What is a brand?
A brand is how the public connects your products and services with a word, phrase, color or design. When one thinks of brand, one must think of trademark. A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms “trademark” and “mark” refer to both trademarks and service marks. You should know that registering a domain name is not the same as getting a trademark!
A brand can also be the packaging or “trade dress” of the product. Think of Coke’s special bottle. It’s shape is an example of a trade dress. A trade dress is protectable under Federal law but must also be approached like one approaches a trademark. Search first, determine strength of your proposed packaging and then determine how best to register and protect.
Don’t forget that the use a name other than your own personal name or company name, you may need a dba or fictional business name registration in your city of business AS WELL AS a business license. That is separate from a trademark.
Is registration of my mark required?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,
– constructive notice to the public of the registrant’s claim of ownership of the mark;
– a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
– the ability to bring an action concerning the mark in federal court;
– the use of the U.S registration as a basis to obtain registration in foreign countries; and
– the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
When can I use the trademark symbols TM, SM and ®?
Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration. DO NOT put R with a circle on your product or website UNLESS and UNTIL registered. The result could be fatal. Consult your lawyer first.
Costs to obtain trademark?
Clients always ask how much it costs to obtain for a trademark. There are at least four things to think about:
1) Picking the right mark. Our branding and naming service helps clients identify good trademarks for their brand. Trademarks must not merely describe the good or service or be generic. They should at most be merely suggestive of the good or service. Think AT&T’s bong, or Ebay. These are not descriptive and both great marks. Let us help you pick the right mark. Search and naming services are available.
2) Searching for conflicting marks. We recommend a full U.S. search provided by the likes of Thompson and Thompson. We do not mark up the price of their search – costs range from $400 to $1200 depending on scope of the search you select – but will analyze the search results as part of our per hour rate charge.
We also offer an Internet based search of the uspto.gov database for a one-half hour flat fee. We recommend the full U.S. search for three reasons: (1) that search will show more potential conflicting marks; (2) identifying conflicts helps you decide whether to proceed with the application and more importantly use of the mark (e.g. marketing dollars invested); (3) the full search can help in your assessment of risk. If a clear conflicting mark is identified, proceeding to use your mark could expose your organization to a potential infringement suit. Conversely, if your use precedes the conflicting reference, you may chose to proceed with registration and to attempt to enforce your use against the alleged infringer.
3) Preparing the application. In addition to the government’s fee of $275 (if we do it online and you meet the requirements) per class of goods/services we charge a flat one hour charge. In some cases, I will help you file on line yourself at no charge. If we prepare the application you will be responsible for providing us with a specimen of the mark in use and pre-payment of the government fee. If you do not understand the requirements for a specimen after reviewing the link, please let us know.
4) Responding to “Office Actions.” About one month after submitting the application, receipt of application will be confirmed by the U.S. Trademark Office. About another three weeks to one month later, the U.S. Trademark office often will reply with either approval of the mark for publication or a specific basis for refusal. The letter in which they state their refusal or questions is called an Office Action. We can help respond to the Office Action and will work hard to overcome their argument. Responses to Office Actions can take any where from a half of an hour to several hours depending on their argument. We will always give you an estimated cost before we proceed.
Enforcing your mark.
As you noted above, registering your mark gives you a better ability to enforce your rights.
We can assist you with the following:
– Develop a family of marks;
– “Maintain” your mark. For example, between the 5th and 6th years, an affidavit of continued use must be filed. – Renewals and other steps must be taken to maintain your mark;
– Sending and responding to cease and desist letters. It is important to police your mark in the brick and mortar as well as in the Internet marketplace;
– Advising you with regard to trademark monitoring services;
– Commencing or defending against a Federal Trademark, Tradedress infringement or Lanham Act suit;
– Acquisition and sale of trademarks and domain names.
In many cases, client’s trademark needs are beyond my scope. I am able to refer you to a few colleagues whose only focus is trademark so do not hesitate to ask me. That said, give me a ring.
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