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You may have innovated a great line of products, trained a world class group of employees, created awesome social media posts to promote your business, but if you have not built your customer goodwill your business will suffer. Henry Ford said "It is not the employer who pays the wages. Employers only handle the money. It is the customer who pays the wages."
Your mark is your business' billboard. It is that flashing light that your customer has learned to associate with you. Don't let other businesses piggy back on your success by copying your mark. Fight back with a federal trademark registration. As a registered attorney with the United States Patent and Trademark Office I can help you register your mark now. |
Why use my services?Trademark filings are an important part of my business. I have filed 1(a), 1(b), concurrent, national and international applications for both goods and services. I personally perform the client intake, legal research, and filing of each application. You are assured of a job done right the first time around.
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How do I get started?To get started go to my Contact Me page, fill out the contact form to let me know that you want a trademark filed. I will contact you to setup a time, about 30 minutes, where we may discuss your mark, conduct a direct hit search, determine what classes you should file in, and the basis of your application.
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How much does it cost?My fee to file a typical application is $1,200 for a single class. Applications with multiple classes, concurrent use requirements, or multinational filings are more. Government fees are about $250 per class. For all of my fees on trademark filing and prosecution see the FAQ below.
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Trademark Frequently Asked Questions
What is a trademark?
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Common examples include Xerox (a name for a brand of photocopiers), Just Do It (a slogan for a brand of sport shoes and sportswear), the symbol of an apple with a bite out of it (a symbol for a brand of computers), the name Coca-Cola in cursive lettering (a logo for a brand of soft drink). When you see a mark from one of these companies on a product you know which company made the product. Lesser known forms of trademarks include sound, smell, and colors.
Here are some examples:
Some people believe that a domain name is a trademark. These two concepts are completely different from each and while a domain name may be the same as a trademark such as the domain name nike.com, it does not have those protections that a trademark receives.
Here are some examples:
- Word Mark: NIKE
- Symbol or Design Mark: The famous Nike swoosh.
- Combination of Words: JUST DO IT
- To listen to some registered sound marks click here.
- To see colors that are registered as marks click here.
Some people believe that a domain name is a trademark. These two concepts are completely different from each and while a domain name may be the same as a trademark such as the domain name nike.com, it does not have those protections that a trademark receives.
what benefits do I receive by registering my mark?
There are many benefits to having your mark federally registered. You may also have your mark registered with your state but the protections offered by state registration pale in comparison to federal registration. Here are some important benefits you acquire when registering your mark at the federal level.
- Your mark is added to a publicly searchable database containing all of the federally registered marks. By being included in this database every business seeking to use a mark is put on constructive notice of your mark even if they do not take the time or effort to search the database. Thus a business that uses your mark cannot claim a defense of ignorance when they infringe your mark.
- Protects against registration of confusingly similar marks, as the Trademark Office has a duty to cite prior registrations against applications for confusingly similar marks and to refuse to register such marks, thereby enlisting the power of the US Government in helping to prevent infringement at no additional cost to you.
- Treats the mark as if used nationwide as of the application date, which is vital in a system in which first use wins-otherwise, your rights are limited to the geographic area of use or reputation of the mark, potentially allowing others to use the same mark in another geographic area and leading to inevitable confusion when one or both parties expands
- Provides nationwide notice of ownership of the mark as of the registration date, preventing others from claiming their subsequent adoption of the mark was in “good faith”
- Serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration, with heightened protection after five years and the possibility of becoming “incontestable,” which can help not only in court proceedings but perhaps more importantly in quickly convincing others to cease using a mark without the need to go to court
- Grants the right to use the ® symbol when the mark is used for the goods and services listed in the registration (unregistered marks may be designated by a superscript “TM”), giving your products more marketing cachet and putting competitors on notice that you are serious about protecting your rights
- Grants the right to sue in federal court and, in certain cases, obtain treble damages and attorney fees, thereby providing for potential significant monetary recovery in appropriate cases
- Entitles you to certain statutory damages in the case of counterfeiting, relieving you from having to demonstrate actual damages in order to receive a monetary award
- Provides a basis for foreign registrations, facilitating protection of your marks worldwide as business expands
- Empowers US Customs and Border Protection to block imports that infringe the mark or are counterfeits once the registration is separately “recorded” with Customs, putting Customs in your corner in preventing infringement at no additional cost to you
How long does it take from filing the application until I get the certificate?
