Legal

What is a Trademark?

Legal

What is a Trademark?

Trademarks are letters, words, numbers, shapes, symbols, or a designed combination of all of the above that distinguish a particular good or service from others and designate for consumers the source of that good or service.

Trademark registration lasts for the duration of its use in commerce, which means so long as your goods and/or services are being bought or sold, you can maintain protection and prohibit anyone from profiting off the goodwill of your brand.  

Do You Need a Trademark?

If you have an idea, why not protect it as soon as possible?  

As your business is forming or growing, it’s important to protect the goodwill you have built in connection with your product, service, or brand.  

There are even ways to gain protection before you have started using the trademark in commerce, and that will be discussed a little more below.

What if Your Trademark Already Exists?

One of the challenges some new Trademark applications face is the existence of similar or related marks. The USPTO wants to avoid “consumer confusion” and therefore, they can be rather diligent in comparing previously registered marks to pending applications.

You can distinguish your mark by narrowing the description included with the class registration. The “classes” for goods/services provided by the USPTO are general in nature (anything from cosmetic and cleaning products to communication services), but by tailoring the description for that particular class, your goods and/or services can gain protection despite an existing, similar mark.

For instance, class 9,“computer and scientific devices” can be narrowed down to the particular device or industry in which the mark is being used. That means an existing mark that might be considered similar to yours, could co-exist because of the distinct way in which it is being used.  

Is Trademark Ownership Important?

The USPTO allows individuals and business entities to register as the owner for a mark. This could seem like an easy choice as your business is starting out, but it’s an important to keep an eye toward the future.

For example, if you have a partner in business and both of you desire ownership rights, it is possible to register as“co-owners.”Alternatively, you can increase the attractiveness of a current entity to investors or potential co-venturers, by establishing the entity’s sole ownership of the trademark.

What are the Filing Options for Trademarks?

There are two routes for Trademark registration. The first, 1(a) involves previous and current use of the trademark in connection with goods or services.  

The second, 1(b) allows you to get ahead (as mentioned) on the protection for a Trademark which you plan to use in the future in connection with goods or services.  

When beginning the application process, it’s important to determine where you are at in the “use” stage because the filing basis discussed above could provide you with more time to put the Trademark into commerce without a penalty.

Proof Requirements For Filing a Trademark

The last and perhaps most important piece of the application is a proper specimen. The specimen is proof to the USPTO that the applied for mark is being used in connection with the goods or services in commerce.  

Because of the digital market we live in, a typical specimen could be a screenshot of a webpage where the mark is being used in connection with a point of sale or purchase.  

Other specimens could be clothing tags which include the mark and price, or the actual product with the mark such as on a label or sticker.

There are certainly other options for specimens, and we strategy with our clients on a case by case bias to ensure that the USPTO will approve.

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