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What is a trademark and why do I need it?

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others another party. A “service” mark distinguishes the source of a service, rather than a good, but the two are typically simply referred to as a “trademark” or “mark”. In more general terms, getting a trademark protects your brand. Most of the brands, logos and slogans you love, know and trust have been properly registered.

By registering your trademark, you will be entitled to a presumption of ownership of the brand on a national level and a presumed right to use the brand nationwide. It prevents someone from registering a confusingly similar mark after you and allows you to sue in federal court if someone infringes on the brand you have worked hard to build. Once registered, you can also present yourself as an established and serious business because you can start using the ® symbol after your name, logo or slogan.

After you properly register the mark and use it for a five-year period, Trademark Engine can also help you file a “Declaration of Incontestability” giving you the greatest protection under U.S. trademark law. This will prevent others from contesting your trademark on grounds often subject to attack such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to another mark that someone else began using before you; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.

What’s the difference between copyright, patent and trademark?

While a trademark protects a word, phrase, symbol and/or design that distinguishes the source of the goods, a patent protects “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” 35 U.S.C. § 101. Unlike trademarks, which protect a brand name and recognition, a patent protects an invention, including the functionality or design. A patent gives the owner the exclusive right to manufacture products or employ processes covered by the patent for 20 years from the earliest priority date. A trademark, if properly maintained, can last forever. Copyrights, meanwhile, protect artistic works such as books, photographs, arts, movies and music.

What is a common law trademark and why do I need to register my mark?

Under U.S. law, you do establish what is known as “common law” when you use your name, logo or slogan in commerce even if you do not register it. So, why pay to register your trademark? Common law rights are limited to the geographic area where you actually use the mark as opposed to nationwide protection given to you when you register your mark. Without registration, you can be limited to using your mark geographically and not have the ability to expand. Likewise, if someone else is already using your mark in a limited geographic area, you can box them in by registering your mark. Plus, should you ever have to sue someone for trademark infringement, your registration gives you a leg up in court as to the validity of your mark and your date of usage. There are also remedies available to registered trademark owners in the event of litigation. Finally, when you let Trademark Engine file your trademark, once accepted, you will be on the USPTO database which discourages others from using your mark in the future. Future companies will know your mark is already spoken for and hopefully you can avoid any disputes.

Benefits to registering your mark:

  • Nationwide protection
  • Presumed validity of the mark if you have to sue
  • Additional remedies in court
  • May increase the value of your company
  • Registration with the USPTO will discourage others from trying to use your mark

What makes a good name?

The United State Patent and Trademark Office will not approve every name for a trademark. Under trademark law, names can be described as “generic,” “descriptive,” “suggestive,” “arbitrary,” or “fanciful.” You are more likely to receive a registration and be protected as you move from left to right or from generic to fanciful.

Generic names are almost never given protection. For example, you could not trademark the name “The Screwdriver Company” if you made screwdrivers. Almost as problematic as generic names are merely descriptive names. “The Metal Screwdriver Company” is also not likely to pass muster because it merely describes your screwdriver as being made of metal.

Descriptive marks are only entitled to trademark protection if they have gained secondary meaning. That is a legal term of art that means the name has become so famous that despite the generic nature, the public associates the product with a specific company. Examples include International Business Machines or IBM. Obviously, if you are just starting out, you shouldn’t rely upon a secondary meaning to get your generic name through. While a descriptive mark may obtain secondary meaning, generic names cannot and therefore they should always be avoided.

Your chances of getting approved improve dramatically as you move toward a suggestive mark. These hint at the quality or another aspect of the company such as “Herculean Screwdriver Company.” It is better than “Strong Screwdriver,” but conveys the same meaning. These you can usually register, but you run the risk that the USPTO says what you thought was suggestive was actually descriptive. Some popular examples include Microsoft which makes software for microcomputers or Citibank for financial services. Brand owners often like these names because it gives the consumer a good idea of what the company does without having to educate them or spending a lot on advertising to get them used to the name for the particular product or service.

Next on the list are arbitrary marks. These are existing words used in a way unrelated to their normal everyday meanings. Hence, Chocolate Screwdrivers may work. The textbook example of the arbitrary mark is Apple Computers - not to be confused with Apple Records.

