TRADEMARK REGISTRATION AT A GLANCE: | THINGS TO KNOW| TIPS FOR APPROVAL
An extremely precious asset in modern economies, a powerful and concise communication instrument and ultimately the most effective device for noticeability is a trademark. Yes, in this blog post, we are summarizing Trademarks and Trademark Registrations. So, we hope that after you end up reading this post, you will have a better understanding of Trademark registration concepts and the related processes. You will also find the answers to frequently asked questions such as how to apply for a registered trademark, how to register my trademark or how to trademark a name.
WHAT IS TRADEMARK?
U.S. Patent and Trademark Office (USPTO) is an agency within the Department of Commerce holding the sole authority to issue patents and trademark registration for products and intellectual properties. According to USPTO’s trademark definition, “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 others.” The Office also introduces Service Mark to distinguish services from goods. However, note that the term “Trademark” is used for both frequently.
TRADEMARK vs. COPYRIGHT & PATENT
All of the above terms are often confused since they are all related to intellectual property. So, it would be useful to clarify each term.
- Copyright: When we talk about copyright, we generally refer to a repertoire of rights assigned to its holder about an original work of authorship. Musical, literary, dramatic, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture are among this type of original works. Once you are granted acopyright, reproducing, publicly displaying, or performing the original work or distributing copies would be under the legal protection of the law. As you see, copyright does not cover titles, short phrases, or common design elements as indicators of sources of goods and services. That is the domain of Trademark registration. While copyright protects the author per se, Trademark registration protects both consumers and trademark owners.
- Patent: USPTO defines patent as a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. So, the primary goal of a patent is to encourage and commercialize inventions. While a trademark is awarded on the basis of distinctiveness, a patent is awarded on novelty and non-obviousness.
WHY DOES TRADEMARK REGISTRATION MATTER FOR YOUR BUSINESS?
- Trademark is a unique identification tool that enables you to communicate with your customers/clients. Moreover, it is almost miraculous to see how a single phrase or a logo could impact customers’ perceptions and buying decisions.
- Building an original brand is a process that requires a considerable amount of investment on the grounds of trust and quality. But, once the process is completed and embodied with your registered trademark, you can make enormous savings on advertisement costs.
- The marketplace is hectic. However, trademark registration helps to distinguish you from others, capturing buyers’ attention and highlighting your products and services.
- Trademark registration authorizes you to proclaim your legal ownership over your brand, logo, and other specified elements relevant to your institutional identity within a geographic region being local, state, or nationwide. In other words, no one else can utilize your registered trademark (be it your name, logo, sign, or motto) in that domain. Note that when you register your trademark with the USPTO, your protection will cover you in any court nationwide.
- Trademark Registration generates a win-win situation for both your business and the customer. That said, trademark registration protects not only the owner but also the customer. First, trademark prevents abuse of customers who are supposed to associate different aspects and attributes with various goods and services. Second, businesses undertake greater responsibility for products that bear their trademarks. Of course, that results in increased quality of your products
- It is sometimes a necessity. For example, most banks in the U.S require a trademarked name or a title that will serve as a DBA (Doing Business As) when opening a business account.
- Keep in mind that trademarks would be the first search terms for people who want to get online information about you. In a rapidly changing e-commerce era, you should think about your trademarks and proper domain names simultaneously.
- In addition, trademarks are genuine and tangible valuable assets. They bear the potential of creating value over time. The long-term competitive advantage emanating from well-established and trusted trademarks can lead entrepreneurs to different business areas much more easily.
- Ultimately, it is true that trademark registration is not mandatory by law. However, all above-mentioned benefits with respect to the relatively inexpensive costs of protection (trademark price) make it a profitable and necessary business decision.
WHAT CAN BE A SUBJECT TO TRADEMARK REGISTRATION?
In essence, the followings can be a subject to trademark registration:
- Any unique word
- Tag Lines
- Any combination of all above.
