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A trademark search is a search of public and/or private databases to find out whether your desired trademark is available.
You do not have to do a trademark search. But if you start using a trademark, or pay to apply for registration of a trademark without doing a search, you may later discover that someone else already owns a conflicting trademark. If this happens, you may be liable for trademark infringement. If the other person started using their mark earlier than you used yours, you will not be able to get a trademark registration. In addition, you will be required to choose a different trademark and change all of your branding. This can be frustrating and very expensive. You should at least run a free trademark search on Trademark Counsels search engine before you request to file your trademark to the USPTO.
A good trademark search can help you avoid these risky and expensive mistakes. By investing a little extra time and money to do a clearance search, you will be able to have the confidence of applying for a trademark that is actually available. We recommend you at least run a free trademark search on the Trademark Counsels search engine platform.
There are a number of reasons including:
Once you have a great product and a great name to go with it, you should do a trademark search to see if that name is already taken or sounds like someone else's. A trademark attorney can analyze the results and tell you whether you can proceed. Some trademark companies might be able to conduct a search although we are not sure how they obtain their qualifications or where they learned Trademark Law but will NEVER be able to advise you on the search nor provide an opinion. At trademark counsels, you can consult with independent attorneys to get proper advice and make the whole process very economical. We have seen countless examples of how people have lost money in hiring trademark companies or ‘specialists’ and also rights to their brands by incorrect filings. Why take a chance?
Trademark registration is a legal proceeding with strict procedures and deadlines, trademark counsels familiar with the process can handle registration more efficiently than you can on your own. A trademark attorney can advise as to which aspects of your brand need trademark protection and which don't. Make sure that your trademark application is filed correctly from the start, so you don't forfeit filing fees, and respond to preliminary refusals from the U.S. Patent and Trademark Office. It can be difficult to do successfully if you don't have the appropriate legal experience. You can always get in touch with live chat to have more details on how in profit with trademarkcounsels.com.
Trademarks are the cornerstone of your brand. They identify your company as the source of your goods/services and distinguish you from competitors. A trademark lawyer helps ensure that your brand is strong and lasting by analyzing your logos and company name to establish the strengths and weaknesses of those marks, and developing a long-term protection plan. Also, hiring trademark counsels help avoid the potential cost of rebranding in the future. An ounce of prevention is worth a pound of cure.
In the United States, a trademark owner needs to renew the registration within six years of the initial registration and every 10 years thereafter. A trademark attorney can ensure the registration remains valid. This is easily overlooked, but a big hassle if the deadlines are missed. With trademark counsels, you do not have to worry about such deadlines.
A trademark generally protects a word, phrase, symbol and/or design that distinguishes the source of the goods -- what we think of as brand name and brand recognition. A patent generally protects an invention, including the functionality or design, or in other words, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. A patent typically gives the owner the exclusive right to manufacture products or employ processes covered by the patent for 20 years from the earliest priority date. A trademark, if properly maintained, can last forever. Copyrights, meanwhile, generally protect artistic works such as books, photographs, arts, movies and music.
Under U.S. law, a “common law trademark” is generally established when someone uses a company name, logo or slogan in commerce, even if it is not registered. So, why pay to register a trademark when a common law trademark may already exist? Common law rights ordinarily are limited to the geographic area where the mark is used as opposed to the nationwide protection customarily obtained when a mark is registered with the USPTO. So, unless registered, the use of a mark can be geographically limited, which hampers the ability to expand the brand. On the other hand, a person using a mark in a limited geographic area could be boxed in by someone else who offensively registers a similar mark. In addition, registration of a trademark can give the person holding the registered trademark a leg up in court as to the validity of the mark and the date of usage in later trademark infringement litigation, if it comes to that. There are also favorable remedies available to registered trademark owners in the event of litigation. Finally, once a trademark is accepted by the USPTO, it will be maintained in the USPTO database, which can discourage others from using the mark in the future. Future companies should be on notice that the mark is already spoken for, which should in turn help avoid at least some disputes.
Trademark registration on the Principal Register provides exclusive rights to prevent unauthorized use of the trademark. The main benefits of registering a trademark are that, it provides: a) constructive notice to the public of the registrant’s claim of ownership of the mark; b) a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration; c) the ability to bring an action concerning the mark in federal court; d) the use of the U.S registration as a basis to obtain registration in foreign countries; and e) the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods
Trademarks are normally used to register a name, logo or slogan related to the sale of goods.
