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TRADEMARK APPLICATION

FREQUENTLY ASKED QUESTIONS

1. I want to file a trademark. What’s that process called?

The official term for the trademark application process is “Prosecution” but we use the terms “prosecution” and “application” interchangeably.

2. Where is a trademark filed? While a trademark can be filed at the state level, the vast majority of our clients are seeking national protection which can only be obtained by filing with the US Patent and Trademark Office, or USPTO.

3. What exactly is a trademark anyway?

Trademarks identify the source of a particular good or service to consumers in the marketplace. They most often take the form of words and/or logos, but taglines, sounds, aromas, and anything else that can inform a prospective consumer that a particular product or service is yours – as opposed to your competitor’s – can qualify for trademark protection.

4. When can I use the ™ symbol on my mark? How about the ® one? The ™ symbol is a notice of an unregistered mark. You can use this whenever you want, but it’s a good idea to use it when an application has been filed and is currently pending. The ® symbol is a notice of a registered mark, so you get to use it after your mark registers. It’s not required to use it, but it’s highly recommended as a deterrent from infringement and as a point of pride.

5. Didn’t I register the name of my business when I formed my company?

No, while you may have been able to register a corporation or LLC under your brand name in Delaware, Illinois or elsewhere, this has nothing to do with trademark protection and provides effectively no protection against competing use.

6. What happens if I see someone using my trademark? If you have already begun the trademark application process or already obtained a trademark, let us know about this other use and we will discuss with you potential next steps. It may make sense to have us prepare a letter on your behalf and in

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some cases litigation is necessary and appropriate. Sometimes a client believes that a use conflicts with a registered mark when in fact the USPTO would consider the other use permissible.

7. Does my trademark make me the only one who can use the words or images in my mark at all times?

No – trademarks apply to the goods and services for which you use them, plus some additional items or services that consumers interested in your products or services might encounter in a similar environment. The USPTO divides up all possible goods and services into 45 “International Classes.” These classes are often the first point of comparison we use to determine if a mark is available. We also have to define the goods and services through one of thousands of available descriptions of the goods and services themselves, all of which are contained in a tidy, searchable manual that’s part of the application process. For example: If you register a trademark for the term ACME on wrenches, you will get protection against junior users (that is, users who start their use of a similar mark after you started yours) for wrenches, similar hardware items, and probably retail environments where wrenches and related items are sold. You would not, however, get immediate protection from others who want to use the term ACME for sunglasses, accounting services, or other goods and services unrelated to wrenches, because a consumer looking to buy an ACME wrench is unlikely to confusingly purchase a pair of sunglasses with the same name on it because they thought that you sold both products under the same brand.

8. Can I copyright my trademark? Can I patent my copyright? Can I trademark my patent? Trademark, copyright, and patent are all different forms of intellectual property (IP), with different rules, different protections, and different benefits. All of them have value when they apply, and all of them become assets of their owners that can be licensed, sold, bartered, or simply used to enhance business or to ensure freedom to operate. However, the terms are not interchangeable and present very different sets of rules and requirements. Typically, something that justifies trademark protection would not also be protectable by copyright or patent (and vice versa). But different aspects of an idea or business could apply to more than one category. For example, a unique product idea could be worth of patent protection, and the brand name of the product subject to trademark protection. If you’re interested in other forms of IP, just ask!

9. When can I claim that I’ve established trademark rights? When you begin to use a mark in commerce – in other words, a trademark application is permitted when a consumer can use or purchase your goods or services in connection with the name, logo, or other mark you seek to register.

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10. What goes into a trademark application? Three main categories of information comprise a trademark application: 1. Information about the mark itself: what it is, what goods and services it’s used

for, when you began to use it, and the like 2. Who the owner of the mark is: your business name, address, etc. 3. Evidence of use: through what’s called a “specimen,” we must show an example

of how the mark is used in the wild. Specimens must display the mark itself on your goods, or in a manner that shows the mark in connection with a way a consumer could use or purchase your goods or services.

