We’ve all heard of trademark or trademark rights, and we’ve all seen that cute little ™ symbol hanging around some of our favorite brands’ names and logos. Trademark rights are a form of intellectual property (or “IP”) protection for your brand and logo. This is an essential for many businesses in this digital day and age, where brands are splashed across our phones, tablets, and computers 24/7. But what exactly is a trademark? Great question! (I’m going to pretend like you asked, just go with it.)
A “trademark” is any word, design, slogan, sound, or symbol that serves to identify a specific person or business’s goods or services.
Typically, trademarks are separated into two categories: “word marks” and “logo marks.” Word marks consist simply of the word or words that make up your business name, slogan, or any other identifier of your brand (like “Yellow Co.”). Logo marks, on the other hand, consist of graphic elements, and may or may not include words as well (think the little apple we all have on the back of our iPhones, or the Nike swoosh with the word “Nike” underneath). I’ll refer to both of these collectively as a “mark” throughout the rest of this article.
So How Do I Get Trademark Protection?
While most people believe they need to register their mark in order to gain trademark protection, you actually receive some trademark protection as soon as you use your mark “in commerce,” or in connection with your business, facing the public. This is a concept called “common law” trademark. Cool, right? With common law trademark, you receive protection in the geographic area where you sell your products or provide your services (i.e. where customers or clients recognize your mark). That’s a pretty good reason why you might want to start using your mark as soon as you’ve committed to it, rather than hiding it and waiting for a giant brand launch months down the road.
But a lot of people want more protection than what common law trademark provides, and understandably so! Because it’s specific to your geographic area, you could be selling a product in California under one mark, while another business is doing the exact same thing under the exact same mark in Arizona, and there’s not really a whole lot you can do to get them to stop. Unless you’ve applied for (drumroll please…) statutory trademark!
A “statutory” trademark is like common law trademark’s cooler big sister, because it gets to do way more stuff!
Statutory trademark (1) creates the legal presumption that you own a mark, and that you have the exclusive right to use that mark throughout the entire United States in connection with your goods/services; (2) puts the public on notice that you own the mark, setting a boundary from infringement; (3) gives you the right to sue in federal court about the use of your mark; (4) makes it easier to apply and obtain foreign trademark registrations; and (5) allows you to use the “®” sign in connection with your mark, which is otherwise illegal to use; meaning, if your mark is not registered (AKA you have a common law trademark), you can only use the ™ in connection with your branding.
Those five points are the benefits of statutory trademark in a nutshell (told you it does way more). But how do you gain statutory trademark protection? I’m glad you asked. You’ll have to formally register with the United States Patent and Trademark Office, or “USPTO.” But before you even start your application, you’ll want to do some prep work.
First Step: Determining the Strength of Your Mark
First, start with a viability analysis, which means hiring an attorney. Some people choose to forego this step when money is tight, but I cannot type this loudly enough: DON’T DO THAT. This step is absolutely crucial, because trademark applications are expensive, and you don’t want to waste money on them if your mark isn’t even protectable in the first place; so this could save you a lot of money in the long run. Why might your mark not be protectable? Another fantastic question, you’re on a roll today. Well, in this step, it all comes down to the five categories for the “strength” of your mark.
There are five categories of a mark’s strength used by the USPTO, which form a spectrum from strongest to weakest protection.
They are: Fanciful, Arbitrary, Suggestive, Descriptive, and Generic. Before the USPTO will even look at the rest of your application, it will first determine where your mark fits into this spectrum. If the USPTO determines that your mark is descriptive or generic, they will reject your application. But if they determine that it is fanciful, arbitrary, or suggestive, they’ll move on to see if they can find other reasons to reject your application (because the examiners are kind of unpredictable, tbh.) But that’s not for you to worry about right now, let’s move on to the next step.