Service marks are often used to register a name, logo or slogan related to the sale of services.
Intent to Use applications can be useful for a future mark that is not yet used to sell goods or services. Such applications can serve to establish a company’s place in line on the date of filing as opposed to the date the mark is actually used to begin selling goods or services. Goods and services bearing the mark usually need to be sold to hold the company’s place in line and validate its application, and then update the USPTO. Under those circumstances, the company may consider filing a Statement of Use, which can be done through a customized portal on Trademark Counsels, and generally should be done within six months of the registering an Intent to Use trademark. Up to five additional six-month extensions may be available on request and if good cause is demonstrated.
It may be more time efficient and cost effective to do a quick search before registering a trademark. A search may help avoid obvious duplications of pre-existing marks and the expenditure of nonrefundable applications fees.
Newer companies may more easily make name changes while they are getting off the ground than years later and after substantial investment in a brand and associated goodwill.
Running searches with the USPTO does not guarantee superior rights to a particular mark. There could be someone already using a similar mark, but who did not register it with the USPTO. In that case, a registration could be subject to challenge by the owner of the earlier-used mark based on of common law trademark rights.
Before you apply for a trademark, you should run a free trademark search on Trademark Counsels platform to see if any other trademarks are already registered or applied for that are:
(A) similar to your trademark and
(B) used with related products or services
A trademark that is similar to yours and used with related products or services will block your trademark from being registered because it creates a likelihood of confusion. Doing a search before you file your application can help avoid expensive errors.
The USPTO does not guarantee registration. They approve or reject new applications on a case-by-case basis. Once an application is filed, no changes are permitted. The USPTO will not refund fees for rejected applications. You should at least run an online trademark search on TrademarkElite.com free trademark search engine before you request to file your trademark to the USPTO.
There may be advantages to registering both a name and an associated logo. But bear in mind, each filing requires its own government filing fees and processing fees to Trademark Counsels so registering both costs more than $600.
A more budget-friendly option could involve registering just a company name. Wrongful use of names seems to be more common than wrongful use of logos. Trademarking a name generally provides broader protection because it prevents any use of the name that causes confusion, even if someone tries to use the name within a unique logo.
A mark for a logo typically protects the shape, orientation, stylization and sometimes color in that particular logo. Registering ordinarily prevents others from using that logo or something confusingly similar to the logo. Even if a company name is in the logo, registering the logo may only protect the use of that name in the particular way it is used in the logo and not the use of the name more generally. Moreover, amended or redesigned logos usually require a new application for the new logo. As may be expected, logo changes seem to be more common than name changes.
There are a number of different categories (also known as an International Classes) that can be used to identify particular goods or services. The USPTO has developed a pre-determined list of trademark categories from which to choose. It may be helpful to register a mark within multiple classes (such as the name of company and the ability to sell t-shirts the company name on it). Bear in mind that there is a USPTO filing fee for each selected category. Check out the Trademark Counsels' User Manual to see broader descriptions of each available category.
Before picking a category, it may be helpful to decide if you are selling a good or a service. Goods are generally physical items like nuts, bolts, beer and t-shirts. Services generally focus on particular activities such as legal, consulting or accounting services. In some circumstances, it may be helpful to register under multiple classes.
The selection is important because a registered trademark generally protects only the category listed in the application. Broader categories may provide more protection, but if the category does not accurately fit the applied for good or service, the registration could be invalidated. Also, changing the class designation can be difficult and require an additional filing fee.
Bear in mind that a company name and particular product names may each be trademarked separately and may each involve different categories. Each registration would require the payment of additional fees to the USPTO and to the Trademark Counsels.
Tips for Picking the Right category
If investing heavily in a marketing campaign with a slogan, a company might consider registering a slogan as well. Short catch phrases or sayings that are sold as part of merchandise (like shirts or hats) can also be registered. The same rules apply that are applicable to picking and registering a company name. Namely, the slogan should be inherently distinctive and creative or have developed a secondary meaning. In other words, “really good pizza” probably can’t be trademarked unless that saying has become so famous that most consumers associate it with a certain pizza brand.
