File A TM
Trademarks are utilized when a person wants to protect the word, design, or logo that they use to identify their good or service.
Although more difficult, time consuming, and expensive than copyrighting, trademarks are a vital part of protecting your goods or services.
The following is a recitation of the steps that you should go through to determine whether your name or logo design is ripe for trademark protection and then how to file a trademark. It must be said that this information is merely a guide of the basic knowledge you would need to file a trademark. When do anything that is as important as protecting your business assets, it is always best to consult an attorney who has experience in Intellectual Property law.
FIRST. Research your proposed mark.
Trademarks are governed under Federal law. The grouping of applicable Federal Law is collectively called the Lanham Act. Just as the Latham Act governs the law for all trademarks in the United States, the United States Patent and Trademark Office (www.uspto.gov) is responsible for the management and administrative functions of enforcing the Latham Act.
The USPTO website contains a database of all pending, registered, dead, and denied trademarks. Therefore, the first step in obtaining a trademark is to determine whether someone else already had a pending or registered trademark with the same name.
If there is another trademark with the same name as the one you are proposing, you must next look at what category (or class) they are associating their mark with and then determine how close it is to your proposed category of goods or service.
There are 45 different classes of goods and services. In order to determine what class your good or service belongs in, just examine, objectively, what your good or service relates to. A list of the classes are below:
- Cosmetics and cleaning preparations
- Lubricants and fuels
- Metal goods
- Hand tools
- Electrical and scientific apparatus
- Medical apparatus
- Environmental control apparatus
- Musical instruments
- Paper goods and printed matter
- Rubber goods
- Leather goods
- Nonmetallic building materials
- Furniture and articles not otherwise classified
- Housewares and glass
- Cordage and fibers
- Yarns and threads
- Fancy goods
- Floor coverings
- Toys and sporting clothes
- Meats and processed foods
- Staple foods
- Natural agriculture products
- Light beverages
- Wines and spirits
- Smokers’ articles
- Advertising and business
- Insurance and financial
- Building construction and repair
- Transportation and storage
- Treatment of materials
- Education and entertainment
- Computer, scientific, and legal
- Hotels and restaurants
- Medical, beauty, and agricultural
- Personal and legal
If your class is substantially different than the class of goods or services already trademarked with your name then it is likely that there will not be any confusion between your goods or services and their goods or service, despite the fact that they are named the same thing.
Please be advised that you are always taking a risk when you attempt to trademark a name that is already trademarked, even if the classes are substantially different. The first owner may try to oppose or cancel your trademark, which opens you up to at least a year and a half of administrative litigation, which will be very costly. As stated previously, it is always prudent to speak to an attorney before proceeding with any trademark application.
For more information on trademark opposition, please refer to the “Oppose A TM” section of this website.
SECOND. Determine whether your mark can be protected under trademark law.
There are certain types of names that are unable to be protected under trademark law. If your name is considered one of the following types of marks it is possible that either a person in the general public will try to oppose or cancel your trademark application or the USPTO attorney reviewing your application will deny your application or defer it to the Supplemental Register.
- – Nonuse: A mark that is not in use in interstate commerce and not intended to be used in interstate commerce cannot be registered. Interstate commerce means that the mark is seen and people in multiple states in the United States use the goods or services. If you do not intend to use the mark in relation to the goods or services in commerce then you cannot register the name.
- – Generic: A mark that is considered “generic” is one that is considered the actual name of a regular and normal thing. For instance, a person cannot trademark ‘car’ or ‘computer’ or ‘guitar’, because those words are simply what the thing is called. Think about it this way- normally, a name able to be trademarked is an adjective that would follow a generic name, which is the noun.
- – Descriptive: A descriptive mark is one that describes the item as opposed to be something distinctive that would stand out in the minds of the public and specifically identify your good or service. Descriptive marks are considered weak and would likely be pushed to the Supplemental Register, which means it would not be given full protections under Federal Law. Examples of a descriptive mark are: “Salty” in relation to a Saltine type cracker or “Denim” in relation to jeans.
Descriptive marks can become distinctive and would then be put on the Principal Register if they obtain a secondary meaning, which means that consumers identify the mark with the good or service.
- – Surname: If a mark contains a person’s name or last name, it is generally considered descriptive and will be published on the Supplemental Register, unless it obtains secondary meaning and is considered unique and identifiable by the public.
Examples of a surname mark are: Sullivan’s Sandals or Miller’s Computers.
- – Geographic: A mark that includes a geographic identifier is only protected if it is arbitrary or suggestive, which means that the geographic word does not have anything to do with the good or service. An example of this would be Arizona as it relates to the iced tea.
If a mark is geographically descriptive or misdescriptive, which means that that the geographic identifier is used to lead the public to believe that the good or service is related to that location, whether truthful or not, it is usually considered weak and would be registered in the Supplemental Register.
- – Immoral, deceptive or scandalous: Any mark that contains an immoral, deceptive, or scandalous matter, whether implied or expressed, will be denied trademark protection.