This varies greatly depending upon the number of hurdles you encounter during the application process. If things go well you may expect to have your certificate of registration some eight months after filing your application. Typically speaking you should expect the process to take 10 - 12 months. However some applications may take much longer and others become abandoned due to refusals by the trademark office.
what is the difference between the two trademark registries: supplemental and principle?
The Principal Register is the site for the registration of marks that are distinctive, by virtue of either their unique characteristics or their long and exclusive use. Registration on the Principal Register provides the registrant with, among other things, the presumption of the validity of the mark, prima facie evidence of ownership of the mark and acknowledgment of its continuous and exclusive use. Further, there is the possibility, after five years of continuous, uninterrupted use from the date of registration, of achieving incontestable status (limiting the grounds of third-party attacks to cancel the mark). An application for registration on the Principal Register must provide, to the satisfaction of the USPTO, proof that the mark meets the basic requirements for trademark registration and must survive publication and an opposition period.
The Supplemental Register is only for marks that are descriptive in nature. Consider the Supplemental Register as “Trademark Purgatory”. Although marks in the Supplement Register have some of the rights as marks in the Principle Register they lack the important statutory presumptions attributed to the marks in the Principle Register. After a mark has existed in the Supplemental Register for a five year period a new application may be made containing proof that the mark has acquired distinctiveness or secondary meaning and should be admitted into the Principle Register. One advantage of the Supplemental Registry, of varying importance, is that marks in the Supplemental Register are not published. This allows the owner of the mark to promote the mark without putting their competitors on notice that the mark is in use.
See the table below for a comparison of trademark rights obtained by common law, supplemental register, and principle register.
The Supplemental Register is only for marks that are descriptive in nature. Consider the Supplemental Register as “Trademark Purgatory”. Although marks in the Supplement Register have some of the rights as marks in the Principle Register they lack the important statutory presumptions attributed to the marks in the Principle Register. After a mark has existed in the Supplemental Register for a five year period a new application may be made containing proof that the mark has acquired distinctiveness or secondary meaning and should be admitted into the Principle Register. One advantage of the Supplemental Registry, of varying importance, is that marks in the Supplemental Register are not published. This allows the owner of the mark to promote the mark without putting their competitors on notice that the mark is in use.
See the table below for a comparison of trademark rights obtained by common law, supplemental register, and principle register.
Trademark Right |
Common Law |
Supplemental Register |
Principle Register |
Bring infringement suit in federal court based on the federal registration |
No |
Yes |
Yes |
Can be used by trademark examiner against future applications of confusing similar marks |
No |
Yes |
Yes |
Mark is easy to find for search reports |
No |
Yes |
Yes |
Owner can use ® to symbolize federal registration |
No |
Yes |
Yes |
Incontestability of mark after 5 years |
No |
No |
Yes |
Statutory presumption of validity |
No |
No |
Yes |
Statutory presumption of ownership |
No |
No |
Yes |
Statutory presumption of distinctiveness or inherently distinctive |
No |
No |
Yes |
Statutory presumption of exclusive right to use the mark in commerce |
No |
No |
Yes |
Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods |
No |
No |
Yes |
Ability to bring federal criminal charges against traffickers in counterfeits |
No |
No |
Yes |
Use of the U.S. registration as a basis to obtain registration in foreign countries |
No |
No |
Yes |
what marks are easy and what marks are difficult TO REGISTER?
Courts divide trademarks into five different categories, ranked by degree of inherent distinctiveness. Arbitrary, fanciful and suggestive trademarks are the easiest to protect, descriptive marks offer protection under certain circumstances and generic marks never offer protection. When contemplating a trademark for your business, you should always strive to choose (and register) trademarks that can comfortably fit into one of the three strong trademark categories.