Finally, fanciful marks are the easiest to get approved. A fanciful mark is a made up word or a very rarely used word that has nothing to do with describing the products. “Glotz” for a screwdriver company may work. You are likely familiar with Yahoo!, Google, Exxon and Spotify which would all be considered fanciful marks.

In addition to being rejected because the name is generic or descriptive, your name may be rejected for a number of other reasons including:

  • it is too similar to another name already registered.
  • it is a surname.
  • it is geographically descriptive of where you are doing business.
  • it is disparaging.
  • it is a foreign term that translates to a generic or descriptive English term.
  • it uses an individual’s name or likeness, or is the title of a single book or movie.

What information will I need?

The whole process will take anywhere from 5 to 10 minutes. For a typical application, be prepared to provide at least the following:

  • The actual mark you want to use.
  • The full legal name and address of the owner of the mark.
  • A copy of the specimen which is an example that shows you are using the mark in commerce. This could be a picture of your product or a website advertising your service.
  • A category of the goods or services where you are using your mark from our drop down menu and a description of your goods or services.
  • The date you first used the mark in commerce and the date you first shared the mark anywhere.

What are the different kinds of marks?

Trademarks - If you are looking to register a name, logo or slogan related to the sale of goods, then you are seeking a trademark.

Service marks - If you are looking to register a name, logo or slogan related to the sale of services, then you are seeking a service mark.

Intent to Use - You would file an intent to use application if you know you are going to use a mark, but you haven’t start selling your goods or services yet. By doing this, you have established your place in line on the date of filing as opposed to the date you actually start selling your goods or services. To validate your application and take advantage of your place in line, you do have to actually sell the goods or services and then update the USPTO. If you go this route, you will have to file a Statement of Use which can be done through your customized portal on Trademark Engine. This has to be done within six months of the filing of your Intent to Use application or you you can seek up to four additional six-month extensions. You will be able to complete both of these through your personal customized portal on the Trademark Engine. To get an extension, you will have to demonstrate good cause.

Why run a search for similar trademarks?

Before spending your time and money filing an application, you should do a quick search to see if your mark is already in use or registered by someone else. A search will help avoid obvious duplications of pre-existing marks. If the USPTO rejects your application, the fees to Trademark Engine and the USPTO are not refundable.

If your company is just beginning, it’s better to make name changes now rather than invest years building a brand only to learn that you have to change the name and lose all of your goodwill.

Running searches just with the USPTO does not mean you will automatically have superior rights to the mark. There could be someone already using a similar mark, but who did not register it with the USPTO. In that case, you may get a registration, but it is subject to challenge by the owner of the earlier-used mark because of common law trademark rights.

What’s the difference between in use and intent to use?

If you are already selling your product or service, you will file a use-based trademark. When the mark is not in use yet (e.g., prior to forming the company or selling finished product), you will want to file an “intent-to-use” application. When filing your intent to use application, it is as if you established your place in line to use the mark. To keep that place in line, you need to file for an extension every six months (which you can do for up to a total of three years) until you actually use the mark. If you file an intent to use and then start selling the goods or services, you will need to file a “statement of use” with your specimen showing the mark as used in connection with the described goods or services. Through Trademark Engine’s custom and proprietary portal, you will be able to do that right here on the Trademark Engine.

Why trademark a name or logo?

If budget is not an issue, the answer is register them both. If you need to choose, then, generally speaking, you should start with your name. To the extent someone is going to use something of yours, it is more likely they will try to use your name. Protecting your name gives you the broadest protection because it prevents any use of it that causes confusion, even if someone tries to use your name within their logo.

A mark for your logo protects the exact shape, orientation, stylization and sometimes color in that particular logo. The company name can, but does not have to be part of the logo. Registering the logo protects the logo and prevents others from using that logo or something confusingly similar to the logo. If you change your logo, and want the updated or changed logo protected, too, you will have to file a new application. You are much more likely to change your logo, than your name.

If within your budget, you get the maximum protection when you register both your name and your logo. Each filing requires its own government filing fees and processing fees to Trademark Engine.

