When a business wants to promote its product or service, it requires a visual tool, such as a trademark, that can be associated with its products, services, or activities. It is a type of intellectual property. Once the business’s offering is formalized with a distinct trademark, its customers can easily recognize it in the marketplace. In addition, a trademark provides legal protection to a business. You can continue reading to learn more about what a trademark means in the legal context and how a trademark attorney from Greenberg & Lieberman, LLC in Washington, DC can benefit you in trademark registration, litigation, and other trademark matters.
What is a Trademark?
The United States Patent and Trademark Office (USPTO) defines a trademark as any word, sign, symbol, or design used to distinguish a business’s services and goods. A trademark is a type of intellectual property protected by intellectual property law. When an individual, business, legal entity, or organization owns a trademark, they obtain the exclusive right to prevent others from using the same mark.
A business has the right to trademark its product names, business name, sounds, logos, color schemes, and slogans. However, under trademark law, they cannot trademark a product or business name already used by another business. This includes any descriptive words, common phrases, religious passages, geographical descriptions, or marks that depict a false connection to any belief, institute, or other people.
If you want your trademark to be protected through trademark registration, it must be distinct and cannot be confused with an existing trademark.
Trademark Registration Process
While anyone can hold rights to their trademark without registering it with the USPTO, they can be deprived of certain advantages by not registering. For instance, using an unregistered trademark would not provide nationwide rights to the logo or mark, and you would only be able to use the symbol ™ or SM after your mark and not the symbol ®, which is specifically for USPTO-registered trademarks. Without federal trademark registration, you would also be unable to pursue trademark litigation in the federal court system.
Fortunately, the U.S. patent and trademark office has streamlined trademark application and trademark registration by making it accessible online for everyone.
Before the registration process, you should conduct a federal trademark search. A federal trademark search is a free online search that can be conducted at the USPTO database to determine if the trademark you want to register is similar to an existing trademark. The software present in the trademark office database lets you examine different factors of your trademark, such as its spelling, any equivalents in a foreign language, and pronunciation, to determine whether your trademark is original or not.
You can visit the United States Patent and Trademark Office’s TEAS or Trademark Electronic Application System for the trademark application. Note that there are distinct filing fees for TEAS Plus and TEAS Standard. In addition, you would have to provide your name, address, a precise drawing or depiction of your mark, and a complete list of all goods or services you want to associate with the trademark.
Once your application is submitted, the trademark office will review it and send it to their examining trademark attorney for review under U.S. trademark law. If the trademark attorney finds an issue with your application, you could receive an office action from them explaining the reason for refusal.
You would have to wait several months for the approval of your trademark application because it can take the USPTO several months to review and respond to the application. If your application is approved, you will receive a formal approval letter from the trademark office.
After the publication of your mark, there is a 30-day timeline, also known as the trademark opposition period, for any party who disputes your mark because they believe theirs is similar. If no one opposes your mark, it can take a few weeks after the opposition period is completed for the mark to be registered. Even though filing trademark applications has been made easy, you can run into issues, especially if you have a complex case. It is best to get assistance from a trademark attorney from a credible law firm.
Common Problems When People Try to Register a Trademark
The federal trademark registration process can be completed without the help of a trademark attorney, but the lack of knowledge about the registration or application requirements can cause mistakes that can potentially hinder the approval of your trademark application and cause delays. These mistakes include:
Misidentifying Services and Goods
When completing the trademark registration forms, you must clearly identify the goods and services you want to protect with the trademark. Any other goods and services offered by your business would not be covered by your trademark except for the ones you have listed in the form. There are about 45 classifications of a trademark, and choosing the suitable class for your goods and services can prevent your application from being denied.
Submitting an Improper Specimen
A trademark specimen is proof of the use of your trademark. The application requires you to specify how you would use your trademark in commerce. You must submit a trademark specimen to avoid getting your application disapproved.
Improper Filing Basis
There are two trademark filing bases, each of which has its own requirements and advantages. One is the actual use basis, and the other is the intent of use basis. Misunderstanding the difference and filing on the wrong basis can result in a registered trademark that offers very little legal protection. For example, if you only file for the intent of the use of trademark basis, you would not be able to use the trademark for commercial activities, such as selling your products, because you did not file for actual use basis in your application.
Reasons to Hire an Attorney for Help with Trademark Registration and Litigation
- They Have Experience: A trademark lawyer with years of experience dealing with trademarks and is well-versed in trademark law can give you comprehensive information about the trademark registration process. They can also help you avoid the potential costs of rebranding and missing important deadlines.
- They Offer Trademark Protection: A trademark lawyer from a reputed law firm can help you build a long-term protection plan for your business by analyzing the trademark, informing you whether it qualifies for protection, and explaining how you should use your mark.
- Help You Enforce the Trademark: The USPTO does not hold the responsibility of enforcing trademarks; the trademark owner is responsible for enforcing it. Your trademark attorney will be able to monitor new trademark applications and locate any infringement of your trademark so you can pursue a trademark trial.
- Crafting Trademark Application: Trademark attorneys can conduct more thorough research and locate any state or common law trademark rights not registered with the USPTO to help you avoid potential application problems. Trademark lawyers can also help you find potential issues with your trademark application and submit it because a trademark application submitted by a qualified lawyer is more likely to be approved. An application filed by a trademark lawyer is less likely to be challenged by opposing parties because the application would be based on a comprehensive search.
How Long Does the Trademark Application Process Take?
A trademark application process can take several months or more than a year because it passes through various stages before approval. For instance, when an application is submitted for trademark protection, it can generally take 4-6 months to be reviewed by the USPTO. Once the application is reviewed, the USPTO examining trademark attorney will issue a letter approving or explaining the reasons for the refusal of your trademark application.
After you receive that letter, you or your trademark attorney have about three months to respond to the letter, or the application can be abandoned. There is also a post-registration process that contributes to the timeframe of the application process. However, the owner can obtain protection when an application is filed with the USPTO. If your application is denied, you can go to an appeal board.
Is There a Difference Between a Service Mark and Trademark?
Trademarks (™) are used to identify goods offered by a business, and the service mark (SM) is used to identify services provided by the business. However, a trademark is generally used to identify both goods and services of a business.
A business can register for both marks. Neither the trademark nor the service mark holds any legal significance unless registered with the USPTO. When a mark is registered, the symbol ® is granted to the business, giving it exclusive rights to use the trademark or service mark in the market.
If you need assistance in trademark registration or ligation, feel free to schedule a consultation with a trademark attorney from the Greenberg & Lieberman LLC law firm in Washington, DC. Our trademark attorney can guide you on all matters related to trademark registration, infringement, and other trademark services.