Trademark or Nah? Answers to Your Trademark Questions

  • By:Sydnee Mack

“Trademark or nah?”….. that is a constant question I get asked by clients. My answer: “I don’t know! Let’s talk about it and find out.” There are a lot of factors to consider in determining whether or not you should file your trademark, when you should file it and if it’s worth filing.

The following are my answers to some of the most common questions I get asked about trademarks. Please note that this is NOT legal advice, just general information about trademarks and the trademark application process. If you have specific questions about trademarks, you should contact a licensed, experienced attorney for assistance.  Sydnee Mack Attorney at Law is licensed and experienced….in case you were wondering 😉.

  1. What is a trademark?

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods.

Some examples include: brand names, slogans, and logos. The term “trademark” is often used in a general sense to refer to both trademarks and service marks.

  1. Where do I go to file my trademark application?

All Federal trademark applications should be filed with the United States Patent and Trademark Office (USPTO). Applications can be filed online at the USPTO website: https://www.uspto.gov. You can file applications for state-level trademark protection with your state trademark office. But in the age of the internet and technology, state-level protection doesn’t have much use. Go federal and file with the USPTO.

  1. Can I trademark anything?

NO. Not every mark you have can or will be approved for registration with the USPTO. The USPTO considers several factors when making a determination on whether to approve or deny your application. Some, NOT ALL of the factors the USPTO considers are as follows (so you should consider them to):

               i. Is the mark the same as or very similar to a mark that has already been registered?

If someone is already using the mark you want to register AND has already registered said mark with the USPTO then NO you cannot register that mark with the USPTO. Further, if you use that mark, you may also run the risk of getting hit with a cease and desist letter from the registered owner of the mark, sooooooo WATCH YOURSELF.

You also may not use your mark if it is CONFUSINGLY similar to a mark that has already been registered. If your mark is so similar to someone else’s that it might confuse consumers then NO you CANNOT register that mark either.

****The USPTO considers a number of factors when determining whether or not your mark is the same or similar to someone else’s. Consult with an attorney (i.e. ME) to determine the likelihood of approval of your trademark application.

              ii. Is the mark strong or weak?

STRONG: A strong mark is a mark that is fanciful or arbitrary meaning, it basically has absolutely NOTHING to do with your product or service.

Consider this: What does a Puma have to do with athletic gear? What does Uber have to do with public transportation?? ABSOLUTELY NOTHING!!! The only reason we associate Puma with athletic gear is because Puma told us we should by selling athletic gear with Puma written on it. The arbitrariness of their mark makes it STRONG. Because you wouldn’t normally associate Pumas with athletic gear, Puma is allowed to protect its brand by having the ability to stop others from slapping Puma on a sneaker and calling it their own.

weak: A weak mark is descriptive or generic meaning your mark describes the nature of your product/service or it is a word commonly used in connection with your product/service.

Consider this: If you make sandals and you want to call your company “SANDALS” is it reasonable to prevent EVERY other shoe/sandal company from using the word sandal? ABSOLUTELY NOT! Try coming up with a name that people wouldn’t normally associate with sandals. You will be more likely to be granted trademark protection for your mark if you do.

**While the previous two factors are the most common factors used to assess the strength of an application, there other factors that the USPTO considers when determining whether or not to approve your application. Speak to an attorney regarding the specifics of your application and if the other factors are applicable to your individual situation.

  1. If I have a copyright, do I need a trademark?

Maybe! Copyrights and trademarks serve very different purposes and protect different things. In laymen’s terms: a trademark protects your brand whereas a copyright protects your ideas. Your trademark ensures that ONLY your product, good, service…etc. is associated with your logo, brand or brand name. It prevents others from profiting off of the goodwill of your brand. A copyright protects your creative ideas, works and compositions. If you create an amazing piece of artwork, a copyright keeps others from stealing it and claiming it as their own. So, if your artwork is connected to your brand meaning it’s a part of your logo, brand or brand name then yes you should probably get a trademark for it as well. If your art is just art, then no you probably don’t need a trademark for it.

  1. I heard you don’t need to register your trademark to get trademark protection, so why should I register?

Yes, it is true that you don’t NEED to register your trademark in order to receive basic trademark protection. You receive some trademark protection just from USING your mark in connection with your good, service or product. BUT in order to file a claim for trademark infringement, you MUST first register your mark.

Also consider this: What if someone else registers your mark first and later tries to sue you for infringement or stop you from using it?

  1. I am planning on using my logo to promote my business but I haven’t launched the business or used the logo for anything yet? Can I still get a trademark? Should I?

If you haven’t started using your mark yet, but want to register it with the USPTO, you have two options:

Option 1: Wait until you begin using the mark in connection with your product, service or good before filing your trademark application.

Option 2: File an “Intent to Use” application with the USPTO. The USPTO will allow you to file an “intent to use” trademark application as long as you ACTUALLY use (not think about using, intend to use or ‘bout to maybe kinda use but actually USE) the mark within six (6) months of approval of your “intent to use” application.

  1. What does the TM or ™ symbol mean? And when can I use it?

The ™ symbol is the common law symbol for trademarks. Upside to using it: You don’t have to pay to use it. You don’t need the government’s approval to use it, you can just use it (as long as you don’t suspect someone else may be using it). Downside to using it: it will alert folks to the fact that you have NOT registered your mark.

BEWARE: You can only use the ® symbol once you have a FEDERAL trademark registered with the USPTO and have received an active Certificate of Registration from the USPTO confirming registration. If you have a State-registered trademark, no you still cannot use the symbol.

  1. I got LegalZoom, why I need you?

Yes, you can use Legalzoom or attempt to go through the process on your own, but an attorney will:

  1. Do the work for you. If you go through LegalZoom, you still have to DO THE WORK and you may still do it wrong. You will also have to pay to use their service so you will essentially be paying to do the work yourself. Think of it like legal DIY (and we all know how well that Pinterest-inspired DIY project worked out.)
  2. Answer any questions you have
  3. Answer any follow-up questions or inquiries made by the USPTO. The USPTO routinely challenges applications by asking follow-up questions and/or asking for additional material in support of an application. An attorney can help you navigate this process.
  4. Fix the mess you have created from trying to do it on your own. BUT remember: fixing mistakes is more expensive than asking for help in the first place.

 

DISCLAIMER: The information contained in this post is not and should not be considered legal advice. All materials on this page and website have been prepared for general information purposes only to permit you to learn more about this firm, its services and the experience of Sydnee Mack Attorney at Law.  The information presented is not legal advice, is not to be acted on as such, may not be current and is subject to change without notice.

Posted in: Business Law