I was allowed to incorporate with my name, why is that not enough?

Most states allow you to incorporate with your chosen name as along as it does not conflict with another name also registered with that state. That means while ACME Co. may be available in Texas, there could be an ACME Co. in New York that has already registered that trademark and has the exclusive right to use that name throughout the United States under trademark law. Name conflicts that may arise when forming your business within a state are determined by a completely different analysis than what name conflicts may arise with in regard to trademarks.

While actually using a name to sell a product or service may give you common law trademark rights, being allowed to use a company name or a d/b/a does not give you any trademark rights. Registering your trademark with the United States Patent and Trademark Office is always better than relying upon common law rights and the mere fact that your state allows you to use a certain name.

Conversely, you cannot rely upon the availability of a trademark with the USPTO as a guarantee that your state will let you use that corporate name. The USPTO does not search individual state or d/b/a filings. That is another reason you should consider using Trademark Engine’s search service before filing. The search reports cover both the USPTO, state and d/b/a filings as well other sources to help you get a better feel for the availability of your desired brand.

How do I decide which category to use?

You will need to decide what category (also known as an International Class) to use on your registration to identify your goods or services. If you want to register your mark within multiple classes (such as the name of your beer and the ability to sell t-shirts with your name on it), you will have to pay multiple filing fees because there is a USPTO filing fee for each selected category. Check out the Trademark Engine's User Manual to see broader descriptions of each available category.

Before picking a category, you need to decide if you are selling a good or a service. Goods are physical items like nuts, bolts, beer and t-shirts. Services don’t involve goods and focus on providing activities such as legal, consulting or accounting services. Most of the time it is clear, but sometimes it can be complicated and you may be involved in both which might require registering under multiple classes.

The selection is important because a registered trademark protects you just in the category you chose. Therefore, you want as broad a category as possible, but you also want to make sure that you actually sell products and services within that category. If you don’t actually sell goods or services in your designated category, your registration could be invalidated. Also, changing the class designation can be difficult and require an additional filing fee.

Also, if you trademark your company name and then want to obtain separate trademarks for particular product names, you may want to identify different categories for each. Each one would require the payment of additional fees to the USPTO and to the Trademark Engine.

Tips for Picking the Right category

  • Determine whether you are selling a good or service.
  • Try to be as accurate as possible because filing in the wrong class can be the basis of a rejection by the USPTO.
  • Pick the most accurate category from the Trademark Engine's drop-down menu.
  • Review the Trademark Engine's User's Manual for more on the possible categories.
  • Focus on the finished product to the consumer and not on the ingredients that go into the goods or service.
  • Focus on what you actually sell to consumers and not extra things like the fact that your employees may have shirts or hats with the company logo.
  • Don’t think about the packaging. You sell fruit, not paper goods when your logo appears on the packaging that comes with the fruit.
  • Although more expensive, consider filing under more than one category when you sell multiple products.

How do I decide what description to use?

In addition to selecting a category for your mark, you will have to provide a description of your goods and services. With the categories, you must choose from the pre-determined list that comes from the USPTO. With the description, you can provide whatever explanation you need to better describe your business. The description is usually at least two words but not more than to a sentence that describes your goods or services.

You don’t want to be overly broad because your application may get rejected if the USPTO thinks it infringes on another trademark when it really doesn’t. You also don’t want it to be too narrow because you may not get the protection you need on the full range of your offerings.

Tips for Describing Your Goods and Services

  • Don’t be too narrow so that some of your goods and services aren’t protected.
  • Don’t be too broad so your application gets rejected when it shouldn’t be.
  • Don’t leave a list open ended by using phrases such as “including,” etc.” and “such as.”
  • Don’t just repeat the broader category name.
  • Don’t use a term that fits into multiple categories such as belts which could include tool belts in the Hand Tools Category and a suspender belt which would be in the Clothing Category.
  • Use plain english. The USPTO and the public do not work in your industry.
  • Punctuation matters so know the meaning of a semi-colon if you use one.

Am I protected because of my name?