11. What is the application timeline?

a. The fastest applications usually go from application to registration in about 9-12 months. Two major checkpoints occur during this time period, and so does A LOT of administrative downtime.

b. The first key checkpoint occurs after 3-4 months, at which time the U.S. Patent

and Trademark Office's examining attorney will first review the application to check for a likelihood of confusion with other existing marks. If an application clears this hurdle, some downtime occurs until what’s called Publication for Opposition on the Official Gazette. If an application has some defects that need to be resolved, the USPTO issues an Office Action laying those out. We get six months to respond to fix the issues or argue why the USPTO got it wrong and should permit the mark to proceed.

c. The second key checkpoint is the Publication period, which occurs over a 30-

day period. Every day, the USPTO publishes the Official Gazette – that day’s list of marks the USPTO has deemed qualify for registration. For 30 days, members of the public who believe they have good reason to prevent a mark from registration can file an opposition. This doesn’t happen too often, but if it does, we help guide you through the strategic decisions on what to do next.

d. After the expiration of the 30-day publication period, the USPTO will prepare

the mark for registration and ultimately issue a registration certificate. Some refusals to register can still occur during this period, but they are extremely rare. This administrative period usually lasts about 8-12 weeks.

e. During these periods of time, you can and should continue to develop your business.

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12. What are the projected legal fees for a trademark application?

We offer a flat fee for trademark filings of $1,250 plus USPTO filing fees. The filing fees start at $225 per class of goods and services. All fees are per application for each separate mark; any difference in a mark requires its own application. An application for a logo, for instance, would be a separate application than one for a corresponding name, even if the logo also contains that name. We generally request payment of flat fees, which include our fixed fees as well as the USPTO’s filing fees, up front. Payment is not refundable in the event that the USPTO does not grant registration to the mark. If your application proceeds along the timelines laid out above, it is all covered by our flat fee. The two instances where our clients could incur additional fees are both areas we screen for when we run searches, but we can’t always control or predict exactly what will happen when an application is filed. Those two areas where additional fees may arise are:

1. Substantive responses to Office Actions, to which we must respond within six

months. We don’t bill for responses for routine Office Actions, such as confirming consent to a required disclaimer.

2. Oppositions, which are relatively rare. Should an opposition arise, we will work with you to determine the best next steps.

In the event of either of those two events, we apply our hourly rates – but we never begin hourly work on a trademark application before discussing it with you first and getting your permission to proceed. Some scenarios call for some additional filing fees. The most common are: 1. An intent-to-use application, which allows you to file an application before you

begin use. We often recommend this strategy to clients because it allows you to confirm that a trademark is available before you spend a lot of money and effort building a brand. If we find out 3-4 months into the process that you may not be able to secure rights in the name, you can pivot to a new brand and file again without having to buy new business cards, repaint that mural on your walls, or reeducate your audience on a whole new brand. Intent-to-use applications require a $100 per class surcharge.

2. Occasionally, the list of available descriptions of goods and services doesn’t

quite fit what you want to apply for. In those cases, we can write our own, for a $50 per class surcharge.

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13. Are there special rules for that intent-to-use application?

Yes. In a standard application, we submit a specimen as part of the initial application. In an intent-to-use application, we get to wait to submit it until after the period of publication on the Official Gazette expires. This tends to be around 6-8 months after the filing date. At the beginning of this period, the USPTO issues a Notice of Allowance. In response, we get six months to file a Statement of Use. The Statement of Use merely provides the information that we would have needed to file originally – a suitable specimen and the date of first use of the mark. If you have not begun use of the mark within the first six months after the Notice of Allowance, up to five 6-month extension periods are available for purchase at $150 per class, each. If you don’t begin to use the mark within the allotted 3 years after using all of the extension periods, your application will lapse.

14. Can I combine text and a logo into the trademark application?

You can, but we generally recommend applicants file separately for names, logos, taglines, etc., and then they can use them combined when running the business - which ends up with the side benefit of having multiple brand assets instead of just one. We should not file an application for a logo that is not finalized and will change. If any change occurs, the old mark is no longer in use and will lose protection. Later on, if there’s some strategic advantage to filing combined (“compound”) marks, we can do that too!

