Practice Areas

Trademarks

What’s the importance of registering a trademark in the U.S.? Before explaining, it’s best to start with the basics. A trademark is any word, phrase, symbol, design, or a combination of these things that identifies goods or services. A business automatically creates trademark rights by using this word/symbol in commerce. So if Penelope starts selling apple pies from her home in Los Angeles using the name “Penelope’s Perfect Pies”, Penelope has already created trademark rights. These rights are known as “common law” trademark rights, and she could theoretically use these trademark rights to sue anyone else in her neighborhood who tries to use the same name.

So what’s the use in paying money to register a trademark, when trademark rights are automatic? Because a registered trademark provides extra protection for a brand. Firstly, common law trademark rights are local, meaning they’re limited to the geographical area in which your business is operating (so Penelope couldn’t stop someone in Texas using “Penelope’s Perfect Pies”. Moreover, you have to prove that the person infringing your on your trademark rights knew of your trademark.

A federal trademark registration on the other hand applies nationwide, and what’s more is that every single person in the country is considered to be on notice that you own the trademark. Why is this important? Because even if you’re only operating a single store in the Florida Keys, if you register your trademark, you can prevent anyone in the country from using your trademark, even if they’re 5,000 miles away in Hawaii and have never even been to Florida. Secondly, the USPTO (the government agency responsible for registering trademarks) will prevent anyone else from registering another trademark that is confusingly similar to your own. Every time anyone tries to register a trademark in the U.S., a government attorney known as an examiner searches the trademark register (the database of all registered trademarks in the United States) and will refuse to register a trademark if it is too similar to any existing trademarks. Finally, and most importantly, by registering your trademark you are building brand equity - a valuable intangible asset of your business.

So what do you need to obtain a federal trademark registration? A few things

Firstly your trademark has to be registerable which means that it has to be

1. Capable of distinguishing your company’s goods/services from that of another (so for example, a Mexican restaurant could not register the name “Tacos & Enchiladas” because most Mexican restaurants serve Tacos and Enchilada and so the name “Tacos & Enchiladas” doesn’t help the customer distinguish one from the other.
2. Will not confuse consumers as to the origin of the goods or services because your trademark is too similar to another company’s trademark. This is why a company couldn’t register “Nikey” for sports clothes – it’s obviolsy too similar to “Nike” and would confuse a customer.
3. Is not otherwise deceptive. So a company won’t be permitted to register “Comet Cashmere” for cotton T-shirts – the trademark is clearly deceptive.

Secondly you have to be using either using the trademark, or attest that you intend to use the trademark within six months of filing. This is in contrast to the system in most countries, where you can obtain a trademark registration without ever actually using the trademark. So you are not permitted to pre-emptively reserve a trademark if you have a vague plan to use it in the future, or if you think it’ll be valuable, and you intend to simply re-sell it at a later date.

Thirdly you have to prepare a trademark application which involves:

1. Determining there are no conflicting trademarks already registered. This involves searching the federal trademark database, state trademark database, and taking diligent steps to determine if there are any unregistered trademark holders with pre-existing rights confusingly similar to the trademark being registered.
2. Selecting the appropriate trademark class. The USPTO divides goods and services into 45 classes (e.g. Saxophones are in Class 15, wine in Class 33). The fee for filing in each category is $250 per trademark.
3. Describing the goods/services with specificity using the Trademark ID manual (e.g. applicants can’t simply register “jewellery” as a description – instead a description might read “signet rings”.
4. Determining the filing basis (which differs depending on whether the trademark is being actively used, or is only being filed based on an intent to use)
5. Submitting the registration application, and then preparing for a decision from the USPTO. If the USPTO examiner requires clarification on any issues relating to the application, an office action will be issued. Office Actions are also issued for preliminary denials, e.g. when the trademark examiner feels that the trademark in question is confusingly similar to one already registered. Once the trademark examiner has approved the trademark application it is then published in the Federal Trademark Gazette for 30 days. This is to enable any individual or company who believes they have a pre-existing claim to the trademark, or who thinks that the trademark for which registration is being sought is confusingly similar to their own, to object. If an objection is received, then the matter must be resolved through either negotiation, or by Trademark Trial & Appeal Board (TTAB). If not opposition is encountered, the trademark proceeds to registration.
6. Trademark registrations are valid initially for 5 years. A renewal must be filed between years 5 and 6, and again each 10 years. It is also possible to file a declaration of incontestability at the same time.

Cost the cost of registering a trademark using the USPTO’s standard online process is $250 per trademark, per class.

Professional fees the cost of registering a trademark is $700 in professional fees. This includes responding to non-substantive office actions. Additional fees apply for responses to Office Actions depending on the nature of the Office Action.

Case Studies

Amazon. Trademark and IP infringement are significant issue for sellers on Amazon.com. In order to tackle the issue of knock-off/counterfeit goods, Amazon enables sellers to apply for entry on the Amazon Brand Registry. If the application is approved, the brand owner is given control over how the brand is sold on Amazon, in addition to access to tools for combating counterfeiting. One of the requirements for being added to the Amazon Brand Registry for the U.S. is that the applicant have submitted a federal trademark application.

Seeking to have their brand registered with Amazon, an small-scale British crafts manufacturer seeks assistance with assistance filing a federal trademark application. We assist with the requisite searches, prepare the application documents and submit the application to the USPTO. Several months later, a representative for Amazon emails us (as legal representatives) a code that can be provided to the applicant for purposes of confirming their ownership of the brand. Within two weeks, they are successfully entered on the Amazon Brand Registry, enjoying more control, better placement and increased sales on Amazon.com

An Irish food manufacturer has a range of energy bars that have sold well in a number of European countries. Seeking to enter the U.S. market, they file, they file and submit their trademark application without the assistance of counsel. Within a few months of the application being submitted they receive an office action requiring that they appoint a U.S. agent (a requirement for all non-U.S. domiciled applicants who file without the assistance of counsel), and informing that their application to register their trademark has been refused on the basis that the trademark name is confusingly similar to another registered trademark. This trademark is registered for a small chain of restaurants in the south of the United States.

We assist them firstly by firstly assessing the trademark registration application that they submitted to ensure there are no fundamental flaws that will prevent registration. Next we perform our own trademark search of state and federal databases to ensure that there are no other registrants or trademark owners that could conceivably object to the registration. Finally, we submit a substantive response to the USPTO, citing caselaw and similar examples to demonstrate how the two trademarks are not confusingly similar. The trademark examiner reverses their initial refusal and permits the application to proceed to registration.