Business Leadership Business Legal Solutions Intellectual Property
July 30th, 2021
Trademarks: Frequently Asked Questions
Are you wanting protection for your brand assets? Like your business name, tagline or a short phrase? Or a Signature course, program or service name? Perhaps a logo? (i.e. Word, phrase, slogan, symbol or design).
Those things we protect with Trademark registrations. Is your name, tagline or phrase generic or descriptive? (You should try to avoid those things.) What makes for a more likely (and protectable) mark is whether it’s unique, creative or unusual (also called a “fanciful” or “arbitrary” mark), and not already being used in the marketplace in the same class or category as you are (i.e. clothing vs. consulting, for example).
A Trademark distinguishes your goods and services from those of your competitors. And so the more unique it is, the better. Which also makes it easier to protect.
If you are considering obtaining a Trademark Registration for your business, you might consider some of the most frequently asked questions I receive from clients and potential clients below:
What is the “TM” symbol and when should I use it?
The TM symbol (™) stands for “Trademark”, and appears in superscript or subscript following the word or short phrase (or design mark) that is proprietary and that you are seeking a registration for (business or brand name; signature course, program or product name; tagline, logo, etc). You can use “TM” in this manner if you are pursuing a trademark registration for your chosen word, name or phrase, or design, or plan in short order to pursue protection. It is used to put the world on notice that you are claiming rights to the word or phrase and intend to protect it.
What is the “Circle R” and when should I use it?
The Registered Trademark symbol – “®” – also called “Circle R” is a symbol that you can use following your proprietary word or phrase, in superscript or subscript, once you have obtained a registration through the USPTO. Once you have final registration approval, it is recommended that you use this symbol in conjunction with your mark.
This symbol lets the world know that this word or phrase (or design mark) is protected and subject to a trademark or service mark registration.
You cannot use this symbol unless and until you have a final trademark or service mark Certificate of Registration from the USPTO.
How do I know I’m ready for a Trademark registration?
When clients come to me and say, “I don’t know if I should get a trademark”, I always ask them this question: how would you feel if someone else used your business name / tagline / logo or other intellectual property asset?
If the answer is “meh, no biggie” it’s probably not worth protecting. If the answer is “I’d be devastated” or “super upset” then you definitely need to take steps to protect your IP.
If you are committed to the future of your business, and you want to plan for where you are headed (not where you currently are), then you always need to be considering the IP you are creating.
What is the plan for protection? What are your primary assets?
If you need help with an IP assessment, reach out. But if you have a business or brand name, a signature course, program or product name, or a tagline or logo that is proprietary, and you would be upset if someone else used it in their business, then it is time to get in touch and get the process started.
Do not wait if you have an IP asset that you love, that you have launched or are getting ready to launch into the world. The time is now.
What does a Trademark registration allow me to do?
Obtaining a Federal registration with the USPTO on the Principal Register allows you to claim exclusive use over your word, phrase or design. This is the very reason most businesses or entrepreneur pursue registration of a mark.
But what can happen if you make a mistake in your application, or don’t understand the process, or inadvertently approve a change recommended by the examiner, is that you can end up on the Supplemental Register.
By the very nature of being placed on the Supplemental Register you are presumed NOT to have exclusive use of your mark.
How long does the Trademark registration process take?
Once your application has been submitted, it can take 9 to 12 or even 18 months to process, depending on the application and the examiner, and whether you file based on actual use or “intent to use.”
With intent to use, there are some additional steps, and an additional interim filing fee for the Statement of Use. This is also when you submit specimens showing your use in the marketplace.
Regardless of the basis for the initial filing (actual use vs. intent to use), once a trademark registration has been approved, to keep the registration alive, the registration owner must file required maintenance documents at regular intervals. Failure to file the required maintenance documents during the specified time periods will result in the cancellation of the U.S. trademark registration or invalidation of the U.S. extension of protection:
- Usually this involves filing a declaration of use (or excusable non use) between the 5th and 6th year after the registration date. (There is also a 6 month grace period that follows, and for an additional fee you can file within the grace period).
- You then file another declaration of use (or excusable nonuse) between the 9th and 10th year after the registration date, and every 9th and 10th year period thereafter, calculated from the registration date. (Also a 6 month grace period).
At any time after 5 years following the registration date, you may also file a Declaration of Incontestability (which if granted, makes the trademark incontestable.)
The following information is required in a Section 15 declaration:
- The registration number and the date of registration.
- The filing fee of $200.
- A statement that:
(a) The trademark has been in continuous use in commerce for a period of five years after the date of registration (or the date of publication under 15 U.S.C. §1062(c)) with the goods or services listed in the registration and is still in use in commerce.
(b) There has been no final legal decision adverse to the owner’s claim of ownership of the trademark, or to the owner’s right to register the trademark or to keep the registration.
(c) There is no pending legal proceeding involving the trademark in the USPTO or in a court of law.
- A signed and dated statement of the accuracy of the information provided.
Can’t I just pursue a Trademark registration on my own?
Can you register a trademark on your own? Yes, you can try.
But should you? That’s the question.
The answer depends on so many things – the complexity of your mark; whether you need any advance assistance in researching the current use of any similar marks being used in the marketplace, advance coaching on even minor modifications that might increase the likelihood of obtaining a registration; the potential of your desired mark to cause confusion in the marketplace; whether or not you will have to respond to office actions (on your own), and whether doing that might inadvertently put your mark at risk if you sign off on something that based on your knowledge (or lack thereof) hinders the future of your brand.
