Registering your trademark should be a top priority for any new business, but unfortunately, the process isn’t always as smooth sailing as we’d like. In 2018, the U.S. Patent and Trademark Office (USPTO) only accepted 15% of trademark applications on first action. While you might be able to make the necessary adjustments for a later filing, this “trial and error” approach to trademark registration is both costly and time-consuming.
While it is possible to register your trademark independently, a trademark attorney can assist you throughout the process, to prevent your company from having legal issues down the road.
What is a Trademark
A trademark is a word, phrase, symbol, and/or design that identifies the source of goods or services. This can also include certain sounds such as the NBC xylophone tune, colors in a certain industry, or slogans such as “expect more, pay less”.
To register your trademark, you must submit a trademark application to the USPTO, along with a specimen proving your trademark is being used in commerce. If it is not in use yet, then you can file on an intent to use basis. It is not legally required that you file your trademark application before using it, but doing so can provide legal protection in potential lawsuits down the line.
The benefits of registering your trademark also include:
- Authorization to use the registered trademark symbol (®) in association with your product or service
- The exclusive right to use your trademark in commerce
- The ability to have Customs and Border Protection monitor and prevent the importation of infringing foreign goods or services
- Presumption of ownership which will give you leverage in future lawsuits
Selecting Your Trademark
Coming up with the perfect trademark that encompasses everything you want your company to represent is a tall order. As a business, you will want to start using your trademark right away, so the sooner you spot any red flags with your desired trademark, the better. When selecting a trademark, consider these examples of the strongest types of trademarks.
- Fanciful: A fanciful trademark is an invented word or phrase created specifically for a company. Fanciful trademarks are considered the strongest and most distinct type of trademark. Examples of fanciful trademarks include, “Clorox,” “Xerox,” or “Exxon.”
- Arbitrary: An arbitrary trademark is a word or phrase that is used in everyday communication but has no connection to the goods or services being offered. The most famous example of an arbitrary trademark is “Apple” as an international technology brand. Other examples include “Camel” as a cigarette company and “Shell” for a gas company.
- Suggestive: A suggestive trademark hints at the type of goods or services being offered, without explicitly stating the nature of the products. This typically requires some stretch of imagination from the consumer. For example, “Greyhound” as a bus company, or “Netflix” as a streaming service. Suggestive trademarks are considered some of the best trademarks from both a legal and marketing perspective.
Weaker trademarks tend to fall into two categories and are often rejected by the USPTO.
- Descriptive: Descriptive trademarks describe the product or service in some way, rather than identify the source or manufacturer of the goods. An example of a descriptive trademark is “Dry Skin” for a lotion or “Cold and Creamy” for an ice cream maker. This also includes trademarks that use first or last names, such as “Riley’s Shoe Store.” The famous exceptions to this rule are trademarks like “Hilton” and “McDonalds” which consumers have come to associate with the brands due to exclusive and extensive use over a significant period of time.
- Generic: Generic words are not eligible for registration since they are understood by the public as the class name of the goods or services, as opposed to the source of the product. For example, you would not be able to register the trademark “Makeup” if you are selling cosmetic products. While there might be some wiggle room for registering descriptive trademarks, generic trademarks are always ineligible for registration.
When unsure about the strength of your trademark, consult a trademark attorney before applying to register. If you are concerned that your trademark is too descriptive, remember that you may be permitted to register your trademark on the Supplemental Register. While this type of registration would not give you presumption of ownership in potential lawsuits, there are benefits to registering your trademark there.
The benefits of registering on the Supplemental Register are:
- The ability to use the ® symbol in association with your products
- Deters other companies from infringing or registering the trademark
- Trademark protection during the period of acquired distinctiveness
- Blocks confusingly similar registrations with the trademark office
Conducting a Trademark Search
Your next step after selecting your perfect trademark is to conduct a trademark search. This will alert you of any existing trademark that may result in your application being rejected.
While it might seem like performing a trademark search is as easy as typing your trademark into a search engine and hitting the enter key, there are several ways to miss existing trademarks that might cause you legal trouble in the future. For example, a registered trademark could sound similar to yours even if it is spelled differently. You could also potentially be infringing on synonym trademark that your initial search did not catch. It is therefore recommended that you have a trademark lawyer perform a your search to verify that your chosen trademark is available.
Submitting a Trademark Application
After conducting a trademark search, you will need to submit a trademark application to the USPTO. In a trademark application, you will be required to provide the following information.
- Personal information pertaining to the owner of the trademark
- The trademark, and the associated design, if applicable
- The type of goods or services that will be protected under the trademark
- A specimen that proves the trademark is in use in commerce. This could be packaging for your goods or a website that showcases the services you are offering. If the trademark is not yet in use, you would need to file an intent to use application. Once the trademark is in use, you will need to file a statement of use with the required specimen in order to be granted legal protection.
Typically, it takes about four months for a trademark application to be reviewed by an examining attorney at the trademark office. At this point, the attorney will either approve the application or issue an office action. The action will alert you about the issue with your trademark application. You will need to respond to this action within six months for it to be considered a timely response.
The most common reason for a trademark application to be rejected is due to a likelihood of confusion with an existing trademark. You will also have trouble registering your trademark if it is considered to be too descriptive or generic. Many trademark applications are also rejected due to a technical error on the part of the applicant, so it is a good idea to have a trademark attorney handle this process for you. If your application is rejected, you will lose the cost of the application without receiving any protection. The cost of an application is typically $225 per class of goods/services.
Delays in registering a trademark can be financially devastating for your business and attempting to register an existing trademark can result in allegations of infringement. If you are unsure of any step in the process, consult a trademark lawyer for assistance.
Trademark Opposition Period
Once the examining attorney has approved your trademark application, your trademark will be published for opposition. This gives third parties a thirty-day window to oppose your trademark application if they believe you are infringing on their trademark rights.
Responding to an Opposition
Oppositions during the publication period are fairly common, with about 7,000 oppositions filed a year. A swift response to any opposition is crucial to avoiding costly delays in registering your trademark. While these oppositions are typically made in good faith, trademark bullies might be trying to deter competition. If a trademark opposition occurs, the applicant must file a response. The proceeding is handled by the Trademark Trial and Appeal Board (TTAB).
If you receive a notice of opposition, don’t panic. Only 3 percent of oppositions make it to trial. Consult a trademark attorney before making any response so you can handle it in the manner most likely to lead to a successful result.
Period of Protection
If you receive no notices of opposition during the 30-day period of opposition, you’ll receive a confirmation of registration around three to four months later.
You will need to renew your trademark five to six years after registration by filing a Section 8 &15 renewal which demonstrates the continued use of your trademark in commerce. Additionally, you will need to file a Section 8 & 9 renewal every ten years following the registration. If you fail to renew your registration, it will abandon which will allow other businesses to register your trademark.
After the fifth year of registration, you can become eligible to file a Section 15 Declaration of Incontestability. This severely limits a third party’s ability to cancel your registration, and it also prevents a claimant from using certain defenses in an infringement.
International Trademark Registration
For foreign trademark protection, the Madrid Protocol is available as a streamlined process for filing internationally. At times we advise filing directly in the country at issue rather than using the Madrid Protocol.
While registering a trademark provides you with invaluable legal protection in lawsuits, it is largely the responsibility of the trademark owner to monitor the trademark and enforce their rights in case of an infringement. It is important to respond swiftly to any unauthorized use of your trademark to protect your business and deter other third parties from infringing on your rights. This is typically done with a trademark cease and desist letter.