Have You Trademarked Yet?

Trademarks….  why are they important?  why do you even want to do this? what does it take to make it happen?

As many of you know, I spend a substantial amount of time in my private practice working with entrepreneurs and small business owners.  Most of my clients are first generation owners of their businesses, people who have created this living, breathing thing that supports them, their families, and their employees all out of their own ideas, blood, sweat and tears.

They are fantastic.  They are both dreamers and doers. It is a privilege and an honor to be a small part of helping them create dreams into reality.

What are trademarks?

Trademarks are an important part of their business’s legal backbone.  There are foundational things — like setting up an LLC or corporation, obtaining a Tax ID Number and a business bank account.  There are also basic protections — like creating a contract or terms of service for use with your customers and clients.  Trademarks ultimately protect all of that.

A trademark establishes ownership of the intellectual property in your business with the U.S. Government, and protects you throughout the entire United States.  You can trademark such thins as your actual business name, your logo, your product name(s), and your tag line.  These are the things you use to brand your business and make it known to others.

Why do you need to trademark anything?

And what if, after you spent all of the time, the blood, the sweat, the tears, and the money, establishing this brand, someone swooped in and told you you couldn’t use it anymore — because they hold a trademark on it?

Think it’s crazy?  That it can’t happen to you?

Unfortunately, I’ve had clients who have been forced to rebrand completely due to trademark clients.  And fortunately, I’ve had clients who filed for their trademark early in their business and are now able to tell other people to stop stepping on their brand — and have some legal teeth when they do it.

What is the process?

Like many things, the trademark process is deceptively simple.  It looks like you just file an application and poof! you have a registration.  Ultimately though, the process looks more like this:

  1. Do a preliminary search.  Before spending the time and the money on a trademark application, you want to search to see if someone else has already filed for a trademark on it.  You start with the USPTO database itself as a basic search.  A more comprehensive search includes a search of U.S. Business names — i.e. checking the secretary of state business registrations and state trademark registrations for potential conflicts.  A search of google and social media sites is also recommended to make sure you know what is out there.
  2. Determine your “class.” A trademark application can be filed in any of 45+ classes that denote the primary industry in which you use your mark.  You can file a mark in more than one class — such as Class 41 for entertainment services for a holistic health podcast, podcast and Class 44 for Holistic Health services.
  3. Prepare the application.  Not only does the application require basic information about you and your business, it also needs examples of how you use the mark and when you first started using it.
  4. Pay the filing fees.  There is a filing fee of $275 per class for online filing.
  5. Wait.  The application is reviewed by an attorney with the USPTO.  Ordinarily it can take 3-4 months for the application to be reviewed.  However, while your application is “pending” it does still show up in searches as evidence of your prior claim on the mark.
  6. Respond to any Office Actions.  If the examining attorney has any issues with the application — from a description of the colors in the logo, to a tweak in the description of services — to something more complicated like a potential conflict with another mark — then you must file a response to the office action.
  7. Publication.  After any issues raised by the examining attorney have been resolved, the mark is sent for “publication.” During this time, others can file “opposition” to your mark — essentially stating that they have a prior claim to the mark. It is key to note that you also can file opposition to other people’s marks in this stage if you feel someone else’s mark is violating your intellectual property rights.
  8. Opposition.  If opposition is filed, you will need to file a response in front of the Trademark Appellate Board.  You have approximately 45 days to file this response.  There is an entire full legal procedure if the dispute over use of the mark continues that can end in a trial in front of the board to determine who has the superior claim to the mark.
  9. Registration.  If there is no opposition, or if the opposition is resolved in your favor, your mark formally registers.  At this point, you are the undisputed owner of the mark and have rights under U.S. law to enforce your trademark rights and prevent others from encroaching on your mark and utilizing your intellectual property.
  10. Maintenance. Every 5 years, an updated statement of use needs filed to show continued use of the mark.

So if I’m not using it yet, but I’m thinking about it, can I file a trademark application?

Yes.  You can file a preemptive application under 1(B) as “Intent to Use.”  In this case, your application would be reviewed and your mark published.  However, prior to formal registration you would have to provide evidence of use of the mark. There are additional fees associated with this additional filing.  It is also possible to have several responsive office actions at this point, largely to conform your actual use of the mark to the description of use you alleged in your initial application.  For example — you couldn’t file the application under “t-shirts” and then submit “coffee mugs” as your example of use of the mark.

How can we help?

KJD Legal is available to assist with all of your trademark needs, whether we start from the beginning with the search, or step in along the way.

Have any questions? Contact Kathy directly at kathy@kjdlegal.com.

2020-01-13T12:31:16+00:00By |

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