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Trademark Resource Center

General Information

 

 

Business Entity Information

 

 

LLCs Vs. Trademarks

 

 

Federal Trademark Vs. State Trademark

 

 

Searching and Clearing a Trademark

 

 

Filing and Prosecuting a Trademark Application

 

 

Responding To An Office Action

 

 

Post-Registration

 

Trademark Basics

  • A trademark is a recognizable name, slogan, or logo that identifies the source of your products and distinguishes them from the products of other companies.
  • A trademark protects brand names, slogans, or logos that function to identify the particular source of goods or services offered. A copyright protects expressive arts such as art, novels, paintings, music, photography, software, films, or other created work. A patent protects an embodiment of a new idea, not the idea itself, like new inventions, processes, or scientific creations, such as gadgets and medicines. 
  • A domain name cannot be protected as a trademark merely because it is your address on the Internet. This web address may be the same as your company name, or may not be. Either way, you may be looking for ways to protect your domain name as part of your brand – and trademarking your Internet domain is one way of doing so. The benefit of trademarking your domain name is that you can potentially protect against the unauthorized use of similar web addresses which are being used in connection with goods or services similar to yours, and in a manner that is likely to cause confusion with your business. So, if someone is using a domain name that is similar to yours and the similarity would likely cause confusion, you may be able to sue for infringement or pursue a remedy under the Anti-Cybersquatting Consumer Protection Act (ACCPA). In addition to using the name in commerce, it must be used in a way that distinguishes your goods or services from those of others. The web address without the www. Or .com should be unique. Web domains that use surnames, geographic areas or common “descriptive” terms are generally not trademarkable. For example, Coffee.com or Arizona.com would likely not receive trademark protection. 
  • The purpose of trademark registration is to give the owner of a trademark the legal right to use that trademark to identify their goods or services and to prevent others from using a confusingly similar trademark.
  • The time it takes to register a trademark can vary depending on the country or region in which you are registering, but it generally takes several months to a year to register a trademark.
  • The length of time a trademark registration lasts can vary depending on the country or region, but it typically lasts for 10-15 years.
  • Yes, you can register a trademark for your business name. However, it is important to note that a business name does not automatically have trademark protection, and it must be registered as a trademark to have legal protection.
  • If someone else uses your trademark without your permission, it is considered trademark infringement. You can take legal action to stop the infringement and seek damages for any harm caused by the infringement.
  • Yes, you can register a trademark for a logo. Logos can be a very powerful way to create a strong brand identity and help customers easily recognize your products or services.
  • Yes, you can register a trademark for a slogan. Slogans can be a great way to create a memorable message that represents your brand and helps customers remember your products or services.
  • While it is not required to have a lawyer to register a trademark, it is highly recommended, as the process can be complex and the assistance of a lawyer can help ensure that the trademark application is properly prepared and submitted.
  • You can search for existing trademarks by using the database of the relevant trademark office or by using online trademark search tools. It is important to search for similar trademarks before registering your own, as it can help to avoid any potential issues with infringement.

