Monday, March 22 2021

How to Protect your Trademark

by Traskbritt

Trademarks are powerful marketing tools that can help a potential customer not only to recall the associated brand but also to affiliate the words of the trademark with that brand. You may want to trademark a phrase to control how your brand is perceived in the minds of potential customers. For this reason, being able to protect your company’s trademark is critical in preserving the brand identity and protecting its hard-earned reputation. 

Why Should you File a Trademark Application?

Trademarks are a word, phrase, symbol, and/or design that identifies goods and/or services and also distinguishes the source of those goods from other sources of similar goods. In the United States, trademark protection is available at common law without the need for registration. But, there is still a benefit to register your phrase. The greatest protection for a trademark comes through registering the mark with the USPTO for placement on the principal register. Doing this has several advantages. For example, in the case of a word trademark, registering the phrase serves as a notice to the public of the registrant’s claim of ownership of that phrase and also creates a legal presumption of ownership nationwide while also granting the exclusive right to use the trademark on or in connection with the product or service that were specified in the registration. Before a trademark can be registered, however, it must meet certain requirements. 

Requirements for a Trademark Application

First, a trademark application must specifically state which types of goods or services that the trademark will be associated with. Goods are things that are bought and sold in commerce while services are actions that you do for others. When considering which goods or services to select in the application, it is important to think carefully about all of the goods or services that you could potentially want the trademark to apply to in the future.

Second, the trademark must be distinctive. This means that if you seek to trademark a phrase, it cannot be merely a description of the goods or services that the trademark is affiliated with. For example, the hypothetical phrase “it’s a computing device!” for a line of computer products would not only be terrible from an advertising point of view but would also fail to be sufficiently distinct to be registered as a trademark. This is because the phrase merely describes the goods that it is affiliated with. In contrast, the hypothetical phrase “Peak Power!” for the same line of computer products would likely be sufficiently distinctive as it does more than just describe the affiliated products or services. 

Third, the phrase cannot be confusingly similar to another phrase that is already trademarked. A phrase is confusingly similar to another phrase if the similarity is likely to cause confusion as to the source or sponsorship of the goods or services that are affiliated with the phrase. 

Steps for Filing a Trademark Application

When you have determined that your trademark meets the above-stated criteria, you can begin the process of filing for a trademark, usually with the help of an attorney. There are five major steps to take in order to acquire a phrase trademark:

  1. Conduct a trademark search to identify a similar phrase: Conducting a pre-filing trademark search is essential to assuring that your trademark is not confusingly similar to another mark. If it is, your trademark will be rejected from being a registered trademark on the principal register. Thus, it is often worthwhile to have a professional conduct a trademark search before doing any filing at the patent and trademark office to reduce the likelihood of a surprise rejection from the trademark office USPTO. 
  2. Fill out a trademark application: A complete trademark application must have the following information:
    1. The Applicant’s information including name, address, and e-mail address.
    2. The representing attorney’s name, address, and e-mail address if you elect to use an attorney.
    3. A depiction of the trademark. This depiction can come in two forms. First is the standard character form which has no design elements, stylization, or Latin, Roman, or Arabic numerals. Second, is the special form which includes a design or logo that may include particular colors. 
    4. The goods and/or services that your phrase will be used for.  
    5. Be sure to review your application carefully as certain mistakes, like omitting goods and services, usually cannot be fixed after the trademark application is filed.
  3. Submit the application to the USPTO and pay any associated fees: A trademark application can be filed on the USPTO website using the Trademark Electronic Application System. The fee for filing a trademark application will depend on how many different classes of goods or services you seek to have covered by the phrase. 
  4. Respond promptly and appropriately to Office Actions: After the application is filed it will be reviewed by an examining attorney. After the application is reviewed, the Examiner will issue an Office Action stating that the application is approved or rejected. Rejections can be for a variety of reasons including problems with the application itself, the phrase is generic/descriptive, or the trademark is confusingly similar to another mark. After an application is rejected, you will be given a deadline to address the problems. If this deadline is missed, the application may be abandoned. 
  5. Submit evidence of use. In most cases, the USPTO requires that an applicant prove that the trademark is in use with all of the goods/services identified in the application. If you have identified goods in your application, the examining attorney will look for evidence of use such as a photograph of the trademark on one of the identified goods together with a declaration confirming the date when the goods were sold in interstate commerce. For services, the evidence of use maybe a screenshot of a website that displays the trademark proximate description of the services together with a declaration confirming the date when the services were sold in interstate commerce.
  6. Maintain your trademark: Once you have a registered trademark, you must maintain the trademark by both using it in commerce and by filing maintenance documents with the USPTO. If the maintenance documents are not timely filed, your registration will be canceled and cannot be revived or reinstated, forcing you to have to file a new application and go through the process all over again. 

Why Consult an Attorney to File a Trademark Application?

While it is not required to have assistance from an intellectual property attorney to file a trademark application, using a trademark attorney has several advantages.

First, getting a trademark attorney helps to ensure that the application is prepared correctly the first time. As discussed above, there are many intricacies involved in filing a trademark and in dealing with the USPTO during the application process. Having an experienced trademark attorney helps to ensure that mistakes with the application are minimized which helps ensure that the non-refundable filing fees for the trademark are not wasted having to correct mistakes that an attorney would know to avoid. 

Second, an attorney can help you to walk through every aspect of your trademark to make sure your application covers all of the goods or services that it needs to and to advise whether the phrase has the requisite distinctiveness or whether the phrase would be confusingly similar to another trademarked phrase.

Third, an attorney can also help conduct a trademark search and give professional advice about whether pursuing your desired phrase trademark would be worth it before you start sinking money into the application process. 

If you have any questions regarding trademarks or pursuing a trademark registration get in contact with one of our experienced trademark lawyers at TraskBritt today. Our Utah trademark attorneys would be happy to discuss your trademark needs.

Author: David T. Ostler