by Mitchell Lairmore | July 2, 2020
There are many things a business owner must consider when starting a business. Tasks such as balancing finances, hiring new employees and company structure often top many business owners’ list of priorities.
Protecting the company’s image should also be on that list of priorities. Often times, a business’ most important asset is their reputation. When a business owner advertises or markets their company, they are spending a lot of money developing a brand.
When a company applies for a trademark or a service mark, they are protecting that brand and reputation that they spent so much time and effort developing. If a business owner ever sells the company, this trademarked brand becomes an intangible asset to the company, increasing its value.
For business owners who are unfamiliar with the trademarking process, I have developed a list of frequently asked questions that can help you navigate the process with ease.
What can a company trademark?
Name – This can be a company name or a line of products
Logo – Any symbol or design that is used for branding purposes
Words – This can be a slogan or phrase associated with a brand
A great example of a company who has trademarked all three is Nike. In addition to their name, they have also trademarked the swoosh and the phrase “Just do it.”
What is the difference between a service mark, a trademark, and a patent?
A trademark and service mark both essentially serve the same purpose – to protect a company’s name, logo, or unique phrase. A trademark is for tangible goods and a service mark is for services provided. A patent protects a unique invention. There are three types of patents: design, utility, and plant.
A great example of a company who uses a trademark and a design patent is Coca-Cola. The name, logo and phrase are all trademarked. They also have a patent on their unique Coca-Cola bottle.
What are classifications in relation to trademarks and service marks?
When a company applies for a trademark, they have to provide examples which demonstrate how the trademarks is being used. For trademarks, it would be a tangible product with the logo, name or phrase on it. For service marks, this could be a website or a sign. The classification is determined by the type of good or service. There are 34 classifications of goods, and 11 classifications of services. Click here to see the full list of classifications.
How can I determine if the name, logo, or phrase I want to trademark is already trademarked by another company?
This is extremely important for a company to consider before applying for a trademark or service mark. When a company submits their application, there is a fee to do so. If an applicant is applying in the state of Florida and is unaware that a business in Washington has already trademarked the same name, logo or phrase, then they will be denied the trademark and will lose that application fee. So, it is beneficial for the company to do a thorough search before submitting their application. The United States Patent & Trademark Office (USPTO) provides a comprehensive database that companies can search through by various categories, so they do not waste their time or money applying. The database can be found here. It is also useful to do searches on the Internet to determine if other companies are using your proposed trademark.
What if I am denied a trademark for a logo, name or phrase that I have been using for years, because unbeknownst to me, another company has secured the trademark and they have been in business for a shorter period of time?
The USPTO does have an appellate process. The judgement tends to fall in favor to the company who used the logo, name or phrase first. The company must have thorough documentation to support the claim. This process can be arduous, costly and often requires a lawyer. So, it is important to register for a trademark as soon as possible.
If the judgement falls in favor of whomever used it first, why should I get a trademark at all?
It is preemptive protection. For many businesses, their brand is associated with the quality of a product or service. If another company is operating under the same name, but provides an inferior product or service, this reputation could be applied to all companies using the same logo, name or phrase. A company is also protecting themselves from the time and legal fees associated with constant court battles. A registered trademark provides you the ability to stop others from using your brand name and it prevents others from stopping you from using your brand name.
Do I have to have an attorney to apply for a trademark?
No. The USPTO site recommends that a company hire an attorney. However, essentially the role of an attorney is to review and decide whether you have a viable claim to apply for the trademark or not. The USPTO provides that extensive database that anyone can access. Honestly, a company may need a lawyer is if it finds a hit in the database for a similar design or name. In that case, the USPTO also provides a list of inexpensive lawyers to choose from.
I have no intention of expanding my business nationwide, is there a local trademark?
A company can apply for a state or a federal trademark. It is not recommended to apply just for a state trademark for a couple of reasons. First, a business owner may change their mind down the road and expand into another state. Second, a trademark is a corporate asset and protects a company’s image and brand. It is also important to note that states may not do the amount of due diligence done by USPTO when searching to verify if something is already trademarked somewhere else in the country. A company may spend the money for a state trademark and another company in Texas who acquired a federal trademark will have the rights to the trademark. The cost is very similar, so it’s beneficial to simply apply for a federal trademark.
What is the process and cost for registering a trademark?
There are two types of applications with the USPTO. There is an in-use filing and an intent-to-use filing. The in-use filing requires that you prove that the mark is already being used in commerce. The intent-to-use filing is appropriate if you plan to use it in the near future (within 6 months). The process is simple, and a business can apply by paper or online via the USPTO website. The cost is $225 per classification for the in-use filing. The Intent-to-use filing has additional fees.
Each element you are registering (logo, name or phrase) will require a separate application. It is important to note that the intent-to-use filing is for a period of six months. If a company needs a longer period of time, they will need to file an extension and that will be an extra $150 for an additional six months. The business will also have to provide a very good reason to request an extension.
When a business is starting out, the business owner may not fully understand the importance of filing for a trademark. However, it is essential to protect not only the company’s image, but also the business owner’s intellectual property. In the long run, it will alleviate a lot of potential stress, especially from legal ramifications. It may seem daunting, however the USPTO tries to make the process as easy as possible. It supplies many resources for beginners, including tutorial videos and written material.