Learn About Trademarks
what is a trademark?
A trademark can be anything that describes your brand. A trademark can be a name, word, slogan, symbol, logo, image, a play on words, a word formed by combining parts of other words that serves to both identify and distinguish a business or product from others in the market. It's intent is to create a brand recognition such that when people see your trademark, they immediately think of your business and the goods and/or services you provide.
Once you have trademarked your business, if someone else makes an attempt to use something similar enough to confuse customers, you have the right to legally protect yourself and stop the other party from using the similar mark.
what is required to register a trademark?
Regardless of whether your mark is a word or words, or an image, in order for your mark to be approved for registration by the United States Patent and Trademark Office (USPTO), the mark must be distinctive and in use in commerce and the marketplace. If you have a mark that is not yet being used in commerce, you can still obtain a trademark by making a good faith argument in writing to the USPTO and use the symbol at some point in the future. There are a variety of reasons why you may want to initiate the trademark registration before using the mark in commerce.
There are four different categories of distinctiveness for trademarks: descriptive, suggestive, fanciful or arbitrary, and generic.
Suggestive and arbitrary marks are considered inherently distinctive with their eligibility being determined by whoever is first to register them.
Descriptive marks, including geographic terms, and personal names must have an established secondary meaning in the consumers' mind in order for approval to be granted. You cannot trademark a term that is considered generic.
Depending on the mark that you choose, application for trademark can be anything from rather straightforward to complex and confusing requiring the persuasive skills of an attorney.
why are trademarks important?
It is a good idea to register the name of your business as a trademark along with any slogans, tag-lines or logos that you want people to readily associate with only your business. In the event that another business tries to use the same or similar name, logo or slogan, you will have legal recourse to force them to cease using your mark. A trademarked name marks all of your products and services as yours and no one else's and can also protect you from counterfeit products.
Trademarks are usually registered at the federal level, so they are recognized in all 50 states. State registration is possible, but it provides a much more specific level of protection.
With a trademark, you retain exclusive rights to mark your products, service offerings, brochures, etc. in a way that identifies your brand, with no one else being allowed to use your symbol, name, or slogan in your particular category of the goods and/or services you provide.
Trademarks are also used as a way of protecting consumers. When businesses are responsible for any products or services bearing their trademark, they tend to take more pride in products. To maintain a good reputation, trademarked companies will often work harder to provide quality services and products. Trademarks are an important part of running a successful and client-focused company.
WHAT ARE OFFICE ACTIONS?
Once your initial application for trademark registration is filed with the USPTO, it will be assigned to an Examining Attorney ("EA") who will carefully review your mark and compare it to others that have already been registered or are pending. The EA will also critically look at your mark to be sure that it is, indeed, eligible for registration. Examples of issues that could cause concern are a) the mark is confusingly similar to another mark, b) the mark is merely descriptive of the goods or services it is sold in, c) the specimens submitted are insufficient to show how the mark is being used in commerce or for several other reasons.
The actual document you receive from the USPTO can be quite overwhelming at first glance as it will be full of legal arguments, refusal text and case law. In reality, some office actions are fairly simple to resolve and more administrative in nature. These are called non-substantive office actions. Others are more complicated and are much more difficult to resolve. These are called substantive office actions and usually require the experience of a lawyer to make sound legal arguments and defenses while providing relevant evidence to overcome the EA's refusal.
Office actions can be both challenging and confusing, but any refusals you receive can, in many cases, be overcome. If you received an office action, you have a limited time in which to submit your response to the USPTO. Contact The Law Offices of Michael Rada to learn how we can help respond to both substantive and non-substantive office actions on your mark's application.
Click HERE for more information on USPTO fees for trademark registration.