Fanciful Trademark: A fanciful trademark is made-up, invented for the sole purpose of functioning as a trademark. This is also called a neologism when it describes a single word. Kodak and Exxon are famous examples of fanciful trademarks. George Eastman, creator of the Kodak trademark, had some simple yet profound advice on what makes a good trademark: he said it should be short, vigorous, easily spelled and meaningless.
Arbitrary Trademark: An arbitrary trademark has a common meaning, but the meaning is unrelated to the goods or services offered for sale under the mark.
Apple (computers) is a good example of this type of trademark. We all know that the common meaning of apple is as a fruit, which is pretty far removed from the digital world (insert your own lame “byte” joke here). In the case of less edible and more digital Apple, this choice of trademark (rumored to have been an impulsive decision based on a temper tantrum by the legendarily cantankerous Steve Jobs) actually has been quite costly. Apple had been established as a trademark by virtue of being the name of the Beatles’ record company (Apple Corps). As a result, Apple Computer has lost a couple of very costly court battles related to its foray into anything musical. Currently, it is involved in a third battle over iTunes (this battle has been in the news quite a bit lately as of this writing).
Suggestive Trademark: A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; such a trademark might also be called allusive. However, a suggestive trademark requires a subtle leap in thought (or as courts often put it, “imagination, thought and perception”) for the consumer to reach a conclusion as to the exact nature of the goods. Citibank (financial services), Greyhound (bus lines), Jaguar (automobile), and Playboy (magazine) are examples of well known suggestive trademarks.
Many marketing professionals prefer suggestive to arbitrary or fanciful trademarks because the latter plants a seed in the mind of consumers as to the nature of the goods and thus requires fewer marketing and advertising expenditures to build brand awareness.
Descriptive Trademark: A descriptive trademark merely describes some portion of the goods or services to be sold under the mark. Courts often use the guidelines that a trademark is descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods”. Descriptive trademarks may only achieve substantial federal protection if they acquire “secondary meaning” –which typically takes at least five years and a significant advertising budget. Thus, owners of trademarks that walk the line between descriptive and suggestive obviously want to convince the trademark office that their trademark is actually suggestive.
Generic Trademark: A generic trademark can not be protected as a trademark because it describes a category of product or service. This is a matter of public policy; the federal government has determined that free use of such categorical trademarks benefits consumers.
Fanciful Trademark: A fanciful trademark is made-up, invented for the sole purpose of functioning as a trademark. This is also called a neologism when it describes a single word. Kodak and Exxon are famous examples of fanciful trademarks. George Eastman, creator of the Kodak trademark, had some simple yet profound advice on what makes a good trademark: he said it should be short, vigorous, easily spelled and meaningless.
Arbitrary Trademark: An arbitrary trademark has a common meaning, but the meaning is unrelated to the goods or services offered for sale under the mark.
Apple (computers) is a good example of this type of trademark. We all know that the common meaning of apple is as a fruit, which is pretty far removed from the digital world (insert your own lame “byte” joke here). In the case of less edible and more digital Apple, this choice of trademark (rumored to have been an impulsive decision based on a temper tantrum by the legendarily cantankerous Steve Jobs) actually has been quite costly. Apple had been established as a trademark by virtue of being the name of the Beatles’ record company (Apple Corps). As a result, Apple Computer has lost a couple of very costly court battles related to its foray into anything musical. Currently, it is involved in a third battle over iTunes (this battle has been in the news quite a bit lately as of this writing).
Suggestive Trademark: A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; such a trademark might also be called allusive. However, a suggestive trademark requires a subtle leap in thought (or as courts often put it, “imagination, thought and perception”) for the consumer to reach a conclusion as to the exact nature of the goods. Citibank (financial services), Greyhound (bus lines), Jaguar (automobile), and Playboy (magazine) are examples of well known suggestive trademarks.
Many marketing professionals prefer suggestive to arbitrary or fanciful trademarks because the latter plants a seed in the mind of consumers as to the nature of the goods and thus requires fewer marketing and advertising expenditures to build brand awareness.
Descriptive Trademark: A descriptive trademark merely describes some portion of the goods or services to be sold under the mark. Courts often use the guidelines that a trademark is descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods”. Descriptive trademarks may only achieve substantial federal protection if they acquire “secondary meaning” –which typically takes at least five years and a significant advertising budget. Thus, owners of trademarks that walk the line between descriptive and suggestive obviously want to convince the trademark office that their trademark is actually suggestive.
