Trademark FAQ

1. Why is securing trademarks important for my brand?

The purpose of a trademark is to protect a recognizable symbol, design, phrase, or expression that is identified with products and services specifically related to your brand. A trademark identifies you as the source of those products and services and distinguishes you from others.

2. What’s the difference between a service mark and a trademark?

A service mark, SM, is used to protect a symbol, design, phrase, or expression that identifies and distinguishes you as the source of a service, rather than goods, as with a trademark, TM. Both marks can use the registration symbol, ®, after they are federally registered. Typically, the unique advertising campaigns associated with legal marketing will fall under the service mark category. However, this can be just semantics; the term “trademark” is used universally to refer to both service marks and trademarks.

3. What is the benefit of having federal registration?

You don’t need federal registration to establish your rights in a trademark. You can base your claim on common law rights from the actual use in commerce. However, with federal registration you enjoy:

  • public notice of your claim;
  • legal presumption of your ownership and exclusive rights nationwide;
  • the ability to use the federal courts in defense of the mark;
  • the right to use the registration symbol, ®;
  • and more advantages.

4. Who can file for a trademark?

The simple answer is: the person who owns and controls the symbol, design, phrase, or expression related to the nature of the goods and/or services it promotes. The trademark owner can be a person, company, or any other legal entity.

5. What are the basic steps needed to proceed with a trademark application?

After identifying the applicant/owner, there are four basic requirements in getting started:

  1. A clean search (no hits) for similar or conflicting marks
  2. Active use of the proposed mark in commerce
  3. First use/publication date identified
  4. An example of current use

An option for filing without “current use in commerce” is available, but recommended only if strategy should dictate.

6. What’s the most important thing to consider after receiving registration?

That’s simple: defending and enforcing your intellectual property rights. Trademark law states that if you repeatedly fail to defend your mark, you will lose your rights on that mark. Bottom line, prior to filing an application, defending your trademark should be considered as part of your overall strategy. If you are not prepared to defend your trademark, then I would recommend you forgo the application and save both time and money. A defenseless trademark has no value.

7. What are some typical trademark complaints?

First, it’s important to remember that the United States Patent and Trademark Office (USPTO) is the official agency for registration. They do not conduct policing actions or assist you with enforcing your trademark rights. That said, the basic premise of a trademark complaint revolves around confusion. Are two or more marks likely to cause confusion in a public forum, so that consumers would mistakenly believe goods or services come from the same source? It’s likely there will be little or no consensus between parties on this question, which can lead to the beginnings of a potential infringement claim.

8. What qualities should I look for when selecting a good trademark?

Some marks are easier to protect and defend than others. A strong mark—one that lends itself to proper protection under trademark law—possesses unique and distinctive qualities. These are sometimes called “fanciful” or “arbitrary” marks.

Fanciful marks involve selecting creative or unusual names, often using words that are created and readily not found in the dictionary, such as “Google.” Arbitrary marks connect names or words that are not usually connected, like Apple for computers. Generic and descriptive words are the most difficult to register and protect.

9. From application to registration, how long does it take to trademark something?

While there’s no set answer, it typically takes 12-16 months to complete the trademark process, from application to registration. The length of time depends on the mark selected, the basis and support given for registration, and the thoroughness and correctness of the application. If the application is not completed and handled properly, delays while responding to USPTO requests will likely follow.

10. Do I need a lawyer to file for a trademark?

No. However, navigating the federal trademark registration system efficiently and effectively can be daunting. With or without a lawyer, applicants must follow all rules and requirements of the trademark statutes in seeking registration. But, that’s just the beginning. With a lawyer you get guidance and support before, during, and after registration. From the initial strategy, to surveillance and policing, to stopping potential infringers, having a lawyer on your side for the entire journey can help make your intellectual assets more valuable, not to mention save you from costly legal problems in the future.