WHAT IS A TRADEMARK?
A trademark is a name, symbol, design, sound, or even a smell, used to identify the source (manufacturer, producer, service provider) of particular goods or services. Some famous examples include Google, McDonald’s golden arches, Nike’s swoosh, and even the NBC chime.
WHY WOULD I WANT TO FILE FOR TRADEMARK REGISTRATION?
The benefit to registering is that it gives nationwide trademark rights so that if someone else comes along to adopt the same or a confusingly similar mark for the same or similar goods or services, the owner of the trademark registration can stop that infringing use.
HOW LONG DOES IT TAKE TO GET A TRADEMARK REGISTRATION?
If everything goes well, 6-7 months. You can read more about the timing by reading our blog article about how long it will take to receive a trademark registration after filing a trademark registration.
WHAT IF I HAVE A GREAT IDEA FOR A TRADEMARK, BUT HAVE NOT STARTED USING THE TRADEMARK. CAN I STILL GET PROTECTION FOR THE MARK?
Yes, the USPTO allows for an “Intent-to-Use” trademark application, which will give extra time to finalize the trademark application process. The mark will need to be in use in commerce, however, before the USPTO will issue a trademark registration.
WHEN SELECTING A TRADEMARK, ARE THERE ANY GUIDELINES TO KEEP IN MIND?
Yes, the more arbitrary and fanciful the trademark, when compared to the product or services, the easier it will be to protect the mark. Think about some of the most famous trademarks and how they have nothing to do with the product/service being sold- Apple, Google, Yahoo!, and Nike for example. These marks are easier to register and easier to protect. Try to stay away from descriptive trademarks. Marks that are do descriptive, they are considered “generic,” can not be registered at all. Marks that are “merely descriptive” may eventually be registerable, but it will take additional time and expense. And once registered, descriptive marks are more likely to be used by competitors, meaning there will be increased costs in protecting the mark.
WHAT IS A TRADEMARK SEARCH AND WHAT IS THE BENEFIT?
A trademark search determines if there are any prior users of a “confusingly similar mark” for the goods or services for which you want to register. If so, then it is good to know this information upfront so you are not surprised by an Office Action after spending time and money on the trademark process.
ARE THERE PROBLEMS THAT CAN ARISE AFTER FILING FOR TRADEMARK REGISTRATION?
Yes, the Trademark Office can issue what is called an Office Action. An Office Action may be to ask for a minor technical correction in the Trademark Application. Or it could be something more serious. For example, the Trademark Office may question whether the mark is “merely descriptive” and entitled to registration. Or the Trademark Office may find that the trademark is too similar to a trademark that is already registered by another business to promote the same or similar goods or services. Finally, the trademark registration could be opposed by a competitor who believes your mark is too similar to its trademark.