Generic Trademark: A generic trademark can not be protected as a trademark because it describes a category of product or service. This is a matter of public policy; the federal government has determined that free use of such categorical trademarks benefits consumers.
what are your fees for filing a trademark application and other papers?
My fees for filing and shepherding a trademark application from start to finish are very competitive. I price shop my fees with other services on the internet such as Legalzoom to make sure that you are getting an excellent deal. As mentioned above I am personally involved with every aspect of every application I file. I will not make you fill out online forms that ask you for information on questions you are not sure how to answer. My promise to you is that I will personally call you, I will personally review and gather the information I need from you, I will personally perform all of the legal research, and I will personally file your application.
The table below lists my fees for services on typical applications. Please note that if there is something unusual about your application such as international or concurrent use filings these fees will change. However for most applicants the following fees is what you will be paying.
The table below lists my fees for services on typical applications. Please note that if there is something unusual about your application such as international or concurrent use filings these fees will change. However for most applicants the following fees is what you will be paying.
Services |
Fee |
Initial Consult. When filing a trademark application an initial consult is optional. If you elect to sit down with me I will review your trademark and perform some basic "direct hit" searches as opposed to the pattern matching searches I do when filing your application as described on the next row. |
No charge if done by phone. Otherwise $200. |
Filing of a trademark application. To file an application please send me a request via my Contact Me page or simply call me. We will coordinate a 30 minute time period when we may talk over the phone, online video, or in person. During this time I will gather from you all of the necessary information needed to file your application and determine your costs. After your trust account has been funded I will then perform the following:
The government fee is $250 per international class. In some situations the government fee will be $350 per international class. You do not need to fill out any forms with complicated questions and I will review with you any legal issues that we come across. It can't get any easier! |
$1,900 |
Search of Registered Trademarks: Search the federal register of trademarks to find potential marks that are similar. When searching for confusingly similar marks you have to be creative and not rely just on spelling. For example the marks: Knight, Nite, and Night are all similar as they sound alike. It is the same with Kloud and Cloud or IX, Nine, and 9. I know how to find previously registered marks that are confusingly similar to yours by using pattern matching search techniques rather than the "direct hit" method used by others. |
$300 |
Responding to a Tier 1 Office Action. "Office Action" is a the legal term for a rejection notice from the trademark office. Tier 1 office actions include:
Filing of any of the following papers:
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Included with the filing fee above. If I did not file your application my fee will be $1,200. There may also be government fees associated with some filings. |
Responding to a Tier 2 Office Action. "Office Action" is a the legal term for a rejection notice from the trademark office. Tier 2 office actions include:
Filing of any of the following papers:
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If I did not filed your application my fee will be $800, otherwise my fee will be $1200. There may also be government fees associated with some filings. |
Responding to a Tier 3 Office Action. "Office Action" is a the legal term for a rejection notice from the trademark office. Tier 3 office actions include:
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$1,500 |
Responding to a "Likelihood of Confusion" or "Suggestion of Connection" Office Action |
$1,500 |
What happens after my trademark application is filed? What is the process like?
For most applications it is best to start with a search of the trademark database to find any confusingly similar mark. This will save you lots of money if your mark is found to be confusingly similar to an existing mark as government and attorney fees are not refundable unless I performed the search for you and told you that there were no confusingly similar marks in the trademark database. In such cases my fees are refundable.
After the search I will file your application. Once it is filed it will take some months, typically 3 - 4 months, before it is examined by the trademark office. During this time there will be no notification from the trademark office.
Once your application has been examined the trademark office may issue an "office action" to notify you of any problems that were found with the application. For the application to proceed responses to these office actions will have to either correct the problem or present arguments to the examiner as to why the problem they have identified is not a problem and that the application should be allowed to proceed.
