Are you properly protecting your brand? Are you currently using a trademark or service mark that is gaining in value? We have found that many of our small and mid-sized business and non-profit clients have interesting, notable, and most importantly RECOGNIZABLE logos, slogans and names - also known as trademarks. But we have also found that many of these clients are not protecting their trademarks.
Trademarks are - or at least can be - very valuable assets to your business venture. They can be licensed or sold, and they can gain in value over time. But many business owners (for profit and non-profit alike) simply hang their valuable trademark asset out there for all to see without asserting any rights to the mark. Under law, once the owner of a mark has created and used a trademark, certain ownership rights begin to accrue. If you are using such a mark, you should attach the familiar "SM" (service mark) or "™" (trademark) near the mark whenever you use it to indicate to others that you claim rights in the mark. While use of these symbols does not entitle you to federal statutory protection, it is recognized as a "no trespassing" sign of sorts and does provide you with certain state and federal common law protections. You cannot use the "®" symbol until you have received a registration certificate from the United States Patent and Trademark Office (USPTO).
So how does one secure a registration, and therefore secure full federal statutory protection for your trademark? The USPTO has created and implemented an on-line filing process that makes federal registration far more accessible. The down side, however, is that the registration process, including the on-line registration system, requires some level of experience in order to completely and accurately file, and respond if the USPTO requires further information. The good news is that USPTO fees for the in-line registration system are less than filing on paper, and less than they were prior to the establishment of an on-line system.
Other costs that are often associated with a trademark application include securing a professional digital drawing and, depending on the nature of the mark and the channel of trade, securing a professional trademark search to determine whether your mark can actually register.
As far as timing goes, if there are no irregularities during the process, an attorney would normally be able to prepare and file the application in a relatively short period of time. Upon receipt, the USPTO internal process may run 8 to 10 months. If an issue arises - such as the discovery of a confusingly similar registered mark or a request for further information - final registration may be delayed. However, certain protections begin to accrue immediately upon use of the mark.
To apply on-line you will need an electronic (jpeg) drawing of the mark and PDF specimens depicting the mark in use. Specimens may include brochures, flyers, photographs, web site screen shots and the like. You will also need to know the date the mark was first used, and a list of the goods or services identified by the mark(s) (e.g., insurance brokerage services). Our firm can arrange an electronic drawing of the mark, if necessary, which meets the Trademark Rules of Practice.
After an application is filed the USPTO assigns an Examining Attorney to review the mark(s) to determine whether they infringe upon an existing registered mark, are confusingly similar to another mark or are "merely descriptive". You can also retain a professional trademark search firm to review all publicly available information to determine the viability of your registration covering USPTO files, the internet, state trademark registration files and a wide variety of other records. Sometimes the USPTO Examiner will ask for disclaimers or other alterations in the application, especially if the words in the mark are not exclusive in the marketplace.
Finally, when all such procedural hurdles are surmounted, your trademark will be registered and your valuable asset will be even more valuable, and you will have added an important layer of protection for your asset - the registered trademark.