Most states allow you to incorporate with your chosen name as along as it does not conflict with another name also registered with that state. What may conflict for the purpose of forming your business with a state is different than what conflicts may arise with regard to trademarks.

While actually using a name to sell a product or service may give you common law trademark rights, being allowed to use a company name or a d/b/a does not give you any trademark rights. Registering your trademark with the United States Patent and Trademark Office is always better than relying upon common law rights and the mere fact that your state lets you use a certain name.

Just like you cannot simply rely upon the fact that your state may let you use your corporate name for trademark purposes, you cannot rely upon the availability of a trademark with the USPTO as a guarantee that your state will let you use that corporate name. The USPTO does not search individual state or d/b/a filings. That is one reason you should consider using Trademark Engine’s search before filing. The Trademark Engine search covers both the USPTO, state and d/b/a filings as well other sources to help you get a better feel for the availability of your desired brand.

I have my domain, so why do I need a trademark?

Much like the availability of a corporate name in your state does not mean you have superior trademark rights to use the name in commerce, the availability of the domain name is not an indication either. A company could have a trademark name on a product or service, but not have acquired the domain name.

The availability of the domain name should be one part of a comprehensive search, which Trademark Engine can perform for you, to determine the strength of your brand name or slogan and the likelihood of your trademark being approved.

If you have been using a domain name as part of a brand that sells goods or services, you may have established common law trademark rights. Under U.S. law, you do establish what is known as “common law” trademark when you use your name, logo or slogan in commerce even if you do not register it. Common law rights are limited to the geographic area where you actually use the mark as opposed to nationwide protection given to you when you register your mark.

Without registration, you can be limited to using your mark geographically and not have the ability to expand. Likewise, if someone else is already using your mark in a limited geographic area, you can box them in by registering your mark. Plus, should you ever have to sue someone for trademark infringement, your registration gives you a leg up in court as to the validity of your mark and your date of usage. There are also remedies available to registered trademark owners in the event of litigation. Finally, when you let Trademark Engine file your trademark, once accepted, you will be on the USPTO database which discourages others from using your mark. Future companies will know your mark is already spoken for and hopefully you can avoid any disputes.

Benefits to registering your mark:

  • Nationwide protection
  • Presumed right to the exclusive use of the mark nationwide
  • Presumed validity of the mark if you have to sue
  • Additional remedies in court
  • May increase the value of your company
  • Registration with the USPTO database that will discourage others from trying to also use your mark
  • You can record the mark with the U.S. Customs and Border Protection which will help stop importation of infringing or counterfeit goods into the U.S.
  • The right to use the ® symbol

Do I also need to register the web address or the plural version?

If you have a trademark registration for your company name, you are most likely protected and do not need to register the web address or yourcompany.com. The USPTO says the .com or other gTLD does not identify the source of goods and services and so it generally does not consider the .com part of a company’s name. If, on the other hand, you are an online business and you commonly refer to yourself by the name of the website, you may want to only register your domain name.

Even without registering the domain name as a separate mark, having a registered trademark can help prevent cybersquatting and give you rights to prevent others from using confusingly similar domain names. In the United States, your registered trademark gives you rights under the Anti-Cyber Squatting Consumer Protection Act and the right to protect your domain name under the Uniform Domain Name Dispute Resolution Process. Under both claims, the registered mark gives you presumed rights and superiority to the name.

While it may not be necessary to register your domain name as a separate domain name with the USPTO, a good domain name strategy may be part of your brand protection strategy.

What about my slogan, do I register that?

When you are investing heavily in a marketing campaign with a slogan, you should consider registering your slogan as well. You can also register short catch phrases or sayings when you are selling them as part of merchandise like shirts or hats. The same rules apply that are applicable to picking your company name. Namely, the slogan should be inherently distinctive and creative or have developed a secondary meaning. In other words, you probably can’t protect “really good pizza” unless that saying has become so famous that most consumers associate it with a certain pizza brand.

What happens after I submit my mark to the USPTO? How long does it take?

After you file an application, the USPTO publishes that they will begin reviewing it in about 3 months. Their review takes about a month. If there are no issues, the USPTO will publish the mark in the Official Gazette to see if anyone in the public challenges the mark. If there are no challenges within 30 days, the mark will register approximately three months later.

