Trademarks are an important part of protecting your brand and product. You should understand the basics of trademark law, and what the process of filing with the United States Patent and Trademark Office (USPTO) is. This post will give you a high level overview of trademarks and the filing process.
Trademark Law is mainly governed by The Lanham Act. The following excerpt is taken from BitLaw:
BitLaw
“Trademark law governs the use of a device (including a word, phrase, symbol, product shape, or logo) by a manufacturer or merchant to identify its goods and to distinguish those goods from those made or sold by another. Service marks, which are used on services rather than goods, are also governed by ‘Trademark law.’ In the United States, certain common law trademark rights stem merely from the use of a mark. However, to obtain the greatest protection for a mark, it is almost always advisable to register the mark, either with the federal government, if possible, or with a state government. A mark which is registered with federal government should be marked with the ® symbol. Unregistered trademarks should be marked with a “tm”, while unregistered service marks should be marked with a “sm”.
A mark is infringed under U.S. trademark law when another person uses a device (a mark) so as to cause confusion as to the source or sponsorship of the goods or services involved. Multiple parties may use the same mark only where the goods of the parties are not so similar as to cause confusion among consumers. Where a mark is protected only under common law trademark rights, the same marks can be used where there is no geographic overlap in the use of the marks. Federally registered marks have a nation-wide geographic scope, and hence are protected throughout the United States.”
If you’re planning to file a trademark application with the United States Patent and Trademark Office (USPTO), it’s important you understand the process – including what are international classes, why trademark registrations are refused, what is trademark infringement, and what a process of trademark research and filing looks like:
Trademark Classes
Trademark Classes provide information about the type of good or service that the mark you want to register represents.
The USPTO divides marks into 45 different classes – 34 of which are for products, and 11 for services. When you decide to register your trademark, you also select a class, or multiple classes, under which you want to register. It is common for trademarks to be filed under multiple classes that span goods and services. For example, software applications are filed under Class 9 for downloadable software (Computers and Scientific Devices) and Class 42 for Software-as-a-Service (Science and Technology Services).
If there is an existing active trademark with the same (or similar) name under your chosen class – chances are the USPTO will refuse your registration.
Examples of classes of goods include Chemicals (Class 1), Machines (Class 7), Appliances (Class 11), and Vehicles (Class 12).
Examples of classes of services include Science and Technology Services (Class 42), Food Services (Class 43), and Legal and Security Services (Class 45). A complete list of classes are available here.
Chances of Trademark Registration Refusal
There is always a chance that the United States Patent and Trademark Office (USPTO) refuses to grant your trademark. There are a variety of reasons for this:
- Likelihood of Confusion – the most common reason. Basically, this assumes that there is a high probability that the general public will confuse our trademark with someone else’s already existing trademark.
- Merely Descriptive and Deceptively Misdescriptive – A merely descriptive mark is one that identifies a quality, function, or characteristic of a product or service. For example, selling sofa’s under the name “comfy”. A deceptively misdescriptive mark is one that misdescribes a quality, function, or characteristic – basically false advertising like calling a table “real wood” when it is in fact plastic.
- Geographically Descriptive and Geographically Deceptively Misdescriptive – Geographically descriptive means your mark mainly indicates the origin of the product, like “New York Cheesesteaks”. Geographically misdescriptive means it’s falsely claiming the same – like Philadelphia Cheese that’s made in Wisconsin.
- Scandalous, Disparaging, and Immoral – this one is self explanatory – think Washington Redskins. The USPTO cancelled the registration of the “Redskins” mark in 2015, because it was considered disparaging and immoral towards Native Americans.
- Ornamentation – If the applied mark is simply a decoration, like the GAP registering the number “55” in italics for a t-shirt -and claim only they can use this design – then it is likely to be rejected.
- Surname – If the main significance of the mark to consumers is merely a surname, registration will be refused. This means – if the public associates your last name with your mark, as opposed to associating your last name with the product – you will not get the registration. Basically – you would have to establish that consumers in the marketplace view your mark as a reference to your company or product, and not your last name. Think: Kelogg’s, McDonalds, Ford, and Kardashian.
Trademark Infringement
It is important for you to understand the chance of trademark infringement, and what it means. The following excerpt is taken from BitLaw:
BitLaw
The elements for a successful trademark infringement claim have been well established under both federal and state case law. In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant’s use of a mark has created a likelihood-of-confusion about the origin of the defendant’s goods or services. To do this, the plaintiff should first show that it has developed a protectable trademark right in a trademark. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The confusion created can be that the defendant’s products are the same as that of the plaintiff, or that the defendant is somehow associated, affiliated, connected, approved, authorized or sponsored by plaintiff.
General Trademark Research and Filing Process
Most law practices have set processes around researching and filing your trademarks. Here is a general process of how some law firms work:
- You discuss with your attorney with you what names, logos, slogans, etc. you’d like to trademark.
- Your attorney does comprehensive research on existing trademarks – in the federal register, state registers, and in common law – anything that might lead the USPTO to reject your application, or a third party to object to your registration. This is an in-depth research, usually conducted using a third party service.
- Your attorney looks over the research, and drafts you an Opinion Letter – telling you why your application might get rejected, what additional information the USPTO and your Attorney might need, and what your risk level is.
- Based on their opinion, you decide whether you want to move forward with the trademark filing.
- Should you decide to move forward, your attorney will collect information about your trademark including specimen (showing you actually use the mark) and information and the trademark on the USPTO website.
- The USPTO takes about 6 to 9 months to review your applications. In this time, they might contact your attorney with “Office Actions” – which can be an initial refusal of your filing based on one of the reasons stated above. Your attorney will consult with you and respond to these Office Actions. This could be an ongoing process, going back and forth with the USPTO trademark attorney.
- If approved, the USPTO publishes the trademark application in their “Official Gazette” – open to the public, for anyone with a legitimate standing to object to the filing of your trademark.
- If anyone objects, you are effectively in a lawsuit with the other party – and your attorney should work with you to respond.
- If no one objects, Congratulations! You now have the trademark for 10 years.
Costs of Filing a Trademark
The USPTO is transparent about their pricing. Depending on the type of application you are filing, the application fee is between $250 per class. Each additional filing class is $250. This does not include the cost of your Attorneys research and filing process.
Let us help.
Filing a trademark requires research and risk assessments. Let us help you along the process. Contact us today.
This post is not legal advice, and does not establish any attorney client privilege between Law Office of K.S. Kader, PLLC and you, the reader.