What is a trademark or service mark?
A trademark is usually a word, name, or symbol used by manufacturers or merchants to identify and distinguish their goods or services from others. Trademarks can also be slogans, shapes, and even sounds and colors. Over time, a trademark can become many times more valuable than any patent in the underlying product or service. Moreover, unlike a patent, a trademark can be maintained and protected indefinitely.
What should I consider in choosing a trademark?
The strongest marks are arbitrary or fanciful; they are made-up words with no specific meaning, like KODAK for photography, or words that mean something completely unrelated such as AMAZON for a book vendor. The weakest marks are generic or merely descriptive, like “super glue” or DRY KLEAN. Suggestive marks fall in the middle, such as CLARION for audio speakers. If you are thinking about adopting a new brand name to go with a new business or product, before becoming emotionally attached to a name you should first conduct a search to determine if others are using the same or a similar name, and whether your brand name might create confusion with someone else’s trademark. Either situation could block registration or prompt charges of trademark infringement against you. The cost of a trademark search depends on the thoroughness of the search and the time spent analyzing and interpreting search results. A fast “knock-out” trademark search to see if another has already registered the proposed mark is quick and inexpensive – perhaps $75-125. A more thorough but not exhaustive (i.e., medium level) search of federal and state databases, sometimes referred to as an “availability search,” will cost about $350-700. A comprehensive search of US federal and state databases combined with research for unregistered (i.e., common law) trademark uses will cost about $1500.
How do I “get” a trademark?
In general, your legal rights in a trademark arise when you begin actually using a distinctive mark in commerce. You don’t need to register the mark to have legal rights to it. The first user of a mark has priority with respect to their goods or services in their geographic areas of actual use and the zone of natural expansion of the use of the mark – superior even to a business which later obtains a federal registration for the same or a similar trademark.
Should I register my trademark?
If you expect your business to grow beyond your immediate locality, the answer is usually yes. Federal registration provides important benefits, including: 1) presumption of nationwide rights without regard to areas of actual use; 2) certain rights become incontestable five years after registration; 3) constructive notice to others who might want to use your mark or a similar mark to compete with you; and 4) the ability to block future third-party trademark applicants seeking to register a similar mark.
How do I register a trademark?
Provide us with examples showing all of the different ways that you use your mark in commerce. If you use or plan to use the mark with different types of products/services, we will need to know them all. We usually prefer to see a photograph of the mark as it appears on or with the goods/services they represent. We will also need the dates you first started selling products or services under the mark, as well as the first date of sale in interstate commerce. If you have not yet made your first sale across state lines, and have a good faith intention to use the mark in interstate commerce in the near future, then we can apply “proactively” to register your mark.
The cost to file one trademark application for a mark used to sell interstate goods in one classification typically ranges $800-1200. You should expect to spend an additional $1000-1500 over the next 6-9 months as the application is examined and approved for registration. The cost will be higher if the mark is used for multiple product or service categories, or it the application encounters significant resistance at the trademark office. After the application has passed examination, the mark will be published and any person may oppose registration of the mark. If no opposition is filed within 30 days, the U.S. Trademark Office will issue a certificate of registration.
Should I register my mark in other countries?
If you expect to have a significant presence in any foreign country, you should seriously consider registering your mark there. The process begins by engaging a local trademark expert in that country to evaluate the registerability of your mark, and if favorable to apply for the registration. Foreign registration fees typically run about $1500-3000 per country; however, a reliable cost estimate can be obtained in advance. It is important to know that, unlike the USA which respects the first “user” of a distinctive mark in commerce, many foreign countries give priority to the first person to apply to register a mark in that country – regardless of whether the first applicant is a disreputable “squatter” whose clear intent is to ransom the trademark back to you. To register a trademark in multiple countries, we may recommend using a combined application known as the “Madrid Protocol.” Although the Madrid Protocol has many benefits (e.g. one consolidated application, one language), it also has some inherent limitations and we do not recommend it in all situations.
How do I maximize my trademark rights?
- In all marketing and packaging situations, use your mark consistently to identify your goods and services.
- Distinguish your trademark from surrounding text, such as by placing it in bold or a stylized font or putting in quote marks.
- On packaging and at least once in every printed advertisement, identify the trademark with a notice – either a superscripted “TM” for an unregistered mark or the ® symbol for a registered mark.
- Maintain registrations by timely filing the necessary forms and payments (usually handled through your trademark attorney).
- Police your mark to make sure others are not infringing or misusing it. Call your trademark attorney if you suspect infringement.
- Avoid using your trademark as a common noun; use it as a proper name. (That is why the ads say “Kleenex brand facial tissues.”) Otherwise your mark risks becoming generic.
Endurance Law Group PLC specializes in trademark services. We would be pleased to answer any questions that you might have about the trademark process and your particular circumstances.