If the USPTO has an issues with your application, they may issue a letter to you which is referred to as an “Office Action.” At that point, you can respond to the USPTO or abandon your efforts. You may want to consult with qualified counsel about the appropriate response. Usually, there is a deadline to respond, so taking the Office Action seriously is important. If the USPTO continues to challenge your application, you can eventually file an appeal with the Trademark Trial and Appeal Board which is commonly referred to as the TTAB. You may also end up before the TTAB if a third party challenges your mark. If you find yourself involved in a TTAB proceeding, you may want to hire an attorney. You can represent yourself, but the TTAB is just like a trial and there are procedural rules you will be expected to follow that may trip you up.

Why would I want to “disclaim” part of my trademark?

Many times your mark may be a group of words together with one or more of them describing the product (e.g., tires) or be merely descriptive (e.g., great). While it may be appropriate to register the mark as a whole, the USPTO may raise questions if you try to claim some of the individual product or descriptive terms. Thus, you may want to disclaim those words without giving up on registering your mark as a whole.

The disclaimer does not remove the unregistrable part of your mark or affect its appearance. The disclaimer will be on the USPTO database and it lets the world know you are not making an exclusive claim to that particular part of your mark. If you choose not to disclaim part of your mark, it may be cause for rejection. Often times, the USPTO will issue an Action Letter asking you to disclaim the unregistrable parts of your mark which may delay your application. You can agree with the USPTO or decide to fight the request to disclaim the portion of your mark. Because it has significant legal ramifications on the protections associated with your mark, you may want to consult with an attorney if you receive an Action Letter asking you to disclaim part of your mark.

The USPTO uses the following examples to illustrate when you would need to use a disclaimer:

  • Merely Descriptive Words: Disclaiming “Creamy” from “Famous Mark Creamy Yogurt.”
  • Generic Words: Disclaiming “Yogurt” from “Famous Mark Creamy Yogurt.”
  • Geographic Terms: Disclaiming “Southwest” from “Famous Mark Southwest Guacamole”
  • Informational Words: Disclaiming designations such as size of the product or the year of founding which is usually applicable to registering logos.
  • Well-known Symbols: Disclaiming the “$” for a financial services company.
  • Misspellings from “telescoped words”: Disclaiming “Super” and “Rinse” from “Superinse Cleaner.” Another example is disclaiming “quick” from Jay’s Quik Print.
  • Compressed compound wording: Disclaim “Cool Pack.com” from the brand CoolPack.com because CoolPack is a compressed compound term and .com provides no indication of the source of the goods or services.
  • Foreign wording: If the translation of the foreign word is a generic or descriptive term, the USPTO says you disclaim it. They example they use is disclaiming “Rouge” from “Gala Rouge” for wine because Rouge just means “red” which is descriptive of red wine.
  • Multiple words disclaimer: Some words just go together so the USPTO says they need to be disclaimed together instead of separately. The example they give is disclaiming “Pizza Parlor” from “Pete’s Pizza Parlor.”

What do I need to do to protect my mark after it is registered?

Once properly registered, you will have to file your first Declaration of Continued Use between the 5th and 6th anniversary date of your filing. Your next renewal will fall between the ninth and tenth year. After that, you have to renew the mark every ten years. We will provide you notice of the applicable deadlines and allow you to file the necessary paperwork with just a few clicks of the mouse or with some minor updated information.

At the five year mark, assuming you have continued to use the mark, we will also help you file a “Declaration of Incontestability” giving you the greatest protection under trademark law. This will prevent others from contesting your trademark on grounds often subject to attack such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark someone else began using before you; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.

What is the Supplemental Register?

For the most part, we have been talking about registering your mark on the Principal Register. The Supplemental Register is another alternative. If your mark is descriptive, a surname or a geographic term, then you may have to try and register it on the Supplemental Register. Often times, the USPTO will issue an Office Action suggesting you file on the Supplemental Register instead of the Principal Register.

