In this second part of a two-part series, you will learn what items to consider before you register a trademark for your logo, brand name or business name, and why you might want to hire an attorney to help you. Before you apply for federal registration, be aware that not everything can be registered as a trademark. Here is the link to part one of this series.
Some Things to Be Aware of Before Submitting Your Application to register a trademark
- The mark in your application must not be easily confused with another already registered mark on two different counts: 1) the marks are too similar – they look alike, sound alike, etc., 2) the goods and services are related – where consumers mistakenly believe the goods and services come from the same source
- In some cases, identical marks can co-exist as long as the businesses are unrelated
- You need to do a pre-application trademark clearance search in all the following areas:
- Use the free “Trademark Electronic Search System” (TESS) to search in the USPTO national database for registered marks that are similar to yours that are also used with goods and services that are related to your business
- Search state trademark databases
- Search business name databases
- Search websites and articles on the Internet that may have similar marks to yours
- You may hire a trademark attorney to do the trademark clearance search for you
- You may watch the trademark information network (TMIN) on USPTO.gov for helpful information
- Be sure your mark is inherently distinctive and strong so it is easier to protect legally. A strong mark is fanciful, arbitrary or suggestive. This includes invented words such as Xerox or Microsoft. Arbitrary words have no association with the goods and services, such as Apple or Gap. A weak mark is generic or descriptive, common everyday names, such as “creamy,” “milk” or “bicycle.”
- Some hot marks may cool over time and become generic. When a mark is not policed by the owner, they will lose their trademark significance over time. Examples are “escalator,” “zipper,” and “yo-yo.”
Trademark Selection Considerations
The following criteria may prevent you from getting approval from USPTO
- Strength of the mark
- Likelihood of confusion
- Geographically descriptive
- Deceptive, disparaging, or offensive
- Misspelling of descriptive/generic wording
- Name or likeness
- Title of a single book or movie
- Ornamental/decorative matter
Consider how your trademark may be interpreted by people of different cultures, countries or religions, and how the word(s) may be translated into foreign languages.
The Trademark Electronic Application System (TEAS) online regular filing fee is $325 per class of goods and or services. The filing fee covers the USPTOs search and legal review of your case, so you don’t get the fee back if your trademark is not approved. There is a lot of information on the USPTO.gov web site to help guide you through the application process. You may also call the USPTO Trademark Assistance Center at 800-786-9199 or email to TrademarkAssistanceCenter@uspto.gov for general information only.
The USPTO office cannot provide legal advice or do a pre-application search for you. It also can’t enforce trademark rights. It is up to you to file legal action for infringements on your trademark. Many applicants hire an attorney who specializes in trademark law to represent them throughout the process. If you hire an attorney, make sure he/she is licensed in USA and is experienced in trademark law.
How a Privately Hired Attorney Can Help you register a trademark . He/She can:
- Conduct a pre-application clearance search and give you a legal opinion on the availability of the mark
- Interpret the search results
- Navigate the application process
- Help you understand the scope of your rights
- Advise you on the best way to maintain and enforce your rights
Here are Other Sources of Assistance to Help you Learn How to register a trademark
- Free and reduced-price legal services (Contact the pro-bono divisions in attorney’s associations)
- USPTO Law School Clinic program (Law students who are studying trademark law can assist you with the process)
- SCORE program run by SBA (www.score.org)
- Patent and Trademark Resource Center (PTRC)
Use Caution when Hiring an Online Trademark Filing Company
- They may not provide all the services you actually need, for example they may not provide a legal response to an “office action” letter from the USPTO’s office
- You may receive solicitations after you file that look like they’ve come from USPTO’s office. Don’t respond to those. To get more information on what these postal mail and online solicitations look like, go to this link on USPTO’s website: http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations
A trademark is the most valuable asset of your business. Be sure to register a trademark that is very strong and clear. For maximum protection, register it with the USPTO’s office and protect it from any infringements. It is tangible evidence of an intangible asset.