, if you had a registered trademark on “Designer Ice” for a food-related business, you would have the right to bring a lawsuit against “Ice by Design” based on a “likelihood of confusion.”
Having a registered trademark can also:
- Be used as the basis for filing for trademark protection in other countries
- Discourage others from using your trademark (or a confusingly similar trademark)
- Be recorded with U.S. Customs and Border Protection to stop goods that infringe on your trademark from being imported.
Do You Need an Attorney to File a Trademark Application?
You can file a trademark application without an attorney’s help. However, it’s usually not a good idea. Here are a few reasons why:
– Save Money. Even though you will pay fees for an attorney’s guidance, it’s often worth it in the long run.
What if your trademark isn’t registerable? When you file a trademark application with the U.S. Patent and Trademark Office (the government agency that issues trademark registrations, also known as the USPTO), the fees you pay are non-refundable — even if your application is rejected.
A savvy trademark attorney can help you obtain a trademark clearance search before you file and advise you on the likelihood of your application resulting in a registered mark.
– Save Time and Avoid Aggravation. Your pursuit of a trademark registration may hit snags, and an attorney will know how to address them efficiently.
Without a trademark attorney’s expertise, you could spend many frustrating hours grappling with confusing correspondence from the USPTO. Will you understand what they’re asking for and know how to respond?
One surefire way to complicate things is to file your application incorrectly. A trademark attorney can set you straight from the get-go.
– Protection from Fraudsters. Once you file a trademark application, you may find yourself targeted with solicitations from scam artists. They know that many applicants are unfamiliar with the trademarking process, and they will try to capitalize on that naiveté by selling you unnecessary services. An attorney can shield you from getting bilked.
– Putting Your Trademark to Work. You got a trademark to protect your brand. But when your brand is threatened, will you know how to put your rights to work?
A trademark attorney will know how to properly enforce your rights against anyone trying to infringe on your registered mark.
A WORD OF CAUTION
There is a world of difference between a trademark attorney and a private “trademark filing company.” The USPTO recommends avoiding these companies, as they can be misleading and provide poor guidance. Be sure you’re dealing with a licensed trademark attorney.
Preparing to Work with a Trademark Attorney
It’s not necessary to do heavy-duty homework before consulting with a trademark attorney. They will know how to guide you through the application process, step-by-step.
However, if you’re the type who likes to come prepared, there are some things you can think about in advance that may help speed up the filing process.
Trademark Format. Do you want to register your trademark in a standard character format, a special form, or both?
The majority of trademarks are registered in a standard character format, which means they are represented by plain text. For example:
DESIGNER ICE
This format simply protects the word or phrase.
A “special form” format protects the way the trademark looks, such as a logo, or the use of a specific color. For example:
Trademark Strength. Some trademarks are stronger than others. And by stronger, we mean that they’re easier to protect against your competitors.
Strong trademarks tend to be fanciful, arbitrary, or suggestive. For example:
– Fanciful: Made-up words, like Scrabble®.
– Arbitrary: Words that have nothing to do with the goods or services they represent, like Apple® as a brand name for computers and other tech devices. Obviously, these products have no direct connection to fruit.
– Suggestive: Words that suggest a trait or function of the goods or services they represent, like Tesla® electric vehicles. Nicolai Tesla is well-known for his experiments with electricity in the late 19th and early 20th centuries.
Weaker trademarks tend to be descriptive or generic. For example:
– Generic: These words cannot be trademarked at all, because they are common names for what they represent.
For instance, the phrase “ice cream” is not registerable as a trademark for ice cream. If it was, that trademark would prevent anyone who sells ice cream to call it “ice cream.” You can’t have that kind of monopoly on the English language!
– Descriptive: A close cousin of generic words, these describe an element of the goods or services they represent.
For example, the USPTO might deny an application to trademark “Coastal Brokerage” for a real estate brokerage that only sells properties by the ocean, arguing that it is “merely descriptive.”
If this happens to you, you’ll probably want to present the USPTO with a counterargument for why your mark deserves a registration. That’s where your trademark attorney can be particularly valuable – by preparing a strategic, well-crafted response.
If you suspect you may have a weak trademark, get input from your trademark attorney.
Application Filing Basis. Are you already using the word, phrase, or logo you want to trademark in business? If so, you will need to file a trademark application based on “use in commerce.”
If you haven’t started using the mark yet, but plan to in the next three to four years, you will file based on “intent to use.”
These two types of applications differ slightly, and your trademark attorney will know how to prepare and file both.
If you will be filing based on use in commerce, you must prove that you’re already using the mark you want to register.
As part of the application process, be prepared to show evidence of use to the USPTO. Some acceptable forms of evidence include:
- A brochure or ad
- A label or hang tag attached to your goods
- Packaging for your goods
- A screenshot of your website
We’ve just touched the tip of the “designer iceberg” when it comes to applying for a United States trademark. However, you now have a basic understanding of how registered trademarks work.
You also have an awareness of details you might want to think through before you contact your trademark attorney, although this is optional. Again, the best trademark attorneys know how to make the application process as easy and stress-free as possible for their clients.
If you have questions about obtaining trademark protection for your business name or the brand name of your products or services, contact Sanchelima & Associates today for straightforward, no-nonsense legal guidance. We’ll make it clear!
