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We can help with your Trademark needs. Email us for a quick analysis. |
This article provides a brief overview of the trademark process with an emphasis on strategies that work for small business owners and entrepreneurs. It was written in common language with an effort to avoid “legalese.” At certain places I refer to Trademark Partners™ research and filing services. To make it easier to follow, the word product is used to refer to both products and services.
The Trademark Process
This article will address the basic steps of an effective trademark process, and how Trademark Partners™ services fulfill certain key objectives during this process.
A summary of the steps of the trademark process are as follows:
1. Create an effective and protectible trademark,
2. Perform a thorough check of the mark’s availability by searching for conflicts with existing marks,
3. Apply for federal (US) trademark registration,
4. Continue protecting the trademark with regular conflict checks,
5. Challenge infringements promptly so as to avoid “tarnishment” by association with objectionable products or practices, or loss of exclusive rights due to generic uses of the brand name. Examples of names that used to be exclusive trademarks and became generic include aspirin, cellophane, spandex, and escalator.
Jump ahead to sections of this article here:
First of all, many who visit our website may not know exactly what a trademark is. A trademark is a name, logo, or combination of the two that is used to identify a product in the marketplace. The name component of the mark is synonymous with brand name, or simply, brand.
Trademarks differ from other types of “Intellectual Property,” such as:
artistic and written works protected by copyright
inventions and product designs protected by patent, and,
proprietary information protected by Trade Secret law.
A good way to remember the distinction is that a trademark is the brand name / logo of products that may have their design protected by patent, their content (books, software, etc.) protected by copyright, or their manufacturing process or ingredients protected by Trade Secret laws.
What is the Business Value of a Trademark?
The value of an effective trademark is that it forms the connection between consumers and trusted providers. As the product and brand builds a positive reputation, the trademark becomes more valuable. As people increasingly seek to create their unique style, a popular trademark can come to represent more than just a product. It can become a bold statement about status or lifestyle, expressing “This is Who I Am.” For the companies privileged enough to attain this position, it can be very rewarding.
Trademarks Create Opportunities and Challenges for Small Business Owners
Another reason that more small businesses are seeking trademark protection is that the cost of entering new markets has dropped considerably as a result of new technology including the Internet. These tools bring new opportunity for growth, and more financial reasons to protect your marks. They also bring new opportunity for competitors in distant places to begin using similar or identical marks in your area.
Small business owners who recognize these new opportunities and challenges are seeking options to protect their marks. Rather than go it alone or start with a law firm, they are using a combination of the do-it-yourself approach and the professional assistance of a reputable research firm. Trademark Partners has been helping fill this need for several years, focusing on serving small businesses and entrepreneurs.
In order to protect a trademark, you must first create a trademark. There is much written on the subject of selecting the right trademark, from a legal standpoint as well as a marketing perspective. The general rule is that coined or fanciful names like Kodak® (photographic supplies), and arbitrary names like Apple® (computers), make the strongest trademarks. However, they are also the hardest to market and create a meaningful impression on consumers because they don’t readily communicate the nature of the products. The next best option, especially suited for small businesses, is to create a suggestive mark. A suggestive mark relies on the consumer’s imagination to convey the nature of the product. Suggestive marks use existing words or parts of words creatively, like Coppertone® to suggest the benefit of using this brand of tanning lotion. Other examples include Chicken of the Sea® and Roach Motel®.
The trademarks that are hardest to register and defend are marks that use generic terms to refer to the product. They can still be registered after prolonged use based on the claim that they achieved a secondary (distinctive) meaning over time. However, this practice essentially negates one of the fundamental benefits of a trademark: forming a strong bond with consumers. Far better for small businesses to invest in creating and protecting a distinctive mark from the beginning, and spend the energy on developing their product and service instead of defending a generic mark. Generic words do nothing to differentiate your product and business from others or motivate prospects to call.
If developing a trademark has you stumped, or you need a second opinion on your mark, Trademark Partners offers a Branding Session & Creative Naming Package. This service helps you create a distinctive mark that communicates your unique strengths to your target audience. After the parameters are established, we create several proposed marks for your review. By using an objective outside source, you are guaranteed a fresh perspective and new options. Our trademark research skills contribute to creating a protectible mark; and we even screen potential marks against the federal database to weed out obvious conflicts.
Once a trademark has been selected you are ready to start the trademark process. At Trademark Partners we start with a comprehensive search for conflicts with existing marks, called the Trademark Supersearch™ service. This search checks registered and pending trademarks at the federal and state level (for all 50 States), and unregistered “common law” marks in hundreds of sources including business entity and “dba” filings in each State, brand and product listings, industry and trade journals, and newspapers. We have one of the most extensive common-law searches available, which is often where potential conflicts are found.
When the Trademark Supersearch™ service is complete, if you have a graphic design / logo element in your trademark we can perform a Federal Logo Search to find conflicts with other design marks. We check for logo conflicts with designs filed with the U.S. Trademark Office based on the principal elements of your logo. This search often produces over a thousand individual designs to be individually reviewed. When completed, a report is created to document the search strategy and results.
Apply for Federal Registration
When the name and logo searches are complete, you are ready to proceed to the application for federal trademark registration. Trademark Partners provides an Application Service to help you prepare and file the application. In this process, we email a questionnaire that requests basic facts about your mark and products, and we conduct research on other marks that were registered for similar products. We return proposed wording for the application for your final approval. We then file the application electronically for you, or walk you through filing it yourself. At the time of filing, a filing fee of $325 is due to the Trademark Office for each Class of Goods and Services being claimed.
After filing the application electronically, your case will be assigned a Serial No. by the PTO within approximately 25 days. You can then track the status and progress of the application. Within six months of the filing, you should receive an approval for publication, or an “Office Action” letter asking for more information or revision to your application. Approximately three months from the date the Office Action is addressed and application is approved, the mark will be published for opposition. Provided there are no oppositions filed, in three months you can expect the registration to be issued. You will then be authorized to use the Registered Trademark ® symbol. With registration you will be entitled to additional protections against trademark infringement under federal law.
After receiving the trademark registration, you are expected to monitor for infringements of your mark, and challenge them promptly. Monitoring basically means regularly searching for conflicting uses of a trademark that is identical or similar to yours, and keeping up on product names used in your industry. To challenge an infringement, one usually sends a "cease and desist" letter. The letter is even stronger when sent by an attorney. If the infringement persists, a lawsuit may be necessary. If it reaches this point, the extent of your conflict search and your registration of the trademark will contribute to the strength of your case.
Avoid Conflicts by Following the Trademark Process
The ultimate purpose for following the Trademark Process outlined here, in addition to creating a great trademark that helps promote your business, is to avoid trademark conflicts before they happen. Performing a thorough conflict search allows you to avoid infringing on existing marks as much as possible, and registration provides public notice of your claim and discourages infringement.