The United States Patent and Trademark Office (USPTO) assesses a fee of $275 per class, per application. This is charged regardless of whether the applicant files on their own, uses an attorney, or files with an automated service such as Trademark Counsels. This fee is collected by Trademark Counsels after a basic direct-hit search has been performed on the applicant’s mark, then remitted to the USPTO once the application is signed and filed.
After an application is filed, the USPTO states that they will begin reviewing it in about 3 months. Their review takes about a month. If there are no issues, the USPTO will publish the mark in the Official Gazette to see if anyone in the public challenges the mark. If there are no challenges within 30 days, the mark will register approximately three months later.
If the USPTO has any issues with the application, they may issue a letter, which is referred to as an “Office Action.” At that point, there are two options: respond to the USPTO or abandon the application. Consider consulting with qualified counsel about the appropriate response. Usually, there is a deadline to respond, so taking the Office Action seriously is important. If the USPTO continues to challenge the application, there is an appeal process with the Trademark Trial and Appeal Board (commonly referred to as the TTAB). Challenges by a third party to trademarks are also reviewed by TTAB. TTAB proceedings are very similar to a trial in court, and have complicated procedural rules that even non-lawyers are expected to follow. If you find yourself involved in a TTAB proceeding, you should hire an attorney.
Once properly registered, trademarks generally need to be renewed by filing a Declaration of Continued Use. The first Declaration of Continued Use is usually due between the 5th and 6th anniversary date of the filing. The next renewal usually falls between the ninth and tenth year. Thereafter renewals are generally every ten years. Trademark Counsels provides notice of the applicable deadlines and allows filing of the necessary paperwork via its personalized portal with just a few clicks of the mouse or with some minor updated information.
At the five year mark, assuming continued use of the mark, we can also help file a “Declaration of Incontestability,” which provides additional protection under trademark law. This may prevent others from contesting the trademark on several common grounds, such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark someone else began using first; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.
Unlike copyrights and patents, trademarks can last forever under certain circumstances. Once properly registered, trademarks generally need to be renewed by filing a Declaration of Continued Use between the 5th and 6th anniversary date of the filing and again between the ninth and tenth year. After that, renewal is every ten years. Trademark Counsels provides notice of the applicable deadlines and allows filing of the necessary paperwork through its personalized portal with just a few clicks of the mouse or with some minor updated information.
At the five-year mark, assuming continued to use the mark, we can also help file a “Declaration of Incontestability,” which provides additional protection under trademark law. This may prevent others from contesting the trademark on several common grounds, such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark someone else began using first; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.
Often a trademark owner will send a cease and desist letter demanding that the infringing party stop using the mark. The infringement may not be on purpose and the infringing party may stop when notified that their conduct is in clear violation of another’s rights.
The infringing party may also ignore the demand or take the position that they are not infringing. At that point, you may consider a trademark infringement lawsuit. You should talk with an attorney if you believe a lawsuit might be the right choice for you.
Successful lawsuits have common characteristics and you should discuss with a lawyer whether any of these are present in your situation:
The USPTO may object to the application or send what is referred to as an Office Action or Action Letter. This can happen for a variety of reasons, including because the USPTO determines the requested mark is too similar to one already in existence or the mark is too generic or merely descriptive. Applications have the right to respond to the trademark office and make the case as to why the initial Office Action is wrong. Consider hiring counsel at that point to help advocate for the trademark. Other times, the USPTO will object to an application until the applicant disclaims part of the mark or files on the Supplemental Register.
It is possible to amend an application, but the process and the associated fees generally depend on the timing of the changes. Changes before the trademark has been published in the Official Gazette can be made by logging into your Trademark Counsels account and request that a change be made. Additional fees to Trademark Counsels and filing fees to the USPTO may apply.
Changes once the trademark has been published in the Official Gazette generally require a Post-Publication Amendment, which Trademark Counsels can assist with.
Depending on the scope of the amendment, an applicant may need to file a new application instead. For example, amendments that broaden the scope of a description or add international categories may require additional fees and may require a new application. Clerical errors, on the other hand, are generally easy to fix and typically won’t affect the applicant’s place in line or require a new application.