However, don’t take this list as an exhaustive one. Things are changing rapidly including trademark literature. Today, some non-traditional identifiers such as colors, scents, holograms, sounds, and motions could also be a subject to trademark registration as well.
LIMITATIONS: WHAT CAN’T BE TRADEMARKED?
A broad range of variations and options are available for businesses considering to constitute their trademarks. However, there are also a bunch of limitations, restrictions, andrules regulating this area.
- Previously registered marks, or marks that are associated with another product and service in the same field
- Any trademarking element that fails to differentiate the source of products/services from others
- Merely descriptive words and phrases (e.g. fragile for bumper stickers)
- Generic expressions and widely used terms (e.g., drive safely, Congress, etc.)
- Outright religious citations and quotes
- Names without consent from the owner
- Immoral, vulgar, or misleading words and phrases
- Government symbols
As you see, there are a lot of legal and conceptual issues that might be open to disputes and cases. As the USPTO states hiring a trademark attorney would be the most rational way to go.
TRADEMARK REGISTRATION PROCESS
Let’s summarize the Trademark Registration process step by step and try to specify how to trademark;
- The first thing you should consider before a trademark application is deciding if trademark registration is suitable for your business need. As mentioned above, patent, copyright, and domain names are all different concepts and have different procedures.
- After that, get ready for application:
a) At this stage, you should have selected your mark carefully, since not every mark is appropriate for registration. Furthermore you should have evaluated the degree of difficulty in protecting your mark since USPTO would merely register it. It would be your job to enforce your trademark.
b) You must specify your mark format (whether it is a character, stylized/design, or a sound mark)
c) You should clarify the products and services to which mark will be applied
d) Ask your attorney to conduct an extensive trademark search to find out if there are other marks that might potentially conflict with yours.
e) Determine your basis of filing (use "in commerce" or "intent to use")
3. Prepare and file trademark application for registration.
4. Then, complete the work with assigned USPTO Examining Attorney.
5. Receive the result of your application(Approval or Denial)
6. When you finish your registration, you should take the required actions in order to maintain your status.
TRADEMARK REGISTRATION FEES
USPTO charges trademark applicants on per class basis for all goods and services. There are three initial application fees for electronic filing being $225, $275, and $400. There are also possible additional fees and post-registration fees such as a $100 specimen fee for each class of goods/services. Please keep in mind that these fees are non-refundable.
WHAT TO EXPECT FROM A TRADEMARK ATTORNEY
- A potent and specialized trademark attorney would provide the best possible legal counsel for possible drawbacks and obstacles during your trademarking process. Ranging from proper and protectable mark selection to readiness to respond and prosecute a denial, a trademark lawyer can considerably facilitate your trademark registration.
- A trademark attorney can perform more detailed and well-rounded trademark search not necessarily limited to USPTO’s database. In other words, a licensed and experienced trademark lawyer will also search state-level databases and other conventional sources for unregistered trademarks.
- While struggling to protect your registered trademarks against infringements, an experienced and competent trademark infringement lawyer will be instrumental in determining and enforcing the content and the extent of your rights and in providing the appropriate legal counsel against infringements.
- A trademark attorney will represent you before USPTO’s Trademark Trial and Appeal Board in opposition and cancellation cases. In conclusion, since legal issues and proceedings are very complex and require highly specialized law notion and extensive knowledge, hiring a Trademark Attorney will be the best way to deal with them.
WHAT TO EXPECT FROM US
We at, John & Onal Associates PC, are ready to help and guide you in every aspect of the above processes. As a result, we adopt a holistic approach to solve our valued clients’ problems and provide the best possible solutions. We know how vital developing a thriving and long-lasting enterprise and institutional identity is, and we regard our intellectual property as an independent asset to be protected, maintained, and improved pro-actively.
Should you have any questions and concerns, Please do not hesitate to contact us. Our team will certainly be more than happy to assist you.
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