After the application, by amendments or arguments, is in a state the examiner is happy with it will be published for 30 days in the "Official Gazette". By publishing your mark in the Official Gazette the trademark office is letting everyone know that your mark has been accepted by the examiner and will become a registered mark unless "opposed". Other parties, if they believe that they will be harmed by your mark if it is registered, may file a motion to oppose your mark. These opposition proceedings can get to be expensive and if judgement is in their favor your application will be refused. If your application is not opposed then some 90 days after the initial date of publication you will receive a certificate for your mark.
This describes in general terms from start to finish the application process. Please note that circumstances may cause your application to deviate widely from what is described here.
After the search I will file your application. Once it is filed it will take some months, typically 3 - 4 months, before it is examined by the trademark office. During this time there will be no notification from the trademark office.
Once your application has been examined the trademark office may issue an "office action" to notify you of any problems that were found with the application. For the application to proceed responses to these office actions will have to either correct the problem or present arguments to the examiner as to why the problem they have identified is not a problem and that the application should be allowed to proceed.
After the application, by amendments or arguments, is in a state the examiner is happy with it will be published for 30 days in the "Official Gazette". By publishing your mark in the Official Gazette the trademark office is letting everyone know that your mark has been accepted by the examiner and will become a registered mark unless "opposed". Other parties, if they believe that they will be harmed by your mark if it is registered, may file a motion to oppose your mark. These opposition proceedings can get to be expensive and if judgement is in their favor your application will be refused. If your application is not opposed then some 90 days after the initial date of publication you will receive a certificate for your mark.
This describes in general terms from start to finish the application process. Please note that circumstances may cause your application to deviate widely from what is described here.
What do I need to do when I sell or transfer my mark to someone else?
Any transfer an interest in a register trademark the transfer must be submitted to the trademark office so that the transfer is made public. A transfer may be made for any of the following reasons:
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To file the transfer with the trademark office I will need some information from both the transferor and transferee along with the agreement, court order, receipt of sale, or other document that records the cause of the transfer.
Please see my FAQ on fees for filing an assignment.
Please see my FAQ on fees for filing an assignment.
How can I stop someone else from getting a trademark?
There are two legal means of interfering with marks that have been applied for but have not yet registered at the trademark office. The first means is called a "Letter of Protest" (LOP) and the second means is called an "Opposition Proceeding" (OP).
Letter of Protest: If you are the owner of one or more marks you should be performing regular checks, every month or two, on the list of pending applications at the trademark office to determine if any of the applications are for marks that:
Opposition Proceeding: You may file a motion to oppose a pending application within 30 days after the mark has been published. The 30 day period may be extended for up to 90 days with a showing of good cause. An OP is much like a court trial in that there are depositions, admissions, interrogatories, expert testimony, submission of evidence, along with the trial itself but there are three important differences:
Letter of Protest: If you are the owner of one or more marks you should be performing regular checks, every month or two, on the list of pending applications at the trademark office to determine if any of the applications are for marks that:
- Are confusingly similar in sound or look to your marks;
- Descriptive as to your industry; or
- Litigation concerning the reliability of the mark being applied for is currently pending.
Opposition Proceeding: You may file a motion to oppose a pending application within 30 days after the mark has been published. The 30 day period may be extended for up to 90 days with a showing of good cause. An OP is much like a court trial in that there are depositions, admissions, interrogatories, expert testimony, submission of evidence, along with the trial itself but there are three important differences:
- The trial is before a panel of administrative judges at the trademark office.
- Any award is limited to only the registrability of the mark being applied for. The judges may not award money damages or injunctions.
- The trial is not conducted in person but by briefs that are submitted by the parties.
How can i ask the trademark office to revoke the registration of a registered mark?
If a mark has passed the examination process at the trademark office it becomes a registered mark and may be used against you. However there is a legal procedure, called "Petition for Cancellation" (PFC), were you petition the trademark office to revoke the privileges of registration for the registered mark. There are a number of legal basis for the PFC, about 19 of them, but the most common are:
- The mark is the generic name of the goods or services. A generic term may never be trademarked and should be available freely to all who wish to use it. Some examples of marks that were found to be generic include:
- TIRES TIRES TIRES for a retail tire store.
- ELECTRIC CANDLE COMPANY for light bulbs
- AUDIO BOOK CLUB for retail mail order service featuring electronically recorded books.
