Trademark Basics

What are the basics of trademark registration?
Most of our clients are aware of the fact that they will need some sort of trademark protection for their brand. The two most common questions we receive in connection with trademarks are when should you register a mark and how.

When do I need a trademark registration?
Determining when to register a trademark is a complicated question that is as much a business decision as a legal one.

The real question is not when do you need a trademark but why.
The answer: registration serves as notice to the world that you own the mark (i.e., evidences that you own the mark).

Therefore, you must ask yourself the following:

  • What are my growth plans for my business?
  • How much time, effort, and money am I investing in marketing my brand?
  • How far will my brand reach (geographically)?
  • If another business used a similar mark, would it cause confusion in my customer-base?
  • If I had to change my branding strategy, how would it effect my bottom-line? Would it drive my business into a financial crisis?

Bottom line: If your brand will become or is the crux of your business model, then obtaining a trademark early should be a part of your business plan. However, you will need to be prepared and budget accordingly. Obtaining a trademark is not as straightforward, affordable, or simple as it seems.

How do I register a trademark?
In the US, you register a mark with the United States Patent and Trademark Office (USPTO), usually using their online Trademark Electronic Application System (TEAS).

Typically, the steps for registering a mark include:

  1. Determine the goods and/or services that are applicable to your mark (see the International Classes to determine which and how many categories you will apply)
  2. Search current trademarks (to determine if a confusingly similar mark is current in use for those same International Classes)
  3. Identify the proper filing basis (is the mark in use in commerce or not)
  4. Compile samples of your mark in use
  5. Identify the first date you used the mark and the first date you used the mark in commerce
  6. Compile your basic company information (address, phone number, etc)
  7. Complete and file the appropriate application (1a v. 1b/ principal v. supplemental register/PLUS v. non-PLUS form) and pay the appropriate fee

Once submitted, the trademark application is assigned to a trademark attorney who will evaluate and either reject, accept, or issue an office action. Rejection or an office action due to an improper filing may result in additional costs and a loss of rights.

Just remember before you submit an application, make sure you thoroughly comply with the above steps. Failure to do so could cost you significant time and money, and result in no trademark registration.

Liz_KrausAbout the Author: Elizabeth H. Kraus
Email: liz.kraus@immixlaw.com | Direct: (503) 802-5548

As a former CEO of a pharmaceutical tool company, Liz gained first-hand experience navigating the challenges associated with managing and growing a start-up business. Liz uses her start-up background to approach legal issues from a business perspective.

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