Welcome to my “Essential Considerations” series for intellectual property (IP) matters, wherein I review the important principles and processes IP holders need to know. From patenting your invention to keeping trade secrets secret, this series breaks down the sometimes labyrinthine world of IP law into a digestible question and answer format.
This Essential Considerations installment concerns trademarks. What is and isn’t considered a trademark? What do you gain by registering your trademark? Find the answers to these and more frequently asked questions below.
What is a trademark?
A trademark is a distinguishing characteristic that identifies the source of a product or service. Businesses, organizations, manufacturers, sellers, and individuals use trademarks to guide consumer decisions by helping consumers differentiate between similar items in a marketplace.
Although usually applied to a commercial name or logo, a trademark can take virtually any form: design, phrase, or slogan; even a product’s shape, color, sound, or smell. Often, it is a combination of these attributes. Well-known examples of globally recognized trademarks include the McDonald’s “golden arches”, T-Mobile’s particular shade of magenta, and Target’s catchphrase: “Get more. Pay less.”
Trademarks differ from patents, which protect inventions, as well as copyrights, which protect artistic and literary works.
Why should I register my trademark?
To be clear, you do not have to register a trademark to obtain trademark rights. By associating an image, word, phrase, or any other distinguishing feature with your product or service, over time you can earn federal and state protections for your trademark. However, registering your trademark with the United States Patent and Trademark Office (USPTO) confers several advantages:
- Public notice that you own the trademark
- The means to pursue legal action related to the trademark in federal court
- A legal foundation for obtaining registration overseas
- The ability to hinder or stop importation of goods that infringe on your trademark
In short, a registered trademark allows you to broadcast and protect what keeps your brand, good, or service competitive, around the world.
How much does it cost to register my trademark?
The USPTO complies with the World Intellectual Property Organization, which categorizes goods and services into 45 classes (click here for the full list). The fee to apply for a trademark with the USPTO ranges from $225–$375 per class. The cost depends on how you file (online or on paper) as well as whether you have met certain Trademark Electronic Application System (TEAS) requirements, such as accurately identifying your trademark under the proper class, filling in the application form completely, and authorizing email communication with the USPTO. If you hire a legal professional to review or file your trademark application for you, additional attorneys’ fees may apply.
How long does it take to register my trademark?
The USPTO’s timelines vary. It could take several months, a year, or several years from the application date to the trademark’s publication in the USPTO’s Official Gazette and its eventual registration thereafter. The process takes longer if the USPTO examining the attorney assigned to the application identifies unfulfilled requirements or a reason to refuse the trademark, such as the likelihood of confusion with an existing trademark, misrepresentation or misdescription of the trademark’s defining qualities, or a number of other reasons outlined here. Additionally, applications based on trademarks not currently in use, or based on foreign registrations, necessitate further steps and take more time as a result.
What happens if I don’t register my trademark?
If you don’t register your trademark, you assume a significant risk. A competitor may seize the opportunity to register your business name or identifying characteristics, thereby forcing you to rebrand. If you’re found using the trademark when this occurs, you could face an expensive infringement lawsuit as well as a court order to stop selling your products or services as-is. The contractors, distributors, and vendors with whom you work may also find themselves embroiled in similar disputes.
How do I enforce my trademark?
The first step in deterring infringement is registering and using your trademark. That means printing or otherwise indicating your trademark on everything you offer in the marketplace. If the USPTO has recognized your mark, you may add a registered trademark symbol (®) next to the identifying word, symbol, or image. The other familiar trademark symbol (™) provides little state or federally-recognized protection, but it does publicize your claim to the mark and possible intention to register and take legal action against misuse.
If you’ve registered your trademark and discover that an entity is using the mark without your license, you have a couple options. First, you can send a cease-and-desist letter to the user in question, demanding a discontinuation of the mark’s use, and perhaps remunerative damages as well.
If the allegedly infringing party ignores the request, you may decide to file a lawsuit. Sometimes, this step is enough to dissuade the wrongful user. In fact, a court may issue an injunction preventing that party’s continued use of the mark for the duration of proceedings. If not, you will have to win the case. Litigation is a costly and time-consuming process. Make sure to carefully weigh your options, and consider the value of your trademark: is it worth the potential expense?
What if I fail to enforce my trademark?
Loss of trademark typically happens through inactivity. That is, if you don’t use your trademark, you lose it.
Once you own a trademark, you must continually maintain its registration. Federal trademark registration terms last ten years. After five years from your initial registration date, however, you must file an Affidavit of Use (Section 8 Affidavit), along with an additional fee, to affirm the trademark’s status with the USPTO.
Another way to lose your trademark inadvertently is through long-term misuse. Sometimes, a brand name will become generic if consumers, the media, competitors, or even the trademark holder associate it with a kind of—rather than a discrete—product or service. “Elevator,” “aspirin,” “thermos,” and “trampoline” are all examples of genericized names that were once trademarked products. These days, registered brands such as Band-Aid, Q-tips, Xerox, Tupperware, and Google currently face the same risk.
Have a question about copyrights I haven’t answered here, or need advice about any other IP matter?
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Offit Kurman’s Intellectual Property Group helps dynamic businesses and individuals to develop and protect their IP assets. We can help you through all stages of your IP matters—from concept through development, registration, licensing, marketing, renewals, enforcement and sales. Our comprehensive and strategic approach to IP protection is designed to maximize the value of your IP assets and minimize the related risks. Learn more about our IP practice here.
ABOUT JONATHAN WACHS
Jonathan Wachs provides strategic counseling and operational advice to clients in the areas of intellectual property, commercial transactions and outsourced legal departments. As head of the firm’s Intellectual Property Group, Mr. Wachs works closely with clients to develop, register, analyze, enforce, and transfer intellectual property assets in a customized, cost-efficient, and highly effective manner. Additionally, he conducts intellectual property audits through which clients learn the nature and value of their intellectual property assets and the steps needed to protect such assets from misappropriation or dilution. As a business lawyer, he has successfully negotiated and completed several multimillion dollar business transactions and has served as general counsel to several small and midsize businesses and organizations in various industries and professions. He also manages a blog about intellectual property issues, Friday Factoids. Mr. Wachs co-manages New Paradigm Counsel, a service through which Offit Kurman delivers customized, comprehensive and cost-effective outsourced legal departments. Through New Paradigm Counsel, Jon served as outsourced general counsel for a government contractor, a large printing business, a payment processing company and an identity theft restoration business.
ABOUT OFFIT KURMAN
Offit Kurman is one of the fastest-growing, full-service law firms in the Mid-Atlantic region. With over 135 attorneys offering a comprehensive range of services in virtually every legal category, the firm is well positioned to meet the needs of dynamic businesses and the people who own and operate them. Our eleven offices serve individual and corporate clients in the Virginia, Washington, DC, Maryland, Delaware, Pennsylvania, New Jersey, and New York City regions. At Offit Kurman, we are our clients’ most trusted legal advisors, professionals who help maximize and protect business value and personal wealth. In every interaction, we consistently maintain our clients’ confidence by remaining focused on furthering their objectives and achieving their goals in an efficient manner. Trust, knowledge, confidence—in a partner, that’s perfect.
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