- The mark is descriptive of the goods or services. A mark is descriptive if it "immediately conveys" the ingredients, qualities, or characteristics of the goods or services with which it is used. Some examples of marks that were found to be descriptive and unregistrable include:
- LA LINGERIE for a retail clothing store selling undergarments.
- GOLDEN ALE for a brand of ale.
- The mark is likely to be confused with an existing registered mark. When an application is made for a mark the examiner at the trademark office will search for previously registered marks that are confusingly similar. However sometimes the examiner may overlook a previously registered mark. If you are the owner of that overlooked mark and believe that the newly registered mark is confusingly similar to yours then you may file a PFC.
What do ® and ™ and © mean?
It is not unusual to see the following symbols being used in commerce: ©, ™, ℠, and ®. Each symbol has a particular use and meaning.
- ©: A circle with a "C" is the symbol used to identify that the material is copyrighted. The most common place to find this symbol is in a book. However you are not required by law to show the © in copyrightable material as every copyrightable material automatically receives copyright protection. There is a registration process to register your copyrightable work. Such registration gives you important advantages in a copyright dispute and should be done at or very soon after publication of your work. For more information on copyrights and registering your work send me a message at my Contact Me page.
- ™: The TM nearby a word or logo means that the word or logo is an unregistered mark for goods such as clothing, tools, machines, lotions, and such. This symbol is also used if the trademark has been applied for but has not yet been granted by the trademark office. Similar to copyrights, a unregistered trademark lack important benefits that attach to registered trademarks.
- ℠: The SM nearby a word or logo means that the word or logo is an unregistered mark for services such as counseling, construction, handyman/repair work, employment recruiters, and such. This symbol is also used if the service mark has been applied for but has not yet been granted by the trademark office. Similar to copyrights, a unregistered service mark lack important benefits that attach to registered service marks.
- ®: A circle with a "R" nearby a word or logo means that the words or logo is registered. This is true either of marks for goods or for services. A registered mark has many legal advantages over unregistered marks. See my FAQ above titled "What benefits do I receive by registering my mark?" for a table showing the legal differences between registered and unregistered marks.
How am i suppose to use my trademark?
Nothing worse than sometime after registering your mark through the trademark office someone files a petition to cancel your mark because it no longer serves as an identifier of your goods or services. Some well known trademarks we use in our daily vocabulary such Aspirin, Cellophane, Dry ice, Escalator, Flip phone, and many more, have been cancelled because the word(s) no longer serve to identify the source of a good or service as required for a trademark. Xerox, the famous copier company, almost lost their XEROX mark because the public was using their mark as another way of saying "copy". Examples include "Did you get that letter xeroxed?" or "I will get this xerox". To reclaim their mark, Xerox paid for ads across America teaching people how to use their mark properly as shown in the ad below:
To promote the use of your mark as an identifier of goods or services it must be properly used. The International Trademark Association (ITA) wrote a fact sheet on proper trademark use titled "Trademark Use". I have consolidated their fact sheet here in this FAQ. To see the entire fact sheet click here.
So there you have it. Treat your mark properly and it will become a strong and healthy mark; able to withstand any petition for cancellation.
- Make your mark distinguishable from the surrounding words by changing the typeface, making it all uppercase, or by using the appropriate trademark symbol (see my FAQ titled "WHAT DO ® AND ™ AND © MEAN?" on symbols).
- Use your mark with the same spelling and spacing as it appears on the registration each and every time it is used.
- Do not use your trademark as a noun. Use the noun to label the good or service you are branding with your mark and your mark as an adjective for the label.
- Likewise, do not use your mark as a verb or in its plural form or in a possessive form. Do not add an ING, S, or 'S to the end of your mark. In fact don't add or take away any of the letters used for your mark.
- Do not use the mark in a decorative fashion so as to lead the consumer to believe that your mark is actually an ornamental feature of your good or service.
So there you have it. Treat your mark properly and it will become a strong and healthy mark; able to withstand any petition for cancellation.
SEE YOUR QUESTION HERE
Have a question that was not answered here? Send me your question on the Contact Me page and if applicable I will add it to this FAQ.
