Trademark Basics
First things first – read the Intellectual Property Basics to make sure a trademark is what you actually need. As a general rule, trademarks protect brand identifiers, like names, logos, and slogans, but that’s not an exhaustive list. If you’re not sure, you can always ask.
Trademarks are full of industry jargon, so I’ve included a glossary of terms at the end. If I use a word and you don’t know what it means, check there. If I don’t include it on the list, ask! Additionally, note that this blog post is intended for words only, not logos or images. Logos have special additional rules and will probably be subject to their own blog post eventually.
Round One: Clearance
We know that the name you want to use is special and would be a great name! But unfortunately, we attorneys (and sometimes paralegals) can’t take your word for it because we have to attest that there are no conflicting marks. A mark is “conflicting” if it’s too similar to yours and being used on similar goods and services. The clearance process can take anywhere from a few minutes to a few days (or weeks, if you go to a big firm). It involves us combing the USPTO database of registered marks and sometimes a quick internet search.
Even if you’ve already done this, we might have to do it again. Knowing what to look for and how to look for it is a special skill that trademark attorneys and paralegals develop over time and with experience. Our findings are typically handed over to you in the form of a document called a Clearance Report, which states the risk assessment of pursuing registration and any potential conflicting marks. Keep in mind that we can’t speak in absolutes or state things with certainty (this is what law school really teaches us, haha), so if a lawyer says “it’s likely registrable” that usually means it’s a good trademark!
Round Two: Application
After the trademark has been cleared, or given the lawyer green light, you can apply. If you decide to go through with the application on your own, you’ll have to register for an account with the USPTO. Most of the time, filing the application is just a matter of filling out a form, but the form is very specific. Even I make mistakes on it from time to time and I’ve done this a lot. The most important parts are deciding:
1. Who owns the trademark – you, personally, or the business entity?
2. What International Classes of Goods and Services you’re going to use
3. Using a specimen or declaring intent to use
Who owns the trademark is usually a business decision, but all information you give to the USPTO is public information, and you will absolutely get spam emails and marketing mail. It’s not fun.
The International Classes of Goods and Services (usually just called “classes”) are the products and services offered in connection with the trademark. The categories are designated by a treaty (hence the “international” part). What you choose for these is really important because your trademark rights are determined by the classes you choose, and you can have more than one. Most of the time, you’re only protected from conflicting trademarks within the same international classes. Two different companies can use the same name as long as they’re in different classes. A good example of this is Delta. Delta is used for both airlines and faucets, and those aren’t conflicting marks because they’re different international classes. After you choose the international class, you have to narrow down the goods and services to the exact products you’re offering, but you can put anything and everything within one class. Any decent lawyer will help you with choosing a good international class.
The Specimen is proof that you’re actually using the trademark in the class you say you are. Trademarks are only protectable after you actually use the trademark in association with the class of goods. Most specimens are pictures of the website, marketing materials, or product packaging, but it has to show the trademark clearly as a label or brand name, not just using the word or picture.
If you’re not already using the trademark, that’s okay! The USPTO has planned for that with what they call an “intent-to-use” application (often called an ITU). There’s some additional cost with an ITU, but you basically tell the USPTO that you’re planning on using the trademark but the product isn’t ready to launch yet. You have some strict time deadlines, but if the USPTO approves the mark (which is called a “Notice of Allowance” in this case), you just have to submit the specimen when you’re ready.
Last in this section is disclaimers. Disclaimers are statements that qualify your application, like that your word translates to something else (eg. having a restaurant named Loco – you’d have to state that it means “Crazy” in Spanish), associations with living persons, and words that are just descriptions of the goods/services (eg. if the name is Loco Burrito Restaurant, you might have to disclaim “restaurant”). The application has the most common disclaimers; most marks don’t need them and the examining attorney will usually tell you if yours does.
Round Three: Things Go Wrong
After the application is submitted, it’ll eventually make its way to the examining attorney who either says it’s good to go or issues an Office Action. An Office Action is a refusal to register the mark. It’s a document they’ll send to you with their reasons why the mark can’t be registered. Sometimes it’s something small, like you used a PO Box instead of an address, and other times it’s something that you have to respond to with arguments in your favor. This is where you really want an attorney – the arguments determine whether your trademark is registered or you’ve wasted $250 (or more!). If you fail to respond to the office action within six months - with some exceptions - it’ll be determined that you’ve abandoned the mark.
