Often times people confuse the main types of intellectual properties which are: patents, trademarks and copyrights. Patents are scientifically and/or technologically oriented and protects inventions like machines and ways of manufacturing. Copyrights are often entertainment oriented and protects artistic works like books, painting, movies and music. This article is going to focus on the trademark, aka trade mark or trade-mark, which are business oriented and protects brand names, slogans and logo marks.
A Brief History of Trademarks:
From the time that humans first began to roam the earth, people used marks to indicate the producers of good. Egyptians and Greeks used marks to indicate who made particular bricks and ceramics and who was to blame if the bricks failed. The Roman Blacksmiths who made swords were thought of as the first users of a trademark system. In 1266 King Henry the III’s Parliament of England was the first to pass official legislation which required bakers to mark the bread they made and sold. The usage of trademarks and their complexity has evolved however trademarks always essentially indicates the source. A trademark is a word, letter, number, design or combination of those that identifies one party who is responsible for particular goods or services. Over time trademarks gain reputations and can drive purchasing decisions.
The first comprehensive trademark registration was put into place in France in 1857 with the Manufacture and Goods Mark Act and this spread to Britain to make it illegal to copy another brand’s trademark, especially with intent to defraud or to enable another to defraud. In the United States, Congress revised their Trademark Act in 1905. With the spread of industrialization and then television in the 1950s, Americans became aware of the countless number of products on the market and a backlog of appeals began to pile up in the Patent Office. The Trademark Law Revision Act was passed in 1988 to bring U.S. Trademark Law more in line with the global market. Another amendment in 1999 saw the introduction of the Anticybersquatting Consumer Protection Act to protect your domain name and online presence.
We highly recommend consulting with a trademark attorney to help you with the filing process. The purpose of this article is to brief you on the process of filing for a trademark and updating ownership later down the line so that you have a better understanding when speaking with an attorney.
The Differences between ®, ™ and ℠ and where to place them:
There’s a difference between using a trademark ™ and owning a federal trademark registration ®. You have common law rights to use ™ or ℠ after your slogan, name, design or combination thereof to identify the source of goods and services. If you’re not registered with the United States Patent and Trademark Office (USPTO) you can claim the TM or SM as your mark, however there is no legal protection. The ℠ symbol means Service Mark which specifies services rather than goods, however the ℠ abbreviation is rarely used because it reminds people of the abbreviation of the derogatory term Sadomasochism, which has nothing to do with protecting your brand. The TM symbol works in the world of business and the TM symbol should be preferred. A federal registration allows you to use the circled R symbol (®) only after you’re officially approved. This proves to the world that you’re using the mark for interstate commerce. Respecting other’s trademark helps customers to not confuse you with your competition. Always use the correct trademark symbol with your trademark. The ® symbol may not be used while the Federal application is pending. Additionally, the ® symbol may only be used in connection with the goods and services listed on the registration certificate. Registering allows you to take advantage of nationwide protection and provides a basis for foreign trademark filing*. If your trademark is registered, you can claim damages and court costs if you have to sue a competitor for infringing on your brand. *You can also block foreign products and services with a similar trademark from entering the U.S.
If you have not properly noticed your trademark you will not be able to recover costs from your competitors. The ® symbol also allows you to prevent infringement in federal court. The USPTO does not defend and enforce those trademark right, however the USPTO will cite your registration against later filed applications that they deem confusingly similar. If you need to pursue an infringer, you’ll need to do that on your own. Registering your trademark grants you a powerful set of rights that you can use to protect your brand.
You must place your registered trademark prominently so that people will notice it, and it must look different from other surrounding words. It’s important to use you trademark as an adjective, and not a noun. Usually the symbols are placed in the upper right hand corner of a word, logo, or identifying mark. The next best option is the lower right hand corner. Sometimes companies place the trademark symbol near the first use of the trademark and then they provide an *asterisk, †dagger or ‡double dagger symbol indicating that the footer of their website or the bottom of a printed paper needs to be checked for a description of the trademark (for example “† Creative Repute Graphic Design Agency and the CR logo are trademarks registered in the US Patent and Trademark Office.” or its abbreviated form Reg. U.S. Pat. & Tm. Off. for all US registered trademarks.)
Three Avenues to File and Why Hiring an Attorney is the Best Option:
Over 50% of trademark filings are initially rejected. For quality trademark filings through a lawyer you can expect to pay between $500-$2,000 and the process to complete filing can take 1-3 years. The examination process is critical to fostering innovation and competitiveness in the marketplace, which is part of the reason why it takes so long. You could file your self on the United Stated Patent Trademark Office’s (USPTO) website for $275 however the legal jargon can be hard to navigate and they recommend hiring an attorney before you begin.
You can access the Trademark Electronic Search System (TESS) on USPTO.gov to search the database of registered trademarks and prior pending application to find marks that will prevent your registration due to a likelihood of confusion refusal. You can search for both word and/or design marks.
The owner of the mark is not necessary the name of the person filling out the form. If the owner of the mark is a corporation, partnership, llc, or other legally formed business then you need to include the name of the business as the applicant name. Use the state that the business was incorporated.
You’ll need to understand that a drawing of your logo mark is not the same a specimen. A drawing of the mark shows how you use your logo in connection with your goods and services (for example, on the tags of a t-shirt) You’ll need to specify if your business provides goods or services.
If you make a mistake, there’s no refund. Common mistakes include not researching your logo, formatting it correctly, wording your application incorrectly, and bypassing an attorney’s help. You’ll not only have to pay the filing fee again to correct any mistakes, but you might need to hire an attorney to sort things out, which will cost you more than hiring on in the first place.
