Trademarks & Intellectual Property

A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. As an entrepreneur or creative, it is essential to protect the hard work and investment you’ve put in to your business by protecting your brand, and its place in the market. One way of accomplishing this is by filing for a trademark with the United States Patent and Trademark Office (USPTO). A trademark protects your businesses likeliness, imagery, wording, and its commercial use in the marketplace by putting other persons and entities on notice as to your existence. Trademarks registered at the State level may be valuable to a business or brand on a case by case basis, specifically for subject matter jurisdiction, venue, and other legal purposes. However, an approved Federal Trademark is by far the most effective means of defending your intellectual property from infringement, fraud, and theft.

Why Should I get a Trademark?

Use in Commerce creates a trademark locally, without filing. Therefore, the mere existence of your brand and Intellectual Property affords you the right to bring a trademark infringement claim even without registration of your trademark. However, your right to bring a lawsuit to protect your unregistered trademark is generally restricted to the geographic area where your brand has entered the stream of commerce and/or the location where you do a reasonable portion of your business. Generally, this does not prevent the use of the non-filed trademark in other cities or states and leaves your brand open to being copied.

What is an International Class and why does it matter?

A “Class” refers to the area of commerce your good or service occupies. The USPTO requires you to file a separate trademark application and separate filing fee for each class you intend your trademark to be affiliated with. You must pay for each class of goods and/or services in the application. The “class” refers to the “international” class number assigned to the goods/services.

Note: The number of “U.S.” classes is irrelevant, except for some old U.S. registrations. And while an international class number is used, this is only for the purpose of world-wide consistency; i.e., through the USPTO, you will receive, if approved, a registration covering all 50 states and the U.S. territories, not some sort of international protection. There are hundreds of classes, therefore it is essential that you are aware of the purposes for which you intend to use your trademark presently, and in the foreseeable future.

What is the Drawing and why does it matter?

Every application must include a clear image of one mark (“the drawing”). The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette (OG) and on the registration certificate. If you have variations on the mark that you wish to register, each requires its own separate application and fee. There are two types of drawings: “standard character” and “special form.”

Standard Character Drawing

A standard character drawing is commonly submitted when the mark you wish to register consists solely of words, letters, or numbers. A standard character mark protects the wording itself, without limiting the mark to a specific font, style, size, or color and therefore gives you broader protection than a special form drawing. A standard character drawing must have the following characteristics:

o No design element;

o No stylization of lettering and/or numbers;

o Any letters and words in Latin characters;

o Any numbers in Roman or Arabic numerals;

o Only common punctuation or diacritical marks

Special Form Drawing

If your mark includes a design or logo, alone or with wording, or if the particular style of lettering or particular color(s) is important, you must select the “special form” drawing format. If you are seeking registration of a word(s) combined with a design element, the drawing must depict both the word(s) and the design element combined as one image.

How much does it cost to file a Trademark?

There are two separate filing processes and fees associated with filing for a Trademark. Payment of these fees go directly to the USPTO and are required in order to file your Trademark Application:

o TEAS Reduced Fee ($250) offers rigid application guidelines, and requires the applicant to:

Provide an e-mail address and authorize the USPTO to send e-mail correspondence concerning the application throughout the application process; and
Applicant agrees to electronically file, through TEAS, certain application-related submissions that may be filed during the application process, such as voluntary amendments and responses to Office actions.

Note: TEAS RF applicants do not need to select an identification of goods and/or services from the Trademark ID Manual or satisfy the other TEAS Plus requirements noted above at the time of filing. An applicant who files a TEAS RF application but does not satisfy the relevant requirements will be required to submit an additional processing fee of $125 per class of goods or services.

o TEAS Regular ($350)

TEAS Regular applicants are not required to comply with the additional requirements of TEAS Plus or TEAS RF, but are nonetheless encouraged to provide an e-mail address for USPTO correspondence and use TEAS to electronically file application-related submissions to the USPTO

Can I transfer ownership of a Trademark to another person or business?

You can transfer (assign) ownership of a mark to another entity or change the owner name and search the Assignments database.

How long does it take for the USPTO to review a trademark application?

Generally, it takes approximately 5-6 months for a Trademark application to be reviewed by an Attorney Examiner. The USPTO recommends applicants check on the status of their application every 60-90 days. The entire process from start to finish, could last as long as one year from the date of filing. Note that an approved trademark is recognized as having started on the original filing date, NOT when the application was approved.

What happens if my Trademark application is rejected?

Where an application is rejected, applicant does have a right to appeal the agency’s decision.