Trademark registration is a complex process, and so it’s no surprise that businesses (in Seattle and elsewhere) often have questions for their trademark attorney. Because many of these questions come up repeatedly, I’ve compiled a list of answers to the most common questions I get, along with links to other helpful content, to serve as a quick reference for businesses.
Frequently Asked Questions
Do I Need To Register My Trademark?
You don’t have to register a trademark in order to use it or to have the right to prevent others from using it. But there are substantial benefits to registering a trademark, which is why it’s usually a good thing to do. Having a registered trademark helps to deter others from unauthorized use of your trademark and, failing that, makes it easier for you to enforce your rights.
Related: Do I Need To Register My Trademark?
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Can I Register A Trademark Myself?
You can register a trademark on your own or with the help of an attorney. Keep in mind that trademark registration is a highly technical process and even minor mistakes can result in lengthy delays or outright refusal to register your trademark. So while you may be reluctant to pay a trademark application lawyer to help you register your trademark, it’s worth remembering that the cost of having an application rejected and having to start over will almost always exceed the fee you’d pay an attorney.
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How Do I Check If A Name Is Trademarked?
Search the USPTO’s trademark database (“TESS”). Remember, though, that crafting the right kind of search to capture all the relevant information is not an easy task. And even assuming you capture all the relevant results, there is often lots of subjectivity in determining whether there’s a likelihood of confusion between your mark and similar marks—a common basis for the USPTO to refuse registration.
This is where trademark search lawyers earn their fee. They can provide you with an informed opinion on whether existing mark(s) could prevent you from successfully registering your mark. In turn, you can make an informed decision on whether to pursue registration or to focus on building up brand equity under a different mark.
Related: Trademark Search & Clearance
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How Do I Apply For A Trademark?
To apply for federal registration of a trademark, you use the USPTO’s Trademark Electronic Application System (“TEAS”). Before submitting an application, you should make sure that the trademark is eligible for registration and not already being used by a competitor. A trademark attorney can help you do this by performing a trademark clearance search. Then you’re ready to submit an application.
Related: How To Register A Trademark [Step-by-Step]
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How Much Does It Cost To Register A Trademark In The US?
It typically costs either $225 or $275 to register a trademark in one class of goods and services in the US (note: this will increase to either $250 or $350 per class Jan. 2, 2021). That means the total cost of registration varies depending on the number of classes of goods and services in which you register. There are 45 different classes of goods and services. If your company sells only one product or service, you may only need to register in one class. But if you provide an array of products and services, you may need to file in a number of different classes, which will increase the filing fees you’ll have to pay.
Do I Need To Trademark My Business Name?
You don’t have to, but it’s probably a good idea. For most businesses, their name is the core feature of their brand, which is often one of the more valuable assets the business has. If the business wants to maintain its market share, raise outside investment, get acquired, or do any number of other things to grow of profit, it has a much better chance of doing so with a strong brand. And trademark registration of the company name is the foundation of a strong brand.
Related: 4 Tips For Picking A Company Name
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Do I Need To Trademark My Logo?
Registering your company name (known as a “standard character mark”) provides protection for the name, but it doesn’t extend to your logo, even if it’s used together with the company name. So if you want the same protection to extend to your logo, then you do need to register the logo (known as a “design mark”) separately from your company name. Keep in mind also that some logos will qualify for not only trademark, but also copyright protection.
Related: Trademark Registration: Name Or Logo?
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Can I Trademark A Similar Name?
Whether you can trademark a name that’s similar to another company depends on whether consumers would likely be confused. The fact that another company is using and/or has registered a trademark that’s similar to your own certainly presents risks of you seeking to use and register your trademark. But it’s much less risky if the goods or services you provide are different from the other company. For example, if the other company sells flowers to consumers while your company provides web hosting services to businesses, there’s little risk that consumers would be confused by the similarity between the marks.
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Can I Trademark My Name?
Unless your personal name is associated with providing goods or services to the public and has acquired “secondary meaning” it isn’t entitled to trademark protection or registration. Secondary meaning is essentially a certain level of fame or recognition. McDonald’s, for instance, has acquired secondary meaning for fast food. Famous musicians, authors, athletes, etc., are also often able to register their names as trademarks. But the average person won’t be able to do this.
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What Is An Intent To Use Trademark Application?
An “intent to use” application to register a trademark should be submitted when your company hasn’t yet used the trademark in commerce but intends to do so in the near future. If an intent to use application is approved, then you will have six months from the date it’s approved to use the mark in commerce and submit proof to the USPTO that the mark is being used. Failure to do this will result in the application being abandoned unless you obtain an extension of time to submit proof of use.
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What Is A Trademark Office Action?
A trademark office action is an official letter from the USPTO listing any legal problems with the trademark application. Office actions are either “nonfinal,” in which case it raises a legal problem with your application for the first time, or “final,” in which case it raises a legal problem with your application for the last time. Typically, you must respond to an office action within six months, though some types have shorter deadlines. You should always read your office action to ensure you file a timely response.
Related: Responding To A Trademark Office Action
Related: Dealing With A Geographic Descriptiveness Objection To Your Trademark Application
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How Long Does It Take To Register A Trademark?
It often takes around one year for a trademark to be registered once an application has been submitted. But it can take considerably longer if there are substantive objections from the examining attorney (known as “office actions”) that must be responded to or if the application is unusually complex.
How Long Does A Trademark Last?
Trademark rights last indefinitely, provided that you continue to use the trademark and the mark doesn’t become generic. Trademark registration, on the other hand, lasts for 10 years. You must renew your registration every 10 years or else it will be cancelled. You also need to file a statement every six years with the USPTO verifying that the trademark is still in use or your registration will be cancelled.
Although trademark registration lasts only 10 years, you own and have rights in a trademark as long as you continue to use it in commerce. So even if your trademark is no longer registered, you don’t lose your rights to it, just the additional benefits that flow from registration. But if you stop using the trademark, you will lose your rights in it, even if it’s registered.
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Can I Use The ™ Symbol?
The “™” symbol, as you may have guessed, stands for “trademark.” This symbol may be used for trademarks that are not registered, though it isn’t necessary to use the ™ symbol in order to protect your trademark.
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Can I Use The ® Symbol?
If your trademark has been registered, then you can (and should) use the symbol “®” next to your trademark, which signifies a trademark that’s been federally registered. Only use the ® symbol once registration is granted.
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