Trademark

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The term “trademark” is often used to refer to both trademarks and service marks. A trademark is a word, phrase, symbol, and/or design that distinguishes a company’s goods.  A service mark is a word, phrase, symbol, and/or design that distinguishes a company’s services. Not all marks must be registered, but federal registration has several benefits. These include: a notice to the public of the claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark for those goods or services. If your company is using an identifiable symbol or slogan, and you wouldn’t want your competitor using it, then trademark registration might be for you.

It is recommended that people registering trademarks use a private trademark attorneys. Their are various intricacies in filing an application and not all applications proceed to registration. To file an application, you must know three things: (1) the mark you want to register; (2) the goods and/or services in connection with which you wish to register the mark; and (3) whether you have actual existing use of the mark or rather an intention to use the mark in the future.

The application will need to include a clear representation of the mark you want to register. This mark is then printed in the Official Gazette. The Official Gazette is a weekly publication which gives notice to the public that your mark will be issued a registration, so that anyone who wishes to challenge it, can do so.

You must also clearly note which goods and services you will use your mark to identify. Your mark, once registered will only be protected for the goods and services which you use it for. If, for example, you register a shamrock as a trademark for your fleet of taxicabs, this will only prevent other cab companies from using a shamrock. You will not be able to prevent an accounting firm from using a shamrock for their services.

It is important to have a search done of the United States Patent and Trademark Office’s database before filing an application. You would not wish to wasted time and money filing a trademark application which will fail, if an exhaustive search could have noted the mark was already registered to someone else.

The actual filing of the application can be done by your attorney. There are some fees associated. Only one mark may be filed per application, so if you have multiple marks, they require separate applications, each with its own filing fee. You also must pay for each class of goods and/or services in the application.  For example, if you are a stand-up comedian who wishes to trademark a particular slogan or nickname for both your stand-up act, and you also wish to make t-shirts with the slogan, then you would need to file in two different classes. This would be under entertainment services in class 41, and t-shirts in Class 25. There is an extra filing fee for two classes as opposed to one. Also, the particular form that you and your attorney decide is best will determine the ultimate fee. The application filing fee for the TEAS Plