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Trademark Engine is not a law firm and none of the information on this website constitutes or is intended to convey legal advice. General information about the law is not the same as advice about the application of the law in a particular factual or legal situation. Individual facts and circumstances as well as legal principles including but not limited to the ones referenced on this website can affect the outcome of any given situation. Trademark Engine cannot and does not guarantee that an application will be approved by the USPTO, that a mark will be protected from infringement under common US trademark law, or that any ensuing litigation or dispute will lead to a favorable outcome. If you want or have an interest in obtaining legal advice with respect to a specific situation or set of circumstances, you should consult with the lawyer of your choice.
A trademark generally protects a word, phrase, symbol and/or design that distinguishes the source of the goods -- what we think of as brand name and brand recognition. A patent generally protects an invention, including the functionality or design, or in other words, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. A patent typically 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, generally protect artistic works such as books, photographs, arts, movies and music.
Under U.S. law, a “common law trademark” is generally established when someone uses a company name, logo or slogan in commerce, even if it is not registered. So, why pay to register a trademark when a common law trademark may already exist? Common law rights ordinarily are limited to the geographic area where the mark is used as opposed to the nationwide protection customarily obtained when a mark is registered with the USPTO. So, unless registered, the use of a mark can be geographically limited, which hampers the ability to expand the brand. On the other hand, a person using a mark in a limited geographic area could be boxed in by someone else who offensively registers a similar mark. In addition, registration of a trademark can give the person holding the registered trademark a leg up in court as to the validity of the mark and the date of usage in later trademark infringement litigation, if it comes to that. There are also favorable remedies available to registered trademark owners in the event of litigation. Finally, once a trademark is accepted by the USPTO, it will be maintained in the USPTO database, which can discourage others from using the mark in the future. Future companies should be on notice that the mark is already spoken for, which should in turn help avoid at least some disputes.
The United State Patent and Trademark Office will not necessarily approve every name for a trademark. The USPTO generally describes names as “generic,” “descriptive,” “suggestive,” “arbitrary,” or “fanciful.” A trademark application is more likely to be registered by the USPTO the less “generic” or more “fanciful” it is.
Generic names are rarely given protection. For example, a company that makes screwdrivers and tries to trademark the name “The Screwdriver Company” is unlikely to be successful. Merely descriptive names are also unlikely to receive registrations from the USPTO. For instance, “The Metal Screwdriver Company” is not likely to pass muster because it merely describes a screwdriver as being made of metal.
Ordinarily, descriptive marks are entitled to trademark protection, but only if they have gained what has been termed “secondary meaning.” In other words, the name has become so famous that despite the generic nature, the public associates the product with a specific company. One example is International Business Machines or IBM. Fledgling companies generally are not well known enough to have attained a secondary meaning. Generic names generally do not attain secondary meaning, so are unlikely to be registered by the USPTO.
The chances of approval normally improve with suggestive marks, which often hint at the quality or another aspect of the company. For example, “Herculean Screwdriver Company” may be more likely to be registered by the USPTO than “Strong Screwdriver,” but conveys a similar meaning. However, the line between a suggestive mark and a descriptive one is difficult to draw. Microsoft, which makes software for microcomputers, and Citibank, which provides financial services, are some well-known examples of suggestive marks. Brand owners often like these names because it gives the consumer a good idea of what the company does without the need for additional (and often expensive) education or advertising to disseminate the name for the particular product or service.
Next on the list are arbitrary marks. These are usually 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 ordinarily the easiest marks to be approved. A fanciful mark may be 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. Some examples of fanciful marks are Yahoo!, Google, Exxon and Spotify.
Other common reasons the USPTO may reject names can include the following:
The whole process will usually take anywhere from 5 to 10 minutes on the Trademark Engine website. For a typical application, be prepared to provide at least the following:
Trademarks are normally used to register a name, logo or slogan related to the sale of goods.
Service marks are often used to register a name, logo or slogan related to the sale of services.
Intent to Use applications can be useful for a future mark that is not yet used to sell goods or services. Such applications can serve to establish a company’s place in line on the date of filing as opposed to the date the mark is actually used to begin selling goods or services. Goods and services bearing the mark usually need to be sold to hold the company’s place in line and validate its application, and then update the USPTO. Under those circumstances, the company may consider filing a Statement of Use, which can be done through a customized portal on Trademark Engine, and generally should be done within six months of the registering an Intent to Use trademark. Up to five additional six-month extensions may be available on request and if good cause is demonstrated.
It may be more time efficient and cost effective to do a quick search before registering a trademark. A search may help avoid obvious duplications of pre-existing marks and the expenditure of nonrefundable applications fees.
Newer companies may more easily make name changes while they are getting off the ground than years later and after substantial investment in a brand and associated goodwill.
Running searches with the USPTO does not guarantee superior rights to a particular mark. There could be someone already using a similar mark, but who did not register it with the USPTO. In that case, a registration could be subject to challenge by the owner of the earlier-used mark based on of common law trademark rights.
Use-based trademarks are commonly filed by companies already selling products and services using the mark. When the mark is not in use yet (e.g., prior to forming the company or selling finished product), an “intent-to-use” application may be more appropriate. An intent to use application can be understood as establishing a place in line to use the mark. Extensions, filed every six months (for up to a total of three years) are routinely a means to maintain that place in line. Once goods or services are sold with the mark, filing a “statement of use” with a specimen showing the mark as used in connection with the described goods or services customarily completes the trademark registration and protection. Both filings may be done using Trademark Engine’s custom and proprietary portal.
There may be advantages to registering both a name and an associated logo. But bear in mind, each filing requires its own government filing fees and processing fees to Trademark Engine so registering both costs more than $600.
A more budget-friendly option could involve registering just a company name. Wrongful use of names seems to be more common than wrongful use of logos. Trademarking a name generally provides broader protection because it prevents any use of the name that causes confusion, even if someone tries to use the name within a unique logo.
A mark for a logo typically protects the shape, orientation, stylization and sometimes color in that particular logo. Registering ordinarily prevents others from using that logo or something confusingly similar to the logo. Even if a company name is in the logo, registering the logo may only protect the use of that name in the particular way it is used in the logo and not the use of the name more generally. Moreover, amended or redesigned logos usually require a new application for the new logo. As may be expected, logo changes seem to be more common than name changes.
Most states allow incorporation with a chosen name as long as it does not conflict with another name also registered with that state. For instance, ACME Co. may be available in Texas, but there could be an ACME Co. in New York that has already registered that trademark and under trademark law has the exclusive right to use that name throughout the United States. Name conflicts that may arise when forming a business within a state are generally determined by a different analysis than name conflicts that may arise with trademarks.
While actually using a name to sell a product or service may provide common law trademark rights, being allowed to use a company name or a d/b/a does not typically provide any trademark rights. Registering a trademark with the United States Patent and Trademark Office is generally better than relying upon common law rights and the mere fact that a given state allows the use of a certain name.
Conversely, the availability of a trademark with the USPTO is not a guarantee that a given state will permit the use of that corporate name. The USPTO generally does not search individual state or d/b/a filings. But, Trademark Engine’s comprehensive search reports cover both the USPTO, state and d/b/a filings as well other sources to help determine the availability of a desired brand.
There are a number of different categories (also known as an International Classes) that can be used to identify particular goods or services. The USPTO has developed a pre-determined list of trademark categories from which to choose. It may be helpful to register a mark within multiple classes (such as the name of company and the ability to sell t-shirts with the company name on it). Bear in mind that 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, it may be helpful to decide if you are selling a good or a service. Goods are generally physical items like nuts, bolts, beer and t-shirts. Services generally focus on particular activities such as legal, consulting or accounting services. In some circumstances, it may be helpful to register under multiple classes.
