Trademark Registrations: The 411
Are you thinking about registering a logo or wordmark for a trademark? The trademark registration process is a complicated endeavor and as a result, it is always suggested that you obtain the help of a professional legal advisor in order to ensure the process goes as smoothly as possible. However, there are some basic fundamentals that you may want to be aware of before you begin the process and as a result, I’ve created this post just for you.
Trademark Registration Basics
What is a Trademark?
The dictionary definition of a trademark is defined as “any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate specific goods and to distinguish them from those manufactured or sold by others.”
In essence, your trademark is your company’s unique identifier and once registered, is expressed with the use of the ® symbol.
Why do you need a Trademark?
A trademark is not only an effective tool for communications and advertising, but it also identifies that you are the proprietor of the mark and therefore enables you to enforce it in the event someone should decide to infringe upon it.
Registering a Trademark
Trademarks are registered through the United States Patent and Trademark Office (USPTO). However, before jumping in and having an application submitted, it’s best to consider searching the USPTO’s Trademark Electronic Search System (TESS). The system contains a database of both registered and “prior pending” applications and can be used to assess whether or not a mark is, in fact, liable to be registered in the first place.
The system gives users a number of options to choose in conducting their search including a Basic Word Mark Search, a “structured” Word and/or Design Mark Search and a “free form” Word and/or Design Mark Search, which allows you to conduct your search using “Boolean logic and multiple search fields”.
When conducting any search other than the basic word mark search, it’s essential to first consult the Design Search Code Manual so that you’re able to grasp an understanding of the various categories and search codes that are used in identifying marks.
One of the many reasons that it’s recommended to obtain legal counsel when registering trademarks is because the process is extremely detailed and can be fairly complex for those who aren’t well-versed in trademark law and the various rules and regulations associated with registering a trademark with the USPTO. Additionally, those well-versed understand certain elements that may elude others.
For example, when doing a search, one of the things we look for is how strong the trademark is. Obviously, if we run a search and find there is a direct hit for the same mark in the same category, then it’s a definite no-go.
But, if we run a search and find that a lot of marks are popping up that are basically the same, phonetically similar or what we call “confusingly similar”, then this means that the mark is very weak and therefore not distinguishable enough to differentiate your brand from others.
There are many scenarios as such that impact the effectiveness of your search and thus, the approval process and level of legal protectability you can receive, so keep this in mind when considering legal counsel because many times it can save you in the long-run.
Are there any fees associated with Trademark Registration?
Trademark fees vary based on a number of factors including the basis of the filing (i.e. commerce use or intent to use), the filing option chosen, and the class of goods or services. However, basic electronic filing fees (which are less than paper filing fees) are grouped into 3 main categories:
Option 1 (TEAS Plus)
$225 Per Class
Option 2 (TEAS RF)
$275 Per Class
Option 1 (TEAS Regular)
$400 Per Class
*NOTE: TEAS stands for Trademark Electronic Application System
These options are all calculated on a “per class” basis and as a result, they can vary depending on how many classes the goods or services fall under. For example, let’s say you file an application for a mark for your company, which creates smartwatches, but you also want to use it for apparel goods like T-shirts. Well, smartwatches fall under the Class 9 category and T-shirts fall under Class 25 – which means you have to pay the fee for both classes in order for your application to be approved.
The filing requirements also vary significantly depending on which filing option is chosen. For example, TEAS Plus may be the most cost-effective, but it also has the strictest requirements.
TEAS RF (reduced filing) authorizes the USPTO to send email correspondence and requires the applicant to provide an e-mail address and agree to electronically file certain “application-related submissions” that may be necessary during the process.
TEAS Regular, on the other hand, is the costliest option, however, it doesn’t have the additional requirements that the TEAS Plus or TEAS RF do.
Keep in mind that if you decide to file using a TEAS Plus or TEAS RF application and you don’t end up satisfying all of the necessary requirements (such as including certain statements), then you’ll furthermore be required to submit an additional processing fee of $125 per class of goods or services and the application will then be handled as a TEAS Regular application.
How long does the registration process take?
Generally speaking, you should receive an initial response from the USPTO regarding your application within 3 months of filing. However, the entire process from start to final approval can take anywhere from 6 months to a year or even potentially longer. It really just depends on the load they have to deal with.
Should you register your wordmark and logo together with your trademark?
One of the biggest questions I get from clients is whether or not they should register their wordmarks or logos together with their trademarks. A big factor in this is often that clients are looking for the most cost-effective option that will also be the most prudent decision for their business. Many people also assume it provides them with the most protection if they register both elements together, however, this is not necessarily the case.
This is because if you register both together, then the USPTO will recognize them as a unit, together. So, if you wanted to use the wordmark for one part of your business and the logo for another, then you wouldn’t have the highest level of protection.
For example, let’s say someone takes the same word you’ve trademarked along with your logo and starts using just the worded portion for their own business purposes. You could make the argument that since the two are registered together and perhaps the wording isn’t as significant as the logo, it is therefore negligible and doesn’t automatically constitute infringing on the trademark as a whole.
So, in my opinion, I like to say that if funds are tight – focus on trademarking the element that serves as the more defining piece of the two that will point to your brand most easily. Generally speaking, this tends to be the worded portion. Keep in mind that the big businesses trademark every single little element in order to cover themselves as much as possible.
I also think it’s worth mentioning that you really want to take the time to consider investing in your logo for a number of reasons.
First, on more cost-effective outlets such as Fiverr, you’ll often run into situations where designers recycle logos or use elements that they haven’t exclusively created themselves from scratch in the first place. You never want to get into a situation where you’re spending all of these resources and efforts in getting marks registered only to find out you never owned them in the first place.
Secondly, rushing the choice or just slapping together the most cost-effective solution you can find increases your chances of wanting to change your logo down the line. You don’t want to waste valuable resources or run the risk of your logo being voided as a whole because both elements were trademarked together.
Take the time to perform due diligence, and it will save you loads in the long-run.
Needless to say, the process of registering a trademark can be extremely time-consuming, complex and costly – especially if you’re not familiar with the various rules, regulations, and requirements necessary in order for your application to be approved. I’ve given you the rundown of the basic fundamentals and hope that I’ve done my part in helping you to gain a more well-rounded understanding of the process.
Feel free to let me know if you have any other questions or concerns on the topic and I would be more than glad to help provide further insight!
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