Q? What is a trademark?

A word, phrase, symbol or design (i.e., logo) that identifies or distinguishes one company from another.

Q? How do I establish rights in a trademark?

The moment you use a trademark in interstate commerce, you begin to develop rights in that trademark, regardless of whether it is registered with your state or the United States Patent and Trademark Office (the “USPTO”).

Obtaining rights by actual use – without registering your trademark – is referred to as “common law rights.”  Thus, you don’t have to register your trademark in order to claim rights to it.

Q? So, wait… do I HAVE to register my trademark in order to claim ownership?

No. But you should.

Q? Why?

Think of registration as both a “shield” and a “sword” for your company.  Registration acts as a “shield” because the services we provide help your company understand how similar (or dissimilar) your trademark is compared to your competition, and whether you might be a potential infringer if you continue to use a certain trademark.  Registration also acts as a “sword” because you can demand your competition cease and desist using a trademark similar to yours.

Imagine if you didn’t have your trademark registered, and instead you had to rely on your common law rights to either defend against an infringement action or convince your competition to stop using a similar trademark.  How would your Cease & Desist Letter read?  “No, we don’t have a federal registration number to give you…”

If you’re not federally registered, how serious are you about protecting your business.

Not only can a federal registration help avoid litigation, it also provides a substantial procedural advantage once a lawsuit begins.  And as a litigation firm, take it from us that this is no small benefit. Here are a few:

  • A legal presumption of your ownership of the trademark and your company’s exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring a lawsuit in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ® and
  • Public notice of your claim of ownership of the mark (Listing in the United States Patent and Trademark Office’s online databases)
  • Potential triple damages and attorney fees

Q? Okay, I want to protect my trademark rights. I want to register. What are the next steps?

Whether you’ve been using a trademark for years (but haven’t yet registered it) or you want to develop a new one, you first need to make sure the trademark isn’t being used by another company. Our firm provides a comprehensive trademark search which includes the following databases: the USPTO, SEC, BBB, Franchise and Business Opportunities databases, State Business Entity and Trademark databases, Social Media databases (including Twitter), Internet searches (including Google, Bing and WhoIs), and international trademark databases in Australia, Canada, Germany, United Kingdom and the WIPO.

Q? That seems like overkill. Why the need for a comprehensive search? I want to file my application THIS SECOND!

Filing a trademark application with the USPTO is a legal proceeding. Registrants are responsible for ensuring they are not infringing on another company’s trademark.  Even if your application with the USPTO is successful, you could still be liable for infringement. Your company cannot (or should not) rely on the USPTO’s examining attorney to find a more senior user of your trademark.

In short, it is not advisable to file your application without first investigating whether the trademark is available for registration, and this done by a comprehensive search.

Q? What package is right for me?

If you are already using a trademark, the Essentials Package makes the most sense. The “Essentials” is for companies that don’t need our firm’s assistance in developing a trademark because you’re already using one.

If you’re a new company or you are rebranding, the Development Package is for you. With this, you’ll have our attorney consult with you before we even conduct a fully comprehensive search. This way your expenses are spent in the most efficient way possible because we are actively developing a trademark with you (and your creative design team if you have one) before attempting the registration portion.

Q? I noticed that your packages do not include the USPTO filing fee. Why is that?

Because it’s possible the results of our comprehensive search will be unfavorable for a certain trademark, meaning we might recommend not attempting to file the application. USPTO filing fees are not cheap, ranging from $275-325 per class. Even if you’re trying to file a one-class application, that’s still about $300 that could potentially be wasted. The USPTO does not refund filing fees.

If you find this confusing and have questions, just give us a call. 1-800-866-3838.

Q? Let’s assume the comprehensive search checks out clear and we can proceed to the application, is my application guaranteed to be registered?

No. This application is an actual legal proceeding, so every application is assigned to an examining attorney. The examining attorney will conduct his/her own due diligence search and determine whether the trademark is entitled to registration.

There are many reasons the application could be denied, but the most common is that the mark is either generic (and not entitled to registration) or too similar to an existing registration and therefore likely to cause confusion to the consumer.  Further, your competitors will have an opportunity to oppose your attempts at registering the trademark. Part of the service we provide is analyzing the comprehensive search results and providing you with an opinion as to the likelihood of success of the application’s registration given all these factors.

Q? What are some reasons for rejection?

The most common is if there is a likelihood to cause confusion with an existing trademark.  Another typical rejection is if the mark is too generic. In trademark law, generic terms are not entitled to registration. Take for example the recent case where Subway® tried to register the “Footlong” trademark. Subway® has been fighting to have “Footlong” registered with the USPTO since November 2007, but six years later (September 2013) the Trademark Trial and Appeal Board issued its final decision to deny the registration.

Q? My application was approved and it is now registered! What now?

You may begin using the coveted “®” symbol on your trademark! And you want to monitor your competition to make sure no one else is infringing on your trademark (yes, we offer monitoring services!).

Q? What is the difference between a trademark and a service mark?

Technically, a company should use the term “trademark” for goods/products and “service mark” for services.  For example, the Nike® “Swoosh” is a trademark because the company sells product.  Our client, Merion Village Dental, uses the slogan “Every Friendship Begins With a Smile®” which is a service mark because it provides dental services.  However for simplicity we’ll use “trademark” throughout this website; the registration process with the USPTO handles trademark and service mark applications the same way.

Q? Do you offer services other than the two packages listed on the website?

Yes.  While these two packages fit many of my client’s needs, I understand that everyone’s situation is different and may require a more customized plan.  If the two packages aren’t ideal for you, my firm will create a flat fee rate based upon your specific needs.  Your attorney fees shouldn’t be a mystery.

We also offer monitoring services for your trademark once it’s been registered with the USPTO. We can discuss this and any other questions you may have during your consultation.

Just Call Now: +1 (800) 866-3838
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