The selection is important because a registered trademark generally protects only the category listed in the application. Broader categories may provide more protection, but if the category does not accurately fit the applied for good or service, the registration could be invalidated. Also, changing the class designation can be difficult and require an additional filing fee.
Bear in mind that a company name and particular product names may each be trademarked separately and may each involve different categories. Each registration would require the payment of additional fees to the USPTO and to the Trademark Engine.
Tips for Picking the Right category
The trademark application includes a space for a description of goods and services. The description is usually at least two words but generally not more than a sentence that describes the goods or services.
Writing a description of use is sort of a Goldilocks and the Three Bears exercise. Too broad, and the application may get rejected if the USPTO thinks it infringes on another trademark when it really doesn’t. Too narrow, and the application may not reach the full range of a business’s offerings. The “just right” description of use typically meets the following criteria:
Much like how the availability of a corporate name in a given state does not necessarily provide 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 offers, to help evaluate the strength of a brand name or slogan and the likelihood of a trademark being approved.Using a domain name as part of a brand that sells goods or services may establish common law trademark rights. A “common law” trademark can be established when a name, logo or slogan is used in commerce, even if it is not registered. Common law rights, however, are limited to the geographic area where the mark is actually used as opposed to the nationwide protection typically established by registration of a mark with the USPTO.
The geographic limitations of an unregistered mark can make it difficult to expand a business. On the other hand, a person using a mark in a limited geographic area could be boxed in by someone else who offensively registers a similar mark. In addition, registration of a trademark customarily gives the person holding the registered trademark a leg up in court as to the validity of the mark and the date of usage in later trademark infringement litigation, if it comes to that. There are also favorable remedies available to registered trademark owners in the event of litigation. Finally, once a trademark is accepted by the USPTO, it should be maintained in the USPTO database, which can discourage others from using the mark in the future. Future companies should be on notice that the mark is already spoken for, which should in turn help avoid at least some disputes.
General benefits to registering a mark:
A trademark registration for a company name may also protect the company’s web address when it encompasses the company name followed by “.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. An online business that commonly refer to itself by the name of the website may want to only register the domain name.
Even without registering the domain name as a separate mark, a registered trademark can help prevent cybersquatting and or the use of confusingly similar domain names. In the United States, the Anti-Cyber Squatting Consumer Protection Act and the Uniform Domain Name Dispute Resolution Process may provide additional rights and remedies to holders of registered trademarks.
If investing heavily in a marketing campaign with a slogan, a company might consider registering a slogan as well. Short catch phrases or sayings that are sold as part of merchandise (like shirts or hats) can also be registered. The same rules apply that are applicable to picking and registering a company name. Namely, the slogan should be inherently distinctive and creative or have developed a secondary meaning. In other words, “really good pizza” probably can’t be trademarked unless that saying has become so famous that most consumers associate it with a certain pizza brand.
The United States Patent and Trademark Office (USPTO) assesses a fee of $350 per class, per application. This is charged regardless of whether the applicant files on their own, uses an attorney, or files with an automated service such as Trademark Engine. This fee is collected by Trademark Engine after a basic direct-hit search has been performed on the applicant’s mark, then remitted to the USPTO once the application is signed and filed.
After an application is filed, the USPTO states 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 any issues with the application, they may issue a letter, which is referred to as an “Office Action.” At that point, there are two options: respond to the USPTO or abandon the application. Consider consulting 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 the application, there is an appeal process with the Trademark Trial and Appeal Board (commonly referred to as the TTAB). Challenges by a third party to trademarks are also reviewed by TTAB. TTAB proceedings are very similar to a trial in court, and have complicated procedural rules that even non-lawyers are expected to follow. If you find yourself involved in a TTAB proceeding, you should hire an attorney.
A mark is often (but not always) a group of words with one or more of them describing the product (e.g., tires) or it may be merely descriptive (e.g., great). While it may be appropriate to register the mark as a whole, the USPTO may question an attempt to claim some of the individual product or descriptive terms. Thus, some companies decide to disclaim those words without giving up on registering the mark as a whole or the USPTO may ask an applicant to do so after the fact.