Filing a Trademark Application

  • Yes, it is possible to apply for registration of a trademark when the trademark has not yet been used in commerce by filing what is called an intent-to-use application. As implied in its name, an intent-to-use trademark application allows an applicant to file an application to register a trademark before the applicant has made any sales of its products or services in the marketplace.
  • An intent-to-use application will require additional filings and costs. After the initial filing, you must eventually show usage of the trademark in connection with the goods or services identified in the application. The deadline for submitting evidence of trademark usage, including a signed declaration, is 6 months from the date of the Notice of Allowance issued by the United States Patent and Trademark Office (USPTO).
  • You may request up to five 6-month extensions of time for a total of 3 years from the Notice of Allowance date to use the trademark in commerce. You must file the first extension request within 6 months after the USPTO issues the Notice of Allowance.
  • At our firm the cost to prepare and file evidence of trademark usage along with the designed declaration is $350 dollars in legal fees and a $100 in per-class government filing fee. 
  • The general rule is that an applicant cannot transfer an intent-to-use application to another entity before the applicant submits evidence of use to the USPTO. So, we recommend filing an intent-to-use application under the name of the company under which you intend to sell the identified goods or services, and not under the name of any individual. The exception to this rule is that an intent-to-use application may be assigned, prior to use of the trademark, to a successor to the applicant’s business, or portion of the business to which the trademark pertains, if that business is ongoing and existing. Therefore, a trademark assignment of an intent-to-use application should include language stating that the trademark is being assigned as part of the entire business or portion thereof to which the trademark pertains.
  • The process for filing a trademark application typically involves conducting a trademark search to ensure that the proposed mark is not already in use by another party, preparing and filing the application with the United States Patent and Trademark Office (USPTO), and responding to any office actions or objections that may be raised during the examination process.
  • The length of time it takes to file a trademark application can vary depending on a number of factors, such as the complexity of the application and the workload of the USPTO. On average, it can take several months to a year or more from the time of filing to the registration of a trademark.
  • The cost of filing a trademark application can vary depending on the type of mark, the goods or services it will be used on, and the USPTO where the application is filed. In the United States, the cost can range from several hundred dollars to several thousand dollars.
  • The information required when filing a trademark application typically includes the proposed mark, the goods or services it will be used on, the applicant's name and address, and a representation of the mark. In some countries, additional information may be required, such as the date of first use of the mark in commerce.
  • A trademark search can be conducted to determine if there are existing trademarks that are similar to the proposed mark. This can be done by searching databases of registered trademarks, such as the United States Patent and Trademark Office's (USPTO) database, or by hiring a professional to conduct a search.
  • After a trademark application is filed, it will be examined by the USPTO to determine if it meets the requirements for registration. If the application is approved, it will be published for opposition, during which time any interested party may object to the registration of the mark. If no opposition is raised or the opposition is unsuccessful, the mark will be registered.
  • If a trademark application is denied, the applicant will typically receive a letter from the USPTO explaining the reasons for the denial. The applicant may then have the opportunity to respond to the office's objections and submit additional evidence in support of the application. If the application is still denied after this process, the applicant may appeal the decision to a higher authority.
  • The length of time a trademark registration lasts can vary depending on the country where it is registered. In the United States, a trademark registration lasts for 10 years from the date of registration, and it can be renewed indefinitely every 10 years as long as the mark is still in use.
  • The benefits of registering a trademark include the legal presumption of ownership and the exclusive right to use the mark in connection with the goods or services listed in the registration. Registered trademarks can also be enforced against infringement, and the registration can serve as the basis for obtaining registration in other countries.
  • Some common mistakes to avoid when filing a trademark application include not conducting a thorough trademark search, using a mark that is too similar to existing trademarks, not adequately describing the goods or services the mark will be used on, and not responding to office actions or objections in a timely manner.

