Following the right trademark strategies and best practices will help you secure the strongest trademark protection available. Many thousands of trademark registrations are granted that are void ab initio (invalid from the start). Even more trademarks contain unnecessary limitations that diminish the scope of their protection. We practice intellectual property law exclusively and have prosecuted thousands of trademark applications including appeals and contested proceedings. Here are a few key points to keep in mind.
1. Pick a strong mark
The best trademarks never describe the branded product. For example, GOOD BEER™ is a worthless brand. BEER is generic for the product and GOOD is merely laudatory. The USPTO will not allow your company to remove generic terms out of the public domain as privately owned trademarks.
On the opposite end of the spectrum, brands like SHOCK TOP®, ROLLING ROCK® and IRON HORSE® are “arbitrary.” They do not describe or suggest what the product is. Therefore, arbitrary (e.g., APPLE®) or coined (e.g., KODAK®, EXXON®) marks are the strongest.
We work with many branding experts who understand trademark strategies and investing in a unique brand will provide better protection down the road.
2. File early
One of the key advantages of federal registration is getting national constructive use. What does this mean? It means that when we file a federal trademark application it is the legal equivalent of selling your product or service in all 50 states. This strategy is true with either an in-use trademark application or an intent-to-use (ITU) application.
3. Use a legal entity
Never file an application as an invididual. Always use an LLC or corporation entity. This is particularly true for ITU applications which cannot be transferred as a separate asset until they have been converted to an in-use application. However, they can be transferred with the LLC or corporation as a whole.
Be absolutely certain your company is in good standing with the Florida Division of Corporations before you file and when you renew. Otherwise, the declaration you just signed is void and your registration is either invalid or abandoned.
4. Words only
A important tip for a good trademark strategy is what to register. Logos tend to evolve but the words in a trademark generally stay the same. File a “standard character claim” which is represented in all caps. This permits the registration to cover any font, stylization or in combination with logos and graphic elements.
5. Logos should stand on their own
Logos like the Mercedes Benz star or the Pepsi semi-circles stand on their own. Do not file them with words. Less is more in trademark filing strategy. Logos are generally filed as “stat” images which are pure black and white. No color or shading. This gives the registration the broader scope to cover the logo in any color scheme or shading.
These five trademark strategies are just a start to developing a comprehensive brand strategy. As you invest more in your reputation, your trademark gains value and should be protected with the highest level of expertise. Contact us for more information.
More info on trademarks…
A trademark registration can last indefinitely. However, there are a few requirements to maintain the registration. One requirement is that you continue to use the mark in commerce. The other main requirement is that you continue to renew the registration. If you do those things, and assuming your mark does not become genericized, your trademark registration can last indefinitely.
In fact, the oldest trademark registration in the United States dates back to 1884 and is owned by Samson Rope Technologies, Inc. Samson’s trademark is a combination of a design element and the word SAMSON. The registration covers the company’s “cords, lines, and ropes” products. You can see the trademark below.
Because Samson Rope Technologies has continued using its mark in commerce and continued renewing its registration, its registration is over 135 years old. It will be interesting to see how long this registration will last.
More information on renewals
You must renew your trademark registration between the 5th and 6th years after registration, another 5-6 years after that, and then every 10 years after that for as long as you use the mark. For each renewal, you must show the United States Patent and Trademark Office (USPTO) that you are continuing to use your mark in commerce. If you fail to file your renewal documents, your registration will go abandoned.
Requirements for use of the registration symbol
You may only use the trademark registration symbol if you have an official trademark registration certificate. You can obtain an official trademark registration certificate from the U.S. Patent and Trademark Office (USPTO). The (R) symbol serves to inform others of your registration. However, you cannot use the (R) symbol if you do not have a registered trademark.
Benefit of using the registration symbol
Under the current state of the law, use of the registration symbol establishes that the defendant in a trademark infringement case had constructive knowledge of the trademark registration. In a trademark infringement case, a trademark owner will forfeit the right to recover lost profits and damages unless the trademark owner can establish that the infringer had knowledge of the trademark registration prior to the infringement. Proving actual knowledge can be extremely difficult. However, the trademark owner can establish constructive knowledge if the registration symbol was displayed in connection with the trademark. Even if the infringer did not have actual knowledge of the registration, it is reasonable to conclude that the infriger had constructive knowledge. In other words, the infrigner cannot feign ignorance to avoid a finding of trademark infringement.
Use the registration symbol as soon as possible! But remember, you cannot use the registration symbol until you secure a trademark registration. Prior to securing a registration, you can use other symbols to notify others that you believe you have rights in your brand. However, those rights are likely far more limited than the rights obtained through a trademark registration. so, register your trademark and use the proper symbols to maximize your rights!