The disclaimer does not remove the unregistrable part of a mark or affect its appearance. A disclaimer appears on the USPTO database that lets the world know the company is not making an exclusive claim to that particular part of the mark. Failure to disclaim part of a mark may be cause for rejection. Often times (but not always), the USPTO can issue an Action Letter seeking to disclaim the unregistrable parts of a mark, which may delay the application. At this point, there are generally two options: agree with the USPTO or decide to fight the request to disclaim. Because it may have significant legal ramifications on the protections associated with the mark, consider consulting with an attorney after receiving an Action Letter with a request to disclaim part of a mark.
The USPTO has published the following examples to illustrate when a disclaimer is likely required:
Once properly registered, trademarks generally need to be renewed by filing a Declaration of Continued Use. The first Declaration of Continued Use is usually due between the 5th and 6th anniversary date of the filing. The next renewal usually falls between the ninth and tenth year. Thereafter renewals are generally every ten years. Trademark Engine provides notice of the applicable deadlines and allows filing of the necessary paperwork via its personalized portal with just a few clicks of the mouse or with some minor updated information.
At the five year mark, assuming continued use of the mark, we can also help file a “Declaration of Incontestability,” which provides additional protection under trademark law. This may prevent others from contesting the trademark on several common grounds, such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark someone else began using first; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.
For the most part, we have been talking about registering a mark on the Principal Register. The Supplemental Register is another option. If a mark is descriptive, a surname or a geographic term, then it may need to be registered on the Supplemental Register. Often times, the USPTO will issue an Office Action suggesting filing on the Supplemental Register instead of the Principal Register.
So, what are the protections for trademarks on the Supplemental Register? Marks on the Supplemental Register generally can still:
Unfortunately, the registrant is generally not the presumed owner of a valid mark if there is a lawsuit. A Supplemental Register mark usually cannot be used to prevent the importation of counterfeit goods. Finally, Supplemental Register marks are typically not eligible to become incontestable like a mark on the Principal Register can. However, if the mark obtains secondary meaning, the mark can be refiled for acceptance on the Principal Register even if the mark is first filed on the Supplemental Register.
Unlike copyrights and patents, trademarks can last forever under certain circumstances. Once properly registered, trademarks generally need to be renewed by filing a Declaration of Continued Use between the 5th and 6th anniversary date of the filing and again between the ninth and tenth year. After that, renewal is every ten years. Trademark Engine provides notice of the applicable deadlines and allows filing of the necessary paperwork through its personalized portal with just a few clicks of the mouse or with some minor updated information.
At the five-year mark, assuming continued to use the mark, we can also help file a “Declaration of Incontestability,” which provides additional protection under trademark law. This may prevent others from contesting the trademark on several common grounds, such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark someone else began using first; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.
Often a trademark owner will send a cease and desist letter demanding that the infringing party stop using the mark. The infringement may not be on purpose and the infringing party may stop when notified that their conduct is in clear violation of another’s rights.
The infringing party may also ignore the demand or take the position that they are not infringing. At that point, you may consider a trademark infringement lawsuit. You should talk with an attorney if you believe a lawsuit might be the right choice for you.
Successful lawsuits have common characteristics and you should discuss with a lawyer whether any of these are present in your situation:
The USPTO may object to the application or send what is referred to as an Office Action or Action Letter. This can happen for a variety of reasons, including because the USPTO determines the requested mark is too similar to one already in existence or the mark is too generic or merely descriptive. Applications have the right to respond to the trademark office and make the case as to why the initial Office Action is wrong. Consider hiring counsel at that point to help advocate for the trademark. Other times, the USPTO will object to an application until the applicant disclaims part of the mark or files on the Supplemental Register.
It is possible to amend an application, but the process and the associated fees generally depend on the timing of the changes. Changes before the trademark has been published in the Official Gazette can be made by logging into your Trademark Engine account and requesting that a change be made. Additional fees to Trademark Engine and filing fees to the USPTO may apply.