So, what rights do you have if you file on the Supplemental Register? You can still:

  • Use the ® symbol
  • Put others on notice that you are already using the mark
  • File a trademark infringement suit in federal court
  • Prevent others from obtaining confusingly similar marks from the USPTO - even on the Principal Register.

Unfortunately, you are not the presumed owner of a valid mark if there is a lawsuit. You can’t use a Supplemental Register mark to prevent the importation of counterfeit goods. Finally, regardless of how long you have your mark registered on the Supplemental Register, it will never become incontestable like a mark on the Principal Register can. If your mark obtains secondary meaning, you can refile for acceptance on the Principal Register even if you first filed on the Supplemental Register.

How long does it last?

Unlike copyrights and patents, trademarks can last forever if you take the right steps. Once properly registered, you will have to file your first Declaration of Continued Use between the 5th and 6th anniversary date of your filing. Your next renewal will fall between the ninth and tenth year. After that, you have to renew the mark every ten years. With Trademark Engine’s package, we will provide you notice of the applicable deadlines and allow you to file the necessary paperwork with just a few clicks of the mouse or with some minor updated information.

At the five year mark, assuming you have continued to use the mark, we offer a service that can help you file a “Declaration of Incontestability” giving you the greatest protection under trademark law. This will prevent others from contesting your trademark on grounds often subject to attack such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark that someone else began using before you; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.

What do I do if someone is infringing?

Often a trademark owner will send out a cease and desist letter demanding that the infringing party stop using the mark. Many times, the infringement is not done on purpose and the infringing party will stop when notified that their conduct is in clear violation of another’s rights.

Sometimes, the infringing party will ignore the demand or take the position that they are not infringing. At that point, you may have to consider a trademark infringement lawsuit. To prevail, you would have to prove:

  • You are the owner of a valid mark - which is presumed if you have a federal trademark registration.
  • The other side is using the mark without authority in connection with the sale of goods or services
  • in a manner that is likely to cause confusion to reasonable consumers.

Often a trademark owner will send out a cease and desist letter demanding that the infringing party stop using the mark. Many times, the infringement is not done on purpose and the infringing party will stop when notified that their conduct is in clear violation of another’s rights.

What if the trademark office objects to my application?

The USPTO may object to your application or send you what is referred to as an Office Action or Action Letter. This usually happens because the USPTO determines your requested mark is too similar to one already in existence or your mark is too generic or merely descriptive. You have the right to respond to the trademark office and make your case as to why the initial Office Action is wrong. You may want to hire counsel at that point to help advocate for your position. Other times, the USPTO will object to your application because you may need to disclaim part of the mark or they may suggest you file on the Supplemental Register.

What if I want to make changes to the mark after I filed it?

You can amend your application, but the process and the associated fees that come with it depend on when you try to make changes. If you want to make a change before the trademark has been published in the Official Gazette,you can log into your Trademark Engine account and request that a change be made. Additional fees to Trademark Engine and filing fees to the USPTO may apply.

If you want to make a change once the trademark has been published in the Official Gazette, we can help you file a Post-Publication Amendment.

Depending on the scope of your amendment, you may have to file a new application. For example, amendments that broaden the scope of your description or add international categories may require additional fees and may force you to start over. Clerical errors, on the other hand, are generally easy to do and won’t affect your place in line or require a new application.

Why might my mark get rejected?

The most common basis for rejection is that your name is too similar to a name already registered with the USPTO. It can also be rejected if the name you want to use is too generic or descriptive. In addition to being too similar to another name, the mark may be rejected because it is a surname, it is geographically descriptive of where you are doing business, it is disparaging, it is a foreign term that translates to a generic or descriptive english term, it uses an individual’s name or likeness, or is the title of a single book or movie.

Can I sell, license, or assign my trademark?

Yes, like any other business asset, you can sell, license or assign your trademark. To remain valid, however, someone must continue to use the mark in commerce and you must register your assignment with the USPTO. We can help you with a transfer of the trademark. Sometimes, individuals register the mark before a company is officially set up. Then, once the company is formed, you need to transfer the mark into the company. We can help with that too.

Do I identify software as a good or service?

Software can be both a good and service and if you are selling actual software purchased by customers through a disk or download then your description may be the product description “Computers and Scientific Devices,” but if you are selling SaaS from your website, then your description may be a service of “Science and Technology Services”.

