Trademarks are an important part of protecting your brand and product. It is important for you to understand the relevant law of trademarks. Trademark Law is mainly governed by the Lanham Act. The following excerpt is taken from 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.”
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, including but not limited to:
- 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.
It is important for you to understand the chance of trademark infringement, and what it means. The following excerpt is taken from 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 a process around researching and filing your trademarks. We follow the following process:
- We discuss with you what names, logos, etc. you’d like to trademark.
- We sign an engagement letter, and make our attorney-client relationship official.
- We collect payment and begin our research.
- We research existing trademarks – federal, state, and common law (called US Comprehensive) – anything that might lead the USPTO to reject your application to file a trademark. This is an in-depth search conducted by a third party, and usually takes 3-4 business days. The cost of this research is included in our fees.
- Kader Law looks over the research, and send you an opinion letter within 2-3 business days – telling you why your application might get rejected, what additional information we might need, and what your risk level is.
- Based on our opinion, should you choose to move forward – we send you a form to fill out with details for your company and trademark – names, logos, etc. You fill out the form to the best of your ability.
- Once you fill out the form, we’ll follow up with you with any additional material we might need to file the trademark.
- We file the trademark.
- The USPTO takes about 6 months to review your applications. In this time, they might contact me with “Office Actions” – which are requests for additional information or proof. We respond to these office actions, but we may need information from you. These responses are included in our fee.
- 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, we respond. If no one objects, Congratulations! You now have the trademark for 10 years.
It is important that you understand the risk scale we employ with our opinion accompanying your trademark research.
- Normal Business Risk – Likely to be registered without obstacles or objections at Common Law.
- Intermediate Business Risk – Likely to be cited at USPTO and/or objections at Common law. There are persuasive arguments to be used to distinguish the objections.
- High Business Risk – Third parties, both at the USPTO and Common Law will object. We can argue, but our arguments are not likely to be successful. For exact matches or marks with dead on hits, we caution against proceeding further and filing.
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 $225 to $275 per application. There could be an additional $125 per additional filing class (such as – if you’re filing as a butcher, and a restaurant – these are two separate filing classes. Butcher is included in your application fee, restaurant would be an additional $125 ). This price does not include attorneys or research fees.
Let us help.
Filing a trademark requires research and risk assessments. Let us help you along the process. Contact us today.
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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.