The differences among (R), TM, and SM are related to the registration status of the trademark.
You may only use the trademark registration symbol “(R)” if you have an Official Trademark Registration Certificate. You can obtain an Official Trademark Registration Certificate from the USPTO. The (R) symbol serves to inform others of your trademark registration. However, you cannot use the (R) symbol if you do not have a registered trademark.
You can use the TM symbol for both unregistered and registered trademarks. The TM symbol conveys that you believe that you own rights in the trademark. Additionally, the TM symbol commonly symbolizes a trademark owners’ common law trademark rights in the mark.
The SM symbol stands for “service mark.” This symbol is nearly identical to that of the TM symbol, with one exception. This symbol is used in association with services, rather than products or goods.
It is important to understand the differences among (R), TM, and SM. If you are using the wrong symbol, you may be forfeiting certain rights or violating the law.
For example, in a trademark infringement case, a trademark owner can recover lost profits and damages if the trademark owner can establish that the infringer had knowledge of the trademark registration prior to the infringement. Proving actual knowledge can be extremely difficult. However, the trademark owner can establish constructive knowledge if the registration symbol was displayed in connection with the trademark. In other words, the infrigner cannot feign ignorance to avoid a finding of trademark infringement. Thus, you may unintentionally forfeit your ability to recover lost profits and damages if you do not use the registration symbol and can’t prove that the infringer knew of your trademark rights.
Policing your trademark is an important task for maintaining the strength of your trademark rights. There are passive and active approaches:
- Waiting until instances of confusion arise between your brand and that of a third party.
- Periodically searching the Internet and industry for potentially infringing brands.
If your trademark has real value, you’ll want to proactively monitor the U.S. Patent & Trademark Office trademark application filings to determine if anyone is seeking rights to a confusingly similar brand. It is difficult for even the most experienced trademark attorneys to do this manually because one must look not just for “identical” trademarks, but those with:
- phonetic similarity;
- orthographic similarity and misspellings;
- prefix, infix and suffix variations;
- vowel and consonant similarity;
- plurals and stemming;
- abbreviations and acronyms; and
- other similarities
Well-informed brand owners and intellectual property practitioners set up sophisticated trademark watch services for an annual fee. Every 1-2 weeks, the monitor queries trademark databases in the U.S., Europe and in other countries for newly filed applications that could infringe the trademark owner’s rights.
For a litigation-grade trademark registration we often start with a knockout search. If the mark is a reasonable candidate for registration, budget approximately $955-$1,600. The process takes about a year and once granted, budget around $100 per year to keep a federal trademark in-force with renewals. No attorney can ethically guarantee a trademark will grant. The examination process at the U.S. Patent & Trademark Office (USPTO) is adversarial and even when approved by the trademark examining attorney, every mark must be published for opposition for one month wherein private parties can oppose the registration of a trademark.
While it is possible to trademark a last name/surname, you cannot secure a federal registration on the principle register for a trademark that is primarily merely a surname. You can secure a trademark registration for a surname that has acquired distinctiveness or a surname that is not primarily merely a surname. In addition, you can register a trademark that is primarily merely a surname on the supplemental register.
A trademark office action is a formal communication from the U.S. Patent and Trademark Office. The office action identifies the legal status of your trademark application. The office action will also identify any issues with your application and designate the period in which you must reply to office action to prevent your application from going abandoned.
You may require assistance from an experienced trademark attorney to overcome the issues identified in the office action. In the last 20 years, Smith & Hopen has helped trademark owners overcome every possible reason for refusal. Contact us today for a free consultation.
The difference between a service mark and a trademark is a matter of semantics. A service mark is a trademark. However, the term “service mark” is used to refer to trademarks for services. The term “trademark” is often used in a broader sense to describe marks used in connection with goods and/or services.
Regardless of whether you are offering goods or services in connection with your trademark, the experienced attorneys of Smith & Hopen can advise you on all things trademark. Contact us for additional information or a free consultation.
A trademark is any distinctive words, designs, logos, and slogans used to identify the origin of a good or service. In some cases, even a particular color, sound, and scent can be trademarked if a certain degree of consumer recognition has been achieved. A trademark is sometimes referred to as a “brand name.”
A trademark can be registered with the U.S. Patent and Trademark Office to secure nationwide trademark rights. These nationwide trademark rights prevent others from offering for sale similar goods or services under a similar trademark. Trademark rights, however, will not prevent others from offering for sale similar good or services under a clearly dissimilar trademark. You should consult an experienced trademark attorney to determine if your trademark is available for registration with the U.S. Patent and Trademark Office.