The trouble is that an issue doesn’t become an issue until it does.
So, we attorneys don’t have crystal balls, but we can provide other client examples of scenarios where clients (before they became clients), attempted to register a mark on their own, and made major mis-steps. We can shine the light on scenarios where people waited too long, or didn’t know what they were doing and caused a lot of heartache for themselves and the future of their brand. ⠀
I can show you examples of where these mis-steps cost these businesses tens and sometimes hundreds of thousands of dollars. I can show you examples where these mis-steps resulted in not being able to protect brand IP internationally because of mistakes made here in the US trademark registration process. I can show you examples where these mis-steps resulted in extra legal fees to sort out the problems that were created on attempt numero uno.
This doesn’t even get down to the details of identifying the proper categories for your mark, and creating descriptions that allow for your use without being overly limiting. That’s a whole ‘nother conversation.
So the answer is yes, you can try to register your own trademark. But you should be ready to accept the full range of possibilities (and impacts to your business and brand) as an outcome before you start.
What if I have questions before I get started?
If you have questions before getting started, I offer complementary introductory calls. This allows us to connect for a few minutes, answer any preliminary questions you might have and determine whether we would be a good fit to work together. You can schedule that call here.
Why should I work with an attorney?
Working with an attorney drastically increases your odds for a successful registration outcome. Of course it is not a guarantee, but there are elements of the registration process that can be complex. And if simple errors are made during this process, those errors or missteps can impact your brand, and your ability to protect your business or brand, for the life of your business.
As one simple example, a client, before becoming a client, attempted his own TM registration. He signed off on a revision made by the trademark examiner that is now preventing him from protecting his brand around the world. He is facing numerous challenges in getting foreign trademark registrations because those foreign offices look first to the USPTO, and because of that one error, they are declining providing him with a registration. If he had had legal counsel in place, it is very likely that he would have had assistance in successfully overcoming the objection made by the examiner which resulted in this outcome. But he didn’t know any better.
I do not want people stepping over dollars to pick up pennies. Scrimping at the start can cost you LOTS OF DOLLARS at the end, and for the life of your business. A trademark registration done right is an asset (and weapon!) in your business. It can accomplish a lot when it comes to brand protection. A trademark registration done wrong can be a liability, and cost you thousands, tens of thousands, or even hundreds of thousands of dollars in the long rung, depending on your business. Don’t chase pennies if you are investing in the future of your business.
Like I always say to clients: Plan for where you are going, not where you are.
What is the difference between flat-fee and hourly billing?
Many attorneys charge for their services at an hourly rate – i.e. they charge you x amount per hour and then track time associated with your project.
For trademark filings, we charge on a flat fee basis. We have found that this is by far the best approach for small businesses: it allows you to plan for and cap your costs associated with services, and also allows us to provide you full service, including responding to questions along the way, and conducting check-ins and updates, without worrying about time and whether we are going to run you over your budget based on a product of the time we spend on your behalf. We have designed our services to allow us to do great work and within a budget, which matters to most clients.
There are certain situations that may arise in regards to a filing that cannot always be handled within the flat-fee arrangement, but these are usually out of the ordinary, and we address your options with you when these types of situations arise. Our goal always is to help shuttle you through a successful registration process.
What are the benefits to working with your office?
We work exclusively with experts, consultants, coaches, speakers, authors, educators, and individuals building personal brands. This means that we are extremely familiar with the classes (or categories) that apply to your business model, and the ways available to protect your proprietary information.
Because we work exclusively with small businesses, we are scrappy. This means we are going to give you our best advice when it comes to how to get the most bang for your buck. If we think an extra class is unnecessary, even if it is available to you, we will tell you we think it is unnecessary. We are interested in what is a best fit for your business, not in maximizing our fees. That is because we want a relationship with you that lasts for the life of your business. We are not, like so many shops, a “turn and burn” type of office.
We want to become familiar with your business. We want to assist you with a comprehensive strategy. And we want to be the office you pick up the phone and call if you have a future question or problem.
Finally, as mentioned previously, we offer flat-fee pricing for our trademark registration services. That is because we are familiar with the process, we are efficient, and we want you to be able to project and cap your costs so that you grow your business with the right type of support that does not break your budget.
Please reach out to us if you have any additional questions we have not covered here. We would be happy to offer you a complementary introductory call to see if we are a fit to work together.
And if you already know that your business or brand is ready for Trademark registration support, you can learn more info, and even begin the process here.
Here are my last three posts in case you missed them!
3 Things You Can Do Today (Without a Lawyer) to Protect Your Online Content
Guest Interview on Thrive LOUD with host, Lou Diamond
Guest Interview on “Three Steps to Thrive” with Host, James Lam
© 2021, Heather Pearce Campbell, The Legal Website Warrior®
DISCLAIMER: THE INFORMATION PROVIDED IN THIS POST MAY CONTAIN LEGAL INFORMATION, BUT DOES NOT CONSTITUTE LEGAL ADVICE. NO RELATIONSHIP, INCLUDING ATTORNEY-CLIENT RELATIONSHIP, HAS BEEN FORMED AS A RESULT OF THIS POST. YOU ARE ADVISED TO SEEK THE ADVICE OF AN ATTORNEY LICENSED IN YOUR STATE IF YOU HAVE ANY QUESTIONS.