A common basis for rejection is that the mark’s name is too similar to a name already registered with the USPTO. It can also be rejected if the name is too generic or descriptive. The mark may also be rejected because it is a surname, it is geographically descriptive of the location of the business, it is a foreign term that translates to a generic or descriptive English term, it uses an individual’s name or likeness, or is the title of a single book or movie.
Yes, like any other business asset, a trademark can be sold, licensed or assigned. Validity requirements generally still apply, so someone usually needs to continue to use the mark in commerce and it is helpful to register assignments with the USPTO. If you enter into such an agreement, we can help with a transfer of the trademark with the PTO. Sometimes, individuals register the mark before a company is officially set up. Then, once the company is formed, the mark needs to be transferred into the company.
Registering a clothing brand may protect it from others selling clothes under the same name or logo. The USPTO, however, may not approve an application for clothing that is simply a slogan slapped on a t-shirt. Ordinarily, the word or phrase should actually be a brand name and not an effort to monopolize a slogan (unless that slogan is tied to a product like “Just Do It”). The USPTO usually asks for evidence that the words are being used as a brand by asking for the tags or coat hangers with the brand name on it. Fashion brands may start with Class 25 for clothing before branching out to areas like jewelry or handbags, which go into different classes and require additional $275 USPTO filing fees.
When it comes to books or other literary works, copyright usually applies instead of trademark. Copyright generally keeps people from copying a story. It protects the creative, written work. A trademark ordinarily identifies the source of goods or services. Therefore, trademark does not apply to a single book or story. A series of books, like the Hardy Boys for example, may be trademarked so that a consumer knows that the individual book is part of that series. Characters can be trademarked as it relates to products associated with the books. In other words, before trademarking an individual story or character, there needs to be merchandise or services (which includes shows and appearances) related to that story or character.
Generally, the USPTO discourages trademarking a given name, or even a stage name, to prevent the exclusive right to use a name. An individual name may be trademarked, however, if the name has garnered a secondary meaning through its connection to a good or service—and obviously, if it belongs to the person seeking the trademark. Secondary meaning means that it is famous. For example, Cher and Michael Jordan have registered trademark in their names. But John Smith, who works as an accountant, likely won’t be able to trademark that name.
Trademark infringement occurs when a business uses the same or similar name in commerce in a way that may lead to confusion with the trademark owner’s service/product. Trademark infringement is based on this element of “confusion” that is a function of the mark’s meaning. In general, infringement does not require the infringer to be a competitor, but infringement requires a similar product. If there has been an infringement of your trademark, you can file a claim under the federal and state laws. As the plaintiff, you have the burden to prove that the use of a similar mark by the defendant has created a likelihood of confusion.
Your application may be rejected on the basis of any of the following: 1. primarily merely descriptive or deceptive misdescriptive of the goods/services; 2. primarily geographically descriptive or primarily geographically deceptive; 3. misdescriptive of the goods/services; 4. primarily merely a surname; or 5. ornamental. For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce. For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. If you have already started using the mark in commerce, you may file based on that use. A “use” based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce.
A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this website, the terms “trademark” and “mark” refer to both trademarks and service marks. A service mark can be as wide and varied as a brand name, logo, a shape, letters, numbers, sound, smell, color or any other aspect that renders a unique and distinct image to a service.
A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark, which indicates membership in a union, an association, or other organization.
Yes. If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith, or bona fide, intention to use the mark in commerce. You do not have to use the mark before you file your application. An “intent to use” application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. The applicant will have to file the “Allegation of Use” form to establish the legitimate usage of the mark in commerce.
If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith, or bona fide, intention to use the mark in commerce. You do not have to use the mark before you file your application. An “intent to use” application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. If you file based on intent to use, you must begin actual use of the mark in commerce before the USPTO will register the mark; that is, after filing an application based on “intent to use,” you must later file another form to establish that use has begun. For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce. For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. If you have already started using the mark in commerce, you may file based on that use. A “use” based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce.
Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
You can start using the TM and SM from the moment you decide to claim your rights on a mark. However, the federal registration symbol “®” can only be used after the USPTO actually registers the mark, and not even while the application is pending. The registration symbol can be used with the mark only on or in connection with the goods and services listed in the federal trademark registration.
The applicant should receive a response to the application from the USPTO within six months from filing the application. However, the total time for an application to be processed may be anywhere from a year to two years.