If you respond and there are still problems, another Office Action will be issued. You can respond to this one, too, but it’s usually unlikely that matters of opinion will change.
Round Four: Things Get Worse
If the examining attorney has approved the mark, the next step is being Published for Opposition. This is a short time period where the public will be notified that your mark is going to be registered and if someone has a reason they think it shouldn’t be, they can come forward with an Opposition proceeding. An Opposition is an administrative procedure, kind of like a mini-lawsuit, that determines if the claim is valid. They’re uncommon; I’ve been involved with several oppositions, but none were members of the public opposing trademarks I’d applied for. If no one opposes your trademark, it goes on to be registered.
But registration isn’t the end-all, be-all. There’s still the possibility that someone will move to have your trademark cancelled. These are even more rare than oppositions, and usually by companies that want the trademark and have reason to believe the other trademark isn’t actually being used.
Round Five: Ongoing Protection
An important factor in the doctrine of trademarks is that you only own what you’re actually using. So if you stop using the trademark, you don’t really own it any more. Even worse, you can be subject to the doctrine of genericide, where what was once a trademark is just what we call the thing, now. This is surprisingly common with unique names applied to unique products. Tell me, what do you call that thing that’s like a sticker with some gauze you put on a small injury and is usually a light-skin color? Or what do you call the take-away cup you put hot coffee in when you’re leaving your house in the morning? Even better, what’s that thing that’s like a moving staircase that you see in malls? Band-aid, Thermos, and Escalator were all trademarks once. Band-aid is working really hard to protect theirs from genericide, as are Kleenex, Rollerblades, Xerox, Google, and Velcro.
There are ways to do this, and most companies never have to worry about it, but it’s important that you police the use of your trademark. There are also filings you have to make every few years stating that you’re still using the mark; the USPTO sends an email about these.
What’s all this going to cost you?
If you’ve made it this far, all my fear-mongering hasn’t scared you off, so that’s good. The reality is that most of the time, these problems aren’t going to happen (except office actions, those almost always happen) and you’ll have nothing to worry about. Various attorneys charge various prices, so it’s important to ask for cost estimates for each of the stages above; most will advertise something like “$500 for a trademark” but that won’t include the $250 paid to the USPTO or any responses to office actions.
Because I believe in clarity in fees, I charge the following for trademarks:
First Clearance Report (written): $350
Subsequent Clearance Reports (written): $250
Application, after written Clearance Report: $200
Application, no written Clearance Report: $300
Office Action: $500
TTAB Proceedings: $250/hour
Stripe Processing Fee*: 12%
UpWork Fee*: 20%
*The Stripe Fee is added on to fees paid to the USPTO so they can be timely processed. The 12% is deducted from any other payments made to Meghan the Attorney through Stripe. UpWork fees are added to all payments made through UpWork and is not refunded or deducted.
The USPTO also charges the following (non-exhaustive):
Application, per International Class: $250
Statement of Use (for ITU applications): $125
Filing an Opposition or Cancellation, per International Class: $600
Glossary:
Clearance – the processes of checking if there are any registered (and sometimes unregistered) trademarks that are already out there and are too similar.
Conflicting Mark – a trademark, registered or not, that is similar to yours and being used for similar products or services.
USPTO – United States Patent and Trade Office; the government agency that regulates the registration of trademarks within the United States.
International Classes of Goods and Services – the category of products/services associated with the mark. This is used to check for conflicting mark.
Specimen – proof that you’re using the trademark in the International Class you’ve selected.
Intent to Use (ITU) – an application that states you’re not using the mark yet, but you’re planning on it. You don’t have to submit a specimen, but there’s additional cost.
Notice of Allowance – the USPTO’s approval when you file an ITU application.
Disclaimers – statements on the application that qualify the mark, like translations, associations with living people, and that you’re not claiming a part of your trademark that’s just the name of the goods/services.
Examining Attorney – the USPTO staff member who is reviewing your application.
Office Action – a refusal to register the mark.
Opposition – a procedure where a member of the public can try to prevent registration of a trademark.
Genericide – the process by which a trademark becomes the generic term for a product or service and loses protection as a trademark.
TTAB – Trademark Trial and Appeals Board; the administrative board that handles registration-related trademark disputes (but not infringement)
