What is a Trademark

Federal trademark law is derived from the Constitution’s Commerce Clause. The U.S. Patent and Trademark Office defines a trademark as “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.” For example, when you see an apple with a bite taken out of it, you immediately think of the Apple brand, or when you see the golden arch M, you know that it represents McDonalds. Words can also be registered as a trademark—“Coca-Cola” or “Nike” would be examples of that.  Once your mark is registered, you can use an ® with your mark to notify others that it has been registered.

Purpose of Registering with the USPTO

While registration is not required, according to the U.S. Patent and Trademark Office, federal registration will put the public on notice of your claim of ownership and provide you with the exclusive right to use the mark with your goods and services. Many business owners consider registering their trademark in Washington state, but it is also important to consider federal registration so that you have national rights rather than very limited protection. Trademarks can be protected at the state and federal level, but the federal level provides extensive coverage across the United States and essentially provides notice to others that the trademark belongs to you. Simply registering your business with the secretary of state does not offer your business with trademark protection.

Many business owners register their trademarks with the U.S. Patent and Trademark Office in order to obtain stronger protection for their mark. Once registered, you can use your trademark registration to protect your brand and prevent others from improperly using it which ultimately could cause confusion among consumers.  You can also take legal action against anyone that is infringing on your rights.   By selecting a unique and distinct trademark and getting it registered, you can be confident that you will not be liable for damages in the future by infringing on someone else’s trademark. For example, if you attempt to register a trademark that contains three stripes, Adidas would likely oppose your registration if it looks similar enough to cause confusion among consumers.

Once your mark is registered, it can last indefinitely as long as you continue to use it in commerce and periodically provide evidence to the USPTO that it is still in use.

Cost

The current filing fee is $250 per class of goods/services or $350 per class of goods/services, depending on which application you complete.

Identifying Goods/Services

As part of the application process, you will need to identify the goods or service which you are using or will be using. Each category of goods or services is assigned a number from 1 to 45. Classes 1-34 are for goods and classes 35-45 are for services. For example, class 25 covers clothing and class 35 covers advertising, business, and retail services.  You can learn more information about goods and services on the USPTO website:

https://www.uspto.gov/trademarks/basics/goods-and-services

When to Register

It is best to begin this trademark application as soon as possible so that you are protected across the nation as opposed to being limited to your location. Even if you are not yet ready to use your trademark, you can apply with an “intent to use” application which indicates that you intend on using the name but have not yet started to do so.  The records will show when your trademark was first in use.  This date can become critical later if another business owner decides to challenge your registration. Typically, if you are first to use the mark in commerce or file the application with the USPTO, you will most likely have the right to register that mark.

Process of Registering

There are many intricacies involved with registering your trademark with the USPTO. To gain some familiarity with the process, you can learn about the trademark application on the USPTO website:

https://www.uspto.gov/trademarks/apply/initial-application-forms

While you can do some preliminary research on your own to see if there are other companies using a similar name and deign as yours, an attorney will be able to do a more thorough and in-depth search on your trademark prior to registering and also prepare your application should you choose to pursue the mark. It is critical to complete the application properly as some of the information you submit cannot be modified later.  The USPTO will then assign an examining attorney to your case who will review your application. Your application for a trademark can be rejected for various reasons, including if a similar mark you are interested in has already been registered for a similar good or service. In such a situation, the examining attorney will determine that your trademark would create a likelihood of confusion. In some instances, the trademark office will issue what is referred to as an ”office action” outlining issues with your mark, and you will be given a chance to provide a response. If the issues are properly resolved, then your mark may still get registered. An attorney can discuss the benefits of registering your mark and help you determine whether your mark is one that is likely available for federal protection.

MDK Law Attorney Nahal Nabavinejad represents and advises individuals and small and medium sized business clients in a variety of commercial litigation and transactional matters, including trademarks. If you would like to speak with her regarding your business’s needs, please contact her at [email protected]

This blog contains general information and is not intended to provide specific legal advice or establish an attorney client relationship. This blog should not be used as a substitute for legal advice from a licensed attorney in your state.