To reserve exclusive rights to use a distinctive word, phrase, symbol, design, or combination of these things, you should complete trademark registration with the U.S. Patent and Trademark Office (USPTO). Your trademark must identify the source of goods and services and distinguish them from the goods and services of others. But even though companies and individuals commonly trademark a name or a design, the protection of a trademark isn’t limited to just words and designs. Trademarks can be applied to sounds, colors, or even a smell.
Registering your trademark with the USPTO is not the only way to obtain exclusive rights to a trademark; common law trademarks also exist. But two of the primary advantages of applying to the USPTO for an official trademark are:
- Common law trademarks are limited to the geographic area in which your company operates.
- You can file for a trademark on an “intent to use” basis before you’ve actually used your mark in commerce, which is not the case for common law trademarks.
A Priori intellectual property lawyer can advise you on whether your proposed trademark infringes on any registered trademarks, what trademark or trademarks you should register, the likelihood of success in the trademark registration process, and any objections to your trademark you should anticipate. And if you find yourself accused of trademark infringement yourself or if you believe someone is infringing on your trademark, a Priori lawyer can help protect your brand.
Wondering how to register a trademark?
Here are some of the ways a Priori lawyer can help you with trademark registration.
An attorney can help you conduct a comprehensive search of the USPTO database to ensure that no pre-existing trademark could result in the denial of your trademark registration application.
Your attorney may also discuss with you the strength of your trademark and the likelihood of its success in the trademark registration process. They may also advise you onother aspects of the trademark -- for example, whether you should apply to protect your logo or company name.
An attorney will consider what “classes” are the best fit for your trademark needs. The USPTO organizes goods and services into 45 categories or classes such as chemical products, jewelry products, or computer, software and scientific services. Depending on your business, you may want to apply your trademark to multiple classes. Keep in mind that it is lawful for another business to use your logo or name for a good or service in a different class than that which you have trademarked. Finally, your lawyer will then draft, file, and track a trademark registration application with USPTO. You will be responsible for paying a filing fee of $225-$325 per class.
Responding to Office Actions
If the USPTO believes there may be problems with your trademark registration application, an examiner will issue an Office Action. There are two types of Office Actions. A non-final Office Action raises an issue for the first time. You will have six months to respond, and an attorney can help you present evidence and craft a legal argument. Examiners issue a final Office Action after rejecting a response to a previous Office Action.
Common grounds for rejection include:
Your trademark conflicts or may be confused with another registered or pending trademark;
Your trademark is determined to be decorative, rather than identifying and distinguishing your goods from those of others,
Your trademark is merely descriptive;
Your trademark misrepresents your good or service;
The primary significance of your trademark is a geographic description; and
The primary significance of your trademark is a surname.
Someone Is Infringing On My Trademark!
If you believe that someone is infringing on your trademark, a skilled intellectual property lawyer can help you bring legal proceedings against the infringing party, including a cease and desist demand or even litigation. Having a trademark in place is the best way to protect your brand and build a strong defense against infringement.
Someone Is Accusing Me Of Infringing On Their Trademark!
If someone accuses you of infringing on their trademark, consult a lawyer as soon as possible before the matter escalates. If the respective trademarks are not identical, their similarity will be assessed in terms of the likelihood of confusion - whether a client could think your mark is being produced by the original trademark owner. You may also be able to challenge the accusation by establishing an exception or questioning the original registration.
When can I use someone else’s trademark without infringing? If a trademark is adapted from a common word or symbol, you may still use the trademarked material in its typical sense. For example, a trademarked logo that includes an oak tree does not prevent your company from also using a tree in your marketing materials. You may also refer to a trademarked product or its source as part of comparative advertising or criticism of your competitor. This is know as nominative use, and it is not considered infringement.
Trademark Fees with Priori
Depending on the number of classes and the complexity of your trademark needs, the cost of registering and protecting a trademark can vary significantly. When you hire a lawyer in the Priori network, conducting a trademark search and clearance typically costs from $150 to $3,000. A trademark registration can cost from $275 to $1,750. USPTO filing fees can range from $275 to $375 per class. Following the application process, a response to an office action may cost from $200 to $2,000. Finally, hourly rates for Priori intellectual property lawyers range from $175 to $400 per hour. In order to get a better sense of cost for your particular situation, put in a request to schedule a complimentary consultation and receive a free price quote from one of our lawyers.
Frequently Asked Questions
What happens if I don’t register my mark? It seems like an unnecessary expense before I’m confident my business will take off.
For most businesses, it is often prudent to trademark a name for your business at the very minimum. Doing so will protect you from infringement by competitors and will also ensure that you are not infringing on someone else’s trademark, which can cause major problems if you become aware of the infringement after you’ve worked hard to establish your brand. Moreover, federally registered trademarks protect your brand nationally, regardless of where your business operates, while common law trademark rights are limited to the geographic region in which you use your trademark.
Do I really need a lawyer to file a trademark registration application? It seems so simple!
The USPTO trademark registration process can be complex, even though it may seem simple at first glance. A lawyer can provide invaluable assistance, particularly during the search and clearance phase of the trademark registration application process. Priori encounters many clients who apply for a trademark, begin using their mark, and then discover that it is not registrable. An attorney could have told them this at the outset, saving them time and money.