Online services like LegalZoom costs around $500 total and includes a basic search of the federal trademark system to see if there are any conflicting names exactly like yours. They will help you adjust the color of your logo as well and assure that you fill out the form correctly, however they provide no legal counsel. If your trademark application is rejected, the explanation is sent to you and Legal Zoom isn’t involved in resolving the matter.
The most recommended route is hiring a trademark attorney for $1,000-$2,000 which includes the filing fee. An attorney may charge +$300 an hour for any projects outside the initial scope of work, such as filing disputes. Trademark attorneys are able to offer you the most value because they provide extensive trademark search to make sure your logo doesn’t infringe upon previously filed trademarks. They can also offer advice on the design, uniqueness, and assures that your name/logo is being used in the way that qualifies it for a trademark. A trademark attorney will offer you the best chance of acceptance. It’s more about the preparation work than actual filing. Plus you can consult with your attorney about what the principle logo mark is vs the supplemental variations. The choice is yours, do what is right for you. Considering there are lawyers that specialize in trademark law and this is a legal proceeding we recommend letting a lawyer handle the initial filings.
Keeping your Trademark Application Up to Date:
If there’s a major change in your business you must report this to the USPTO. Changes includes changing business name, changing entity type and/or changing ownership hands. You need to keep your ownership information up to date. Any modification of the legal entity that owns the trademark application or registration need to be reported.
Let’s say the person that owns the trademark application gets married and takes on a new last name. They must record this change with the USPTO. If there’s a change in entity type that means the owner stays the same but the type of entity needs to be updated, and possibly the name. For example, let’s say ABC, inc reformed as ABC, llc. This business not only changed its entity type but also the business name (inc, to llc) and this must be updated with the USPTO. The final example is for a change of ownership hands. Here one party transfers, sells or assigns the business and thus the correlating trademark rights to another party or business. The USPTO needs to accurately reflects the most up to date registration records. Change in name, change in entity type and change in assignment are the three most common types of changes in ownership.
To update your files you can use the Electronic Trademark Assignment System (ETAS) on the USPTO website. You’re able to do everything online including reporting a merger, change your name or change you entity conversion. You’ll need to fill out the correct forms, upload any required documents and pay the filing fees. Supporting documents that you may need to provide depends on your state’s law, however the most common types of evidence required are copies of the original document that changed the entity type or transferred ownership of the mark or an excerpt from that same document, or a statement signed by both parties describing the change of ownership. For a change of name form, you do not need to submit a supporting document. You’ll only need to fill out the online form and fill the filing fee which costs $40 for the first trademark listed on the form and $25 for any addition marks listed in the same filing as of the year 2017.
The last thing you need to do is check the Trademark Status and Document Retrieval system (TSDR) to make sure your trademark application or registration records reflect the new ownership information. You should check this system every 3 to 4 months. Simply filing the changes doesn’t always update the database in all cases. You must notify the office if the changes you requested aren’t reflected in the system. In the trademark section on USPTO.gov there are guides and manuals on the proper procedures as well as practice tips on how to update ownership information after assignment is recorded.
Also make sure correspondence information is up to date. If you hired an attorney or domestic representative to fill out the forms on your behalf there’s a chance that the owner and correspondence information is not the same. There’s a separate form call Trademark Electronic Application System (TEAS) on the USPTO website for this. You want to be sure that the USPTO can contact you and that they have the most up to date mailing address, telephone number and email address. It is your responsibility to assure that the ownership information is up to date so that you can maintain control of your trademark.
Be aware that you will need to file your first maintenance filing between the 5th and 6th years after registration and the second maintenance filing between the 9th and 10th years after registration. Subsequent maintenance filings will need to take place every 10 years thereafter. There will be filing fees and failing to maintain your files will result in a cancellation of your trademark. On the up side, you can file for incontestability after 5 continuous years of using your trademark in commerce which adds an extra layer of security. This means there will be no adverse decisions or procedures involving the rights of the mark as long as your files are kept up to date thereafter. This is only available for marks on the principle register (principle means a fundamental source or basis of something). Those on the supplemental register do not quality for incontestability (supplemental means provided in addition to what is already present or available to complete or enhance it). Always keep your information up to date and carefully read forms. There is a Trademark Assistance Center that you can call for help 1 (800) 786-9199. Or if you have specific questions about filing your assignment or change of ownership you can call (571) 272-3350 for the Assignment Recordation Branch.
International Trademark Registration Process:
To recap: the U.S. trademark registration process is done through the U.S. Patent and Trademark Office (USPTO), and it involves:
1. Searching the trademark database to be sure no one else is using it
2. Filing the mark online, and
3. Paying the registration fee.
The international trademark registration system is called the Madrid system or Madrid Protocol.
It is administered by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland.
The Madrid system allows you to have a trademark protected in several countries by filling an application directly with your own member country (the U.S. is a member). The international mark registered with the U.S. is equivalent to an application or a registration of the same mark in countries you designate.
The trademark office of the designated country must allow the protection of the mark.
The Madrid system also simplifies management of your trademark or service mark, since you can record changes or renew the registration directly, without making those changes in each country of registration. You can also designate registrations in additional countries through the Madrid process.
An international application may be filed electronically using the U. S. Trademark and Patent Office (USPTO) Trademark Electronic Application System (TEAS) for International Applications. Electronic forms are accessible at http://teasi.uspto.gov/. Or you can use a paper form, available online at http://www.wipo.int/madrid/en. You can find more information on the Madrid Protocol and international trademark registration on the U.S. Patent and Trademark Office (USPTO) website.