How do I trademark my fashion brand?

Registering your clothing brand can protect you from others selling clothes under your name or logo. Please note, however, the USPTO may not approve an application for clothing if you simply slap a slogan on a t-shirt. You will need to show that the word or phrase you want trademarked is actually a brand name and not an effort to monopolize a slogan (unless that slogan is tied to a product like “Just Do It”). The USPTO will ask for evidence that you are using the words as a brand by asking for the tags or coat hangers with your brand name on it to see if you are really putting a slogan or logo on a Hanes t-shirt. Most brands start with Class 25 for clothing before branching out to areas like jewelry or hand bags which go into different classes and require additional $275 USPTO filing fees.

Can I trademark the title to my book, my characters or other written works?

When it comes to books or other literary works, copyright usually applies. Copyright keeps people from copying your story. It protects the creative work you have written. The purpose of trademark is to identify the source of goods or services. Therefore, trademark does not apply to a single book or story. If you have a series of books, like the Hardy Boys for example, then you may be able to trademark the series so that a consumer knows that the individual book is part of that series. With regard to characters, you can trademark those as it relates to products associated with the books. In other words, you would not be able to trademark your individual story or character unless you were selling related merchandise or services (which includes shows and appearances) related to that story or character.

Can I trademark my given, birth or surname?

Generally speaking trademarking your given name, or even a stage name, is discouraged by the USPTO because the USPTO does not want to see too many people have an exclusive right to use a name. An individual name can be trademarked, however, if the name has garnered a secondary meaning through its connection to a good or service—and obviously, if it belongs to you. Secondary meaning means that it is famous. For example, Cher and Michael Jordan have registered trademark in their names. If your name was John Smith and you are an accountant, you likely won’t be able to trademark that name.

How do I trademark my band name?

The most common question we receive about bands or other musicians is what class should be used? If your budget permits it, you should register in several classes including entertainment services, sound recordings and clothing, but each of those costs $275 in USPTO filing fees, so it may not be an economical option. For those just starting out, you may want to start with entertainment services to protect your mark as it relates to live performances and begin building the fan base. When you start to grow, you can then afford and start thinking about the “merch.” This is the most typical path taken by the musicians you know and love.

By way of example, the Dave Matthews Band did the following registrations in this order:

  • 1993 – Class 41 Entertainment Services
  • 1995 – Class 9 Sound Recordings
  • 1997 – Class 25 Clothing
  • 1997 - Class 16 Posters and other paper goods
  • 1998 – Class 42 Interactive computer services for fan group
  • 1999 – Class 26 Cloth patches
  • 2011 – Class 18 Backpacks
  • 2011 – Class 24 Blankets
  • 2011 – Class 14 Jewelry

Had they done it all at once, the filing fees alone would have cost $2,475 and it is not likely they were selling most of this stuff when they first started off. Unless you file as an intent to use application, you will have to provide a specimen which is proof you are selling the identified goods or services in commerce.

Can I trademark my nonprofit, social media group or social club?

You may be eligible for a trademark for your name, logo, and slogan of your nonprofit or social group even if it is just done through social media. Registering your mark will prohibit others from using it or prevent an unauthorized use that does not align with your social mission or charitable functions. If you have built a community online or offline, we can help you protect it. If, on the other hand, you are merely using social media to sell or promote your other goods or services, you will need to file the proper trademark that relates to those goods or services and not try to describe it as a community built around the goods or services.

Some non-profits get confused by the “use in commerce” requirement, but for non-profits, the equation is a little different. One person, such as a homeless person, may receive the goods or services from the non-profit and the non-profit may receive funds from a different person. This is sufficient, but the USPTO will want you to provide proof of your non-profit status. Social organizations, meanwhile, are using their marks in commerce when there are dues or monies spent on activities.

Some groups have registered under Class 35 (Advertisement and Business Services) as promoting causes; Class 36 for charitable fund raising services, others under Class 41 (Education and Entertainment) as social club services that arrange organize and host social events, get-togethers and parties for members or gather and share information about certain causes.