Types of Trademarks

  • Ideally, you should trademark all three, but if you have a limited trademarking budget, and most people do, then you should trademark the brand name first followed by the slogan and then the design.
  • They can match, but they don’t have to. For example, consider Nike. The name of the company is Nike, Inc. That’s the business name, but they own the “Just Do It” trademark.
  • If you plan to structure your business as an LLC, then you should form the LLC first because the LLC will be listed as the trademark owner on the trademark application. 
  • Whether you use Fiverr or another design company, you should be mindful of where you get your logo.  If you pay somebody to design a logo for you, the intellectual property or copyright created does not automatically transfer over to you and your company. You must have it in writing that you own the copyright for that image, and that you alone are allowed to use the image in your business. Unfortunately, most design companies use stock images. You never want to end up with a brand that's just a stock image. To avoid this, you have to be clear when you hire or engage the design company. Tell them to design an image or logo from scratch, just for you, and that they will not be able to license or sell it to your competitors.
  • There are four main types of trademarks: Word marks: trademarks that consist of words, letters, numbers, or a combination of these. Symbol marks: trademarks that consist of symbols, logos, or designs. Combination marks: trademarks that consist of a combination of words, letters, numbers, symbols, logos, or designs. Sound marks: trademarks that consist of a unique sound.
  • A word mark is a trademark that consists of words, letters, numbers, or a combination of these. Examples of word marks include "Coca-Cola" and "IBM".
  • A symbol mark is a trademark that consists of symbols, logos, or designs. Examples of symbol marks include the Nike "Swoosh" and the Apple "Apple" logo.
  • A combination mark is a trademark that consists of a combination of words, letters, numbers, symbols, logos, or designs. An example of a combination mark is the "FedEx" logo which combines a symbol mark (the arrow) with a word mark (FedEx).
  • A sound mark is a trademark that consists of a unique sound. Examples of sound marks include the NBC chimes and the "Intel Inside" jingle.
  • Word marks are easy to remember and understand, making them a good option for products or services that need to be easily recognized and identified. They can be registered for protection and enforced against infringement.
  • Symbol marks are visually distinctive and can be easily recognized and remembered. They can also be used in a variety of mediums, such as print, television, and the internet. Like word marks, they can also be registered for protection and enforced against infringement.
  • Combination marks have the benefits of both word marks and symbol marks. They can be easily recognized and remembered, and they can be used in a variety of mediums. They can also be registered for protection and enforced against infringement.
  • Sound marks are unique and can be easily recognized and remembered. They can also be used in a variety of mediums, such as television, radio, and the internet. They can also be registered for protection and enforced against infringement.
  • In general, to be eligible for registration, a trademark must be distinctive, not confusingly similar to other existing trademarks, and in use in commerce. Additionally, the application must include a representation of the mark, a list of the goods or services it will be used on, and a government filing fee.

Licensing, Contracts, and Agreements

  • No. While licenses often involve federally registered trademarks, unregistered trademarks may also be the subject of a license.
  • A trademark license agreement allows a licensee to use (but not own) a licensor’s trademark in connection with agreed-on products or services. Licensing can help a company expand into new markets effectively and easily while lending the licensee an established name and reputation. 
  • Yes. Just because you pay someone to create or design a logo for you does not mean you own the copyright or other intellectual property associated with the design or logo. The creator of any material or image automatically receives copyright protection for their work when it is created, meaning they can sell it to any or all of your competitors or use it themselves.  Therefore, you must be given permission in writing to gain a monopoly on that image. Furthermore, the agreement should specify your right to register the logo as your trademark.
  • If you want to retain ownership rights in your trademark, then licensing may be the best option. However, if you are looking to sell your company or are no longer interested in keeping the trademark for other reasons, then selling the trademark may be the best option.  Licensing offers long-term capital, but at the cost of regulatory paperwork and the trusting of an outside entity to protect the brand from being sullied, whereas selling involves a nearsighted, one-time profit and the loss of a lucrative identity you have spent years building. While selling intellectual trademark property can be a great way to make an instant profit, you must take into consideration the value of this one-time sale over the potential lucrative multiple payouts that comes with licensing.
  • The requirements for a trademark license agreement can vary depending on the country or region, but generally, it should include the following: the parties involved, the trademark being licensed, the scope of the license (i.e., the goods or services that the trademark can be used on), the duration of the license, the compensation to be paid to the licensor, and any conditions or restrictions on the use of the trademark.
  • Yes, a trademark owner can license their mark to multiple parties, known as non-exclusive license. However, it's important to consider how the use of the trademark by multiple parties may affect the quality and reputation of the trademark.
  • Yes, a trademark license can be assigned to another party. This means that the rights and obligations of the license are transferred from the original licensee to a new party.
  • A trademark license can be terminated for various reasons such as the expiration of the term, breach of contract, failure to pay royalties, or mutual agreement between the parties.
  • The rights of the trademark licensee are typically defined in the license agreement and can vary depending on the terms of the agreement. Typically, a trademark licensee has the right to use the trademark in accordance with the terms of the license agreement and any conditions imposed by the licensor.
  • The obligations of the trademark licensee are typically defined in the license agreement and can vary depending on the terms of the agreement. Typically, a trademark licensee is required to use the trademark in accordance with the terms of the license agreement, pay royalties or other compensation to the licensor, and maintain the quality and reputation of the trademark.
  • Yes, a trademark license can be exclusive, meaning that the licensor agrees not to license the trademark to anyone else during the term of the license, and the licensee has the right to use the trademark without competition from other parties.
  • While it is not required to have a lawyer to draft a trademark license agreement, it is highly recommended to have a legal expert to review and draft the agreement, as the terms and conditions of the license agreement can be complex and can have legal implications.
  • The benefits of licensing a trademark include generating additional revenue through royalties, increasing the visibility and exposure of the trademark, and expanding the reach of the trademark to new markets or sectors. Additionally, licensing can help to increase the value of the trademark.

