Trademarks: What’s In A Name?
I’m sure it’s cheesy to start a blog with the phrase “what’s in a name?”, but I’m going to do it anyways. Not only is it a profound statement (seriously, ponder it for a moment), but it really sums up what this post is all about. The name and/or logo you choose for your business, products and services is critically important. It is how your customers will identify your product or service. They will start to attach emotions and opinions to it. As your business grows, your name begins to develop value (or “goodwill” as the accountants like to call it). So it’s important to think about the name you choose and how you are going to protect it. That is where the wonderfully complex world of trademark law comes into play.
While it is always best to consult your attorney about these sorts of complicated legal matters, I wanted to provide you with a basic synopsis of the process of federally registering a trademark. When you register a trademark with the United States Patent and Trademark Office, (“USPTO”) it means that your business has the exclusive right to use that name or logo for your product or service throughout the entire United States. Translation: no one else can use your name or logo for the same or similar product or service in the United States. Let’s take a look at what it takes to obtain the coveted ®.
The first step is to determine if your name or logo even qualifies for federal registration. I have narrowed this down into a very simple equation:
Name or logo + good or service + “use in commerce” = ®
Let’s start with the name or logo. You wake up one morning with a brilliant idea for a name for your new product: Nikez for men’s dress shoes. You haven’t sold a single pair of shoes yet. What is wrong with this picture? First, the name you are in love with sounds pretty close to a famous mark called Nike. Clients ask me all the time if they can just add an “s” or a “z” at the end of the name. That’s ok, right? Wrong. Trademark infringement doesn’t have to be exact like it does with most copyright infringement. If it looks like, sounds like or has the same meaning as an existing mark, it’s not going to work. Second, the goods you are trying to sell are also very similar to what Nike sells, i.e. athletic shoes to men’s dress shoes. The USPTO has thousands of categories of trademark classes of goods and services, but in this case you are talking about goods that more than likely fall into the same or similar classes. Finally, you haven’t sold any product yet. “Use in commerce”, when it comes right down to it, means you have to cross state lines with your product. So in this hypothetical, three strikes and you’re out. However, the use in commerce element can be something you achieve later on and still be able to file for a federal trademark. More on that to come later.
So you have a name or logo you think is unique, your good or service and you sold some product across state lines. Now it’s time to see if your mark conflicts with any existing federal or common law marks. The first step is to go to www.uspto.gov and search the federal system for any conflicting marks. Remember that you will want to search various spellings of the name or words to see what comes up. If nothing comes up, you will want to move to the common law, i.e. the Internet to see what else is out there that is not federally registered. I usually recommend checking state sites for any state registered trademarks. This process can be complicated and take time, but it is important you know what you are getting into before you spend any more money on the name you have chosen. I promise you, the time and money you spend at this step in the process is much less than what you might spend in the future if you choose to skip this step, or if you don’t fully understand the way to research your mark in connection with existing marks.
You have successfully completed Steps 1 and 2, your search came up clean, congratulations! Time to move on to the filing process. At this stage, you have to think about what type of application you are filing. If you have achieved “use in commerce”, you can go ahead and file an application for actual use. If you have not yet achieved “use in commerce”, you can file what is called an Intent to Use application (“ITU”). This means that you are intending to show use in commerce within 6 months of filing. If you don’t, you can file extensions for up to three more years. The cost of filing either an actual use or an intent to use application ranges from $275-$325 per mark per class.
4. Follow Up
Your application is filed. Now what happens? The waiting game begins. The USPTO has a wonderful online system called the TSDR that will allow you to track where your application is in the process. But what is that process? In a nutshell, once you file your application, it takes about three months for it to land on an examining attorney’s desk. Once they get it, they will review it and may send you correspondence called an Office Action because there is something you need to clear up with the application. Examples of issues that come up are likelihood of confusion with an existing mark, disclaimer language is required, clarification of the goods or services, conflict with a prior-pending application, etc. Typically, you have 6 months to respond to the Office Action. If you don’t, the USPTO will abandon your pending registration. If you respond in a timely manner and all deficiencies are corrected, the USPTO will send you a Notice of Allowance and publish the mark for opposition. For 30 days thereafter, the public at large has an opportunity to oppose your mark. If no one opposes the mark, you will receive a shiny registration certificate in the mail. The process takes, on average, about 6-8 months to complete.
Congratulations! You have received your registration certificate! Now you can start using the ® symbol on your mark. This puts the world on notice that this mark is federally registered. The final question is how long does your registration last? The answer is: so long as you use it, you won’t lose it! To prove that you are using it, every 5 years you will be required to file a statement with the USPTO that you are still actively using the mark in commerce. Should you fail to file this paperwork, the USPTO will “kill” your mark and you will lose your federal status.
That is the process in a nutshell! I will be honest, it is much more complicated than outlined above, hence why it is a good idea to seek the advice of an experienced trademark attorney (hint hint, nudge, nudge!).