- – Marks that falsely suggest a relationship with another person, entity, or product: A mark that leads the public to believe that the mark is related to another person, entity, or product cannot be registered because the mark is simply trying to gain recognition by association. In addition, falsely suggesting a relationship to another causes the public to be confused. This concept is admittedly very similar the next concept, ‘Confusingly Similar’.
- – Confusingly similar: As mentioned previously, if your proposed mark is already registered by someone else or if it is strikingly similar to another mark already registered then it’s likely that either the owner of the other mark or the USPTO attorney reviewing your application will deny your application.
A similar concept to ‘confusingly similar’ is ‘dilution’. If you try to trademark a mark under one class and there is already registered the same mark under a different class it is possible for the latter to prevent you from registering your mark. The reason is that your mark will cause the other mark to be diluted. This concept only applies if the prior mark is well known and if your mark would cause the prior mark to be considered more common (dilution).
THIRD. File your application.
The USPTO website contains a function that allows the public to file a trademark applications directly to their site. The process is very simple and the USPTO offers a lot of help in the process. However, as I mentioned before, it may also be a good idea to hire an attorney to handle the application for you particularly if you are wary that a person could file an opposition or cancelation petition.
There are two types of electronic applications on the USPTO website. The first type is called TEAS Plus Form. This application has stricter requirements but is the cheapest option ($275.00). If you are able to file a completed application, pay in full, and most importantly- select your goods/services class from the list provided, then you should file the TEAS Plus Form.
The TEAS Form, however, should be used if you’re not able to find the exact class of goods/services in the list provided for which you are trying to protect with your trademark application. In many cases, you cannot add language to further describe your mark unless you either file under the TEAS Form or unless you request that your unique identification class be added to the list under the TEAS Plus. In addition, filing under the TEAS Form is more costly: $325.00.
In order to fully complete the application (if you are filing the TEAS Plus Form) you should have the following information near you before you begin:
- – You need to decide who will be considered the “owner” of the trademark. If you want the trademark to be in your personal name or the name of your company you will need to have all the relevant contact information ready to input.
- – You will need to submit the name (word mark) or logo design (design mark) you are attempting to trademark. In most cases, unless your word mark is already registered and is well known in association with the logo design, it is unnecessary to trademark a design. Trademark of a design is something that you would want to do after you’ve already registered the name.
- – You will also need to input the exact class of your goods or services, if you are using the TEAS Plus Form. There are only 45 classes but there are hundreds of class descriptions already approved by USPTO to pick from under the TEAS Plus Form. Finding the class description that pertains to your good or service is very time consuming and should be done before you begin the application process.
- – Finally, before you begin the application process you will need a specimen of your proposed mark in use in interstate commerce. If you do not have this yet, then you must file an “intent-to-use application”, which means you will be given an initial six months to submit the additional fee ($100), a Statement of Use, and the specimen as soon as the mark is used in interstate commerce. An applicant can receive addition six-month extensions to finish the “intent-to-use application” for an addition $150.00.
An example of a specimen is a photo or screen shot of your mark being used in association with the good or service in interstate commerce. The file should be saved as a .pdf.
FOURTH. Trademark approval.
As soon as you finalize the trademark application, you will receive a confirmation e-mail from the USPTO. An attorney with the USPTO will then be assigned to your application. The USPTO attorney will review other mark applications and registrations and it will determine whether your application meets all of the criteria for registration and whether it is a name that can be registered in the first place.
As soon as you complete the trademark application, you may put the abbreviation “TM” beside the mark to show that a trademark application was filed.
The USPTO attorney may contact you to ask you to clarify or provide additional information. The USPTO attorney may also require you to make changes to your application. Depending on the circumstance, these changes may cost $50.00 each. Another thing to note is that after the USPTO attorney contacts you with the questions or concerns, you typically have six (6) months to respond before your application is considered abandoned.
FIFTH. Trademark publication.
If the USPTO attorney approves your mark application and it is determined to be descriptive, geographic, or a surname, it will be published in the Supplemental Register. The Supplemental Register is a secondary list that possesses less rights and protections than those on the Principal Register (the main register). Of the protections that the Supplemental Register does not afford a mark on its list, two important ones are: there is no implication of exclusive use of the mark and the owner cannot claim that the mark is incontestable.
A mark on the Supplemental Register is not able to be opposed.
If the mark application is approved the USPTO attorney and it is not a mark that should be published in the Supplemental Register, it will be published in the Principal Register for 30 days. During this period of time, any person who has an interest in the mark, which could merely be any person in the public, may file a petition to oppose or cancel the trademark application.
SIXTH. Trademark registration.
If no one timely contests the application of the mark, the mark will be registered and the symbol ® can be placed beside the mark when shown in commerce.
Registration runs in ten (10) year intervals. An owner must file an affidavit of continued use of the mark between the fifth and sixth year after registration. If this is not done, the trademark will be canceled.