Second Step: Conducting A Knockout Search
Next, you’ll want to have your attorney run a preliminary search, or what we call a “knockout search” to make sure there’s not a “confusingly similar” mark in any of the trademark classes you’ll be registering in. Similarity is an important thing to consider, because it’s also something the trademark examiners are analyzing when evaluating your application. There are forty-five broad trademark classes (think of them like categories) and when you apply for trademark, you’ll have to select one (or more) of those classes for your trademark to fall under. If you’re trying to register your mark in a trademark class that already has a similar mark registered within it, this might be where your trademark journey stops. But this is why you’ll want to hire an attorney rather than just Googling on your own; an attorney will be able to give you a realistic idea of whether your mark is confusingly similar and whether or not it’s wise to move forward.
And before we go any further, let me just pause here to give you a practical tip: when you’re planning out your business strategy, it’s always wise to do the knockout search anyway (even if you don’t plan on formally registering) to make sure your mark isn’t already being used by someone else.
This will help you avoid having to re-brand later after you’ve already gotten traction under your original brand.
Third Step: Submitting Your Application!
Once you’ve consulted with your attorney and they’ve given you a thumbs up, you can apply for trademark registration! Like I mentioned earlier, you’ll need to figure out which classes your trademark will fall under when registering. Choose any classes in which the products and service types you’ll be using your mark in connection with will fit. However, note that the USPTO charges application fees per class, so this is where things can really get pricey. Yet another reason why it’s important to work with an attorney; they’ll be able to help you determine which classes you’re most likely to gain registration in if you have to do this process piecemeal.
When you apply, you will need to also provide descriptions (i.e. specific types of products/services) within the classes. After you have chosen your classes and descriptions you can then decide whether you want to submit your application as an “Intent to Use” application, or a regular application claiming “Current Use.” The main difference between the two is that with a Current Use application, you’ll also need to submit evidence (i.e. photos of your mark used on the product/service) supporting all of the descriptions you choose at the time you apply, whereas with the Intent to Use application, you are not required to submit evidence right away.
In other words, an Intent to Use application is essentially like making a reservation for your mark, which is pretty cool.
(Although, side note: this can be a more expensive application in the long run). Once an Intent to Use application is accepted by the USPTO, you will have six months to submit this evidence, but this period can be extended by up to 30 months, if needed.
Office Actions: What You Need To Know
In a perfect world, after you apply for trademark registration, the trademark examiner looks at your application, tears up when they see the good you’re creating in the world, and marks your application with a big ol’ approved stamp and a sparkly scented sticker. But as I said, that’s in a perfect world. In the real world, a lot of trademark applications don’t go as smoothly, and you may be hit with an “Office Action.” Office Actions are basically official notices from the USPTO about your application, and they can be issued for a lot of reasons. Sometimes there can be an outright refusal of your trademark application (which shouldn’t happen if you work with an attorney before filing) or, there can be a request to change something in the application. Either way, when you see an Office Action, don’t panic. You have six months to respond, but you should consult an attorney ASAP, so you can form a plan of action and make sure you have time to execute it correctly and get everything back on track.
Once You Receive Your Trademark, You’ll Have To Work To Keep It
After all that time it took to come up with the concept of your mark, make it a reality, and get it through the registration process, you better take care of that thing like it’s your first born child, because you can actually lose your trademark protection if you don’t.
That’s where trademark monitoring comes in. Trademark monitoring is pretty much what it sounds like, and is a service some attorneys offer (like us, at wilkmazz).
If you don’t actively monitor your mark, it could become diluted, which means your trademark is no longer unique to your product.
When this happens, other people can start using your trademark, without your permission. You know how everybody says Kleenex when they mean tissue? Kind of like that.
Wrapping Things Up
I understand that the trademark process can seem daunting, but know that by reading this article and informing yourself about the trademark process, you’re one step ahead of the game. And if you take anything away from reading this, I hope it’s this: always, always, always consult an attorney before taking the trademark plunge. It will save you time, money, and tears if you do this the correct way from the beginning!
If you have any lingering questions about trademark, feel free to shoot me an email at holler@wilkmazz.com! My team and I are always here to help.