What is a Trademark?

A trademark is a symbol, sound, or word(s) that are used by a company to either represent the company itself or a product that it sells.  There are generally three types of marks: inherently distinctive, acquired distinctiveness and generic marks. Because inherently distinctive marks are given the most protection under trademark law, we will only briefly discuss what an inherently distinctive mark is.  An inherently distinctive mark is one kind of trade mark which can be coined such as Xerox or it can be arbitrary such as tide washing powder or suggestive such as q-tips for cotton-tipped swabs. Out of the three types of inherently distinctive marks the coined mark gives the best protection. When choosing a mark we hope you keep this in mind. 

What are the benefits of having a trademark?

Some of the benefits of having a trademark are: (1) it provides evidence that you are the owner of the mark, (2) it gives nationwide notice that you are the owner of the mark and the ability to exclude others from using the same or similar mark, (3) it gives you access to federal courts, (4) it helps to prevent the foreign importation of counterfeit goods.

What steps should I take to receive a  

trademark?

Although not required but it is strongly recommended that you hire an attorney to conduct a comprehensive trademark search and obtain a clearance opinion from them.  The comprehensive search and the clearance opinion reduces the chance of having others with similar marks filing lawsuits against you.  The comprehensive search consists of searching federal and state marks, in addition to searching domain names and the Trademark Trial and Appeal Board. The clearance opinion analyses the strength of your mark in and of itself, evaluates the strength of your mark when  compared to others with similar marks, and also compares your mark to other marks to see if your mark can be mistaken for someone else’s.

What happens after I register my trademark?

Usually after the trademark application is filed one of two things happen.  Either your trademark is allowed or you will receive an office action from the trademark examiner.  If the mark is allowed then it is published in the official gazette for 30 days.  At this time anyone with an interest in your mark can bring a notice of opposition within 30 days of publication to try and prevent your mark from becoming registered.  Once 30 days has lapsed and no one has filed a notice of opposition against you, you will receive a registration certificate and your mark will be registered with the USPTO,  but you are not in the clear yet.  For a period of 5 years after your mark has been registered anyone with an interest in your trademark can file for proceeding to have your mark canceled.

On the other hand if you receive an office action, the office action usually either asks for clarification on your goods and services description or it can be a preliminary rejection of your mark based on the strength of your mark or it can state that your mark might be confusingly similar to another’s and if you cannot overcome these rejections your mark will not be registered. However, if you can overcome these objections from the trademark examiner then your mark will be allowed and be published in the official gazette.

What do I have to do to keep my trademark valid and enforceable?

To keep your mark valid and enforceable, once your mark has been registered, you are required submit some paperwork and pay maintenance fees.  The paperwork and maintenance fees are due after the first five years and ten years after the mark has been registered and then every ten years thereafter.

Our Process

Our Office’s process is simple.  The first thing we like to do is to evaluate the strength of your mark.  After your mark is evaluated and you choose to continue with our services, you simply look at our Trademark Pricing Menu, choose which services you would like us to perform for you, and you are on your way to having your mark registered with the USPTO.

Ready to have your mark evaluated? Click here and submit your information.