15. How do you know if a new mark is available for use and ownership?

To be registrable, marks must be both inherently registrable and externally registrable. To judge inherent registrability, we judge marks on a spectrum from generic, to descriptive, to suggestive, arbitrary, and coined. Generic marks are never registrable. Suggestive, arbitrary, and coined marks are always registrable. Descriptive marks are sometimes registrable. Much ink has spilled over descriptive marks, but the bottom line is that we’ll evaluate which category your mark is likely to fall into. To judge external registrability, we run searches through a federal database maintained by the USPTO, sprinkle some magic dust over the results, and analyze what comes back to give our best estimation as to whether a mark is available. Ultimately, we’re trying to determine whether there is a likelihood of confusion between your proposed mark and any other senior mark (i.e., a mark already registered and in use). If a likelihood of confusion exists, your mark will be refused registration. Very few searches come back totally clean, so we do our best to anticipate what might occur upon filing and to help you make the decision whether to file a mark that might be rejected for likelihood of confusion. But we can’t ever fully guarantee that the USPTO will register a particular mark.

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16. Do more unique marks get better protection, or are all trademarks considered equal?

Yes, unique marks get more protection. When a lot of marks use the same or similar terminology in connection with a particular good or service, the USPTO only tends to enforce strict refusals against exact matches. This can be good if you’re seeking to register a mark in a crowded field, but it can be bad if you do achieve a registration and then later have to deal with another similar mark in your field. Suggestive, arbitrary and coined marks tend to stand out from the crowd much more, and the USPTO will afford them greater protection if someone else files for a relatively similar mark, even when there’s no exact match.

17. If I’m working on a logo, would it make sense to file for the name and follow up with the

logo once finalized, or should I wait to do them together?

Yes. Filing the name first when all marks in your portfolio are not yet in use or ready for filing often makes sense to ensure the name’s availability. We should not file an application for a logo that is not finalized and will change. If any change occurs, the old mark is no longer in use and will lose protection.

18. How do I get around challenges to registrations that might be inherent in the words I want to use?

We’ve got a few tricks under our sleeve that can sometimes help register difficult marks. Let’s talk!

19. Do my registered business name and domain name need to match my trademark exactly? Should I file my trademark registration before or after I form my business entity?

No. Business entity names and domain names don’t usually count as specimens because they don’t show a trademark in connection with use or sales of goods or services. We can help you identify options that may work for a business entity or domain name that may contain your trademark even if your first choice isn’t available, because those entity or domains often don’t refer to similar products and services as yours.

After you form the business entity is formed is the best way to go. The USPTO permits applications filed in an individual’s capacity, but this exposes the applicant to unnecessary risk in the event of a trademark infringement claim during the lifetime of the trademark. If necessary, we can file an individual capacity and then assign – that is, file paperwork to legally transfer ownership of – the trademark from an individual to a business entity later on, but this will require a new set of legal and filing fees, and it can also trigger contract issues if the new business entity is not controlled by the same individual listed as the owner of the original application.

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If you need assistance with forming a business entity, let us know! Our attorneys regularly assist clients with business formation, so you can benefit from all of our legal services under one (proverbial) roof.

20. How long does my trademark last? Do I have to do anything to renew or maintain it?

Your trademark protection lasts as long as you continue to use your mark in commerce in connection with the goods and services listed in the registration. Some renewal and maintenance paperwork is required: 1. Between five and six years from the date of registration, a Section 8 filing is

required to renew the registration. This comes with a fee of $125 per class payable to the USPTO.

2. Also, between five and six years from the date of registration, a Section 15 filing is permitted and recommended, but not required. This filing provides what’s called incontestability status, which gives your mark the highest level of protection afforded to registered marks. The incontestability fee is currently $200 per class payable to the USPTO.

3. Between 10 years and 11 years from the date of registration, and every 10 years thereafter, a Section 9 renewal is due. The Section 9 renewal is $300 per class payable to the USPTO. If at any point you stop using the mark on a particular class, we can let that class lapse while maintaining the registration of the ones still in use.

While we are happy to assist you in complying with any of the above requirements, clients are responsible for ensuring that they meet these requirements and we do not remind clients of these deadlines (the deadlines are simply too far away from the registration date for us to take on that responsibility). If you would like our help with any of the above, please let us know and we will quote you a flat fee.

21. Will I receive paperwork about my application from the USPTO?

No, we are listed as your attorneys of record, and the USPTO sends all correspondence related to your mark directly to us. You may receive very official-looking mailings from third parties claiming that you owe additional payments on your application. Nearly all of these are scams from third parties, so you can disregard them. But if you are ever in doubt, just give us a shout and we will confirm.