Changes once the trademark has been published in the Official Gazette generally require a Post-Publication Amendment, which Trademark Engine can assist with.
Depending on the scope of the amendment, an applicant may need to file a new application instead. For example, amendments that broaden the scope of a description or add international categories may require additional fees and may require a new application. Clerical errors, on the other hand, are generally easy to fix and typically won’t affect the applicant’s place in line or require a new application.
A common basis for rejection is that the mark’s name is too similar to a name already registered with the USPTO. It can also be rejected if the name is too generic or descriptive. The mark may also be rejected because it is a surname, it is geographically descriptive of the location of the business, 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.
Yes, like any other business asset, a trademark can be sold, licensed or assigned. Validity requirements generally still apply, so someone usually needs to continue to use the mark in commerce and it is helpful to register assignments with the USPTO. If you enter into such an agreement, we can help with a transfer of the trademark with the PTO. Sometimes, individuals register the mark before a company is officially set up. Then, once the company is formed, the mark needs to be transferred into the company.
According to the USPTO, software can be both a good and service, and if a company is selling actual software purchased by customers through a disk or download then the description may be the product description “Computers and Scientific Devices.” If a company is selling SaaS from a website, then the description may be a service of “Science and Technology Services.”
Registering a clothing brand may protect it from others selling clothes under the same name or logo. The USPTO, however, may not approve an application for clothing that is simply a slogan slapped on a t-shirt. Ordinarily, the word or phrase should actually be 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 usually asks for evidence that the words are being used as a brand by asking for the tags or coat hangers with the brand name on it. Fashion brands may start with Class 25 for clothing before branching out to areas like jewelry or handbags, which go into different classes and require additional $350 USPTO filing fees.
When it comes to books or other literary works, copyright usually applies instead of trademark. Copyright generally keeps people from copying a story. It protects the creative, written work. A trademark ordinarily identifies the source of goods or services. Therefore, trademark does not apply to a single book or story. A series of books, like the Hardy Boys for example, may be trademarked so that a consumer knows that the individual book is part of that series. Characters can be trademarked as it relates to products associated with the books. In other words, before trademarking an individual story or character, there needs to be merchandise or services (which includes shows and appearances) related to that story or character.
Generally, the USPTO discourages trademarking a given name, or even a stage name, to prevent the exclusive right to use a name. An individual name may 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 the person seeking the trademark. Secondary meaning means that it is famous. For example, Cher and Michael Jordan have registered trademark in their names. But John Smith, who works as an accountant, likely won’t be able to trademark that name.
The most common question we receive about bands or other musicians is what class should be used? If the budget permits it, many bands will register in several classes, including entertainment services, sound recordings and clothing. Each of those costs $350 in USPTO filing fees, so it may not be an economical option. For those just starting out, consider registering entertainment services to try and protect the mark as it relates to live performances and begin building the fan base. As a band grows, it can then afford to start thinking about the “merch.” This seems to be the most typical path taken by musicians.
By way of example, the Dave Matthews Band did the following registrations in this order:
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. The USPTO generally requires a specimen, which is proof a company is selling the identified goods or services in commerce, unless an intent to use application is used instead.
The name, logo, and slogan of a nonprofit or social group (even if it is just done through social media) may be eligible for a trademark. Registering the mark generally prohibits others from using it or prevent an unauthorized use that does not align with the social mission or charitable functions of the nonprofit. An online or offline community generally can be protected by a trademark. However, the use of social media to sell or promote other goods or services is generally not a mark that can be registered. Instead, filing the proper trademark that relates to those goods or services and not trying to describe it as a community built around the goods or services has worked for some.
Some non-profits get confused by the “use in commerce” requirement. 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 generally considered sufficient to satisfy the “use in commerce” requirement, but the USPTO will want proof of non-profit status. Social organizations, meanwhile, typically use 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.