LLCs and Trademarks

  • An LLC, or Limited Liability Company, is a type of business structure that combines the tax benefits of a partnership with the personal liability protection of a corporation.
  • Yes, an LLC can have a trademark. In fact, many LLCs register trademarks to protect their company name, logos, and other branding elements.
  • Yes, an LLC can register a trademark with the United States Patent and Trademark Office (USPTO) or with the relevant trademark office in other countries.
  • While it is not required for an LLC to register a trademark, it is highly recommended as registration provides legal protection for the trademark and can prevent others from using it without permission.
  • An LLC can register a trademark by filing an application with the USPTO or with the relevant trademark office in other countries. The application must include the trademark, the goods or services the trademark will be used on, and a government filing fee.
  • Yes, an LLC can license its trademark to another party under a trademark license agreement. This allows the other party to use the trademark in exchange for some form of compensation, such as royalties.
  • Yes, an LLC can sell its trademark to another party, known as an assignment of trademark.
  • Yes, an LLC can protect its trademark internationally by filing for trademark registration in other countries through the Madrid Protocol or through national trademark office.
  • The benefits of registering a trademark for an LLC include legal protection for the trademark, the ability to sue for trademark infringement, and the ability to license or sell the trademark. Additionally, having a registered trademark can also increase the value of the LLC.

Value of a Trademark

  • The worth of a trademark can vary greatly and is dependent on a number of factors such as the strength of the trademark, the industry it is used in, and the level of protection and enforcement it has.
  • The worth of a trademark can be determined through various methods such as a trademark valuation, market analysis, and financial analysis. A trademark valuation involves assessing the economic value of the trademark based on factors such as its strength, use, and potential for future income. A market analysis looks at the overall market and industry trends, while a financial analysis examines the financial performance of the company using the trademark.
  • The strength of a trademark, also known as its distinctiveness, can greatly affect its worth. A strong trademark is one that is unique and easily recognizable, and it has a higher potential to generate income and be protected. On the other hand, a weak trademark is one that is similar to other existing trademarks or is descriptive, making it harder to protect and less valuable.
  • The level of protection and enforcement a trademark has can greatly affect its worth. A trademark that is well-protected and enforced, meaning that it is registered and actively enforced against infringement, will be more valuable than a trademark that is not registered or not enforced.
  • Yes, a trademark can increase in worth over time. As a company or brand becomes more established and well-known, the value of its trademark may increase as well. Additionally, if a trademark is well-protected and enforced, and generates significant income, its worth can also increase over time.
  • Yes, a trademark can decrease in worth over time. If a trademark becomes generic or loses its distinctiveness, it can become weaker and less valuable. Additionally, if a company or brand becomes less established or less well-known, the value of its trademark may decrease.
  • The industry a trademark is used in can greatly affect its worth. Trademarks used in highly competitive industries such as technology or fashion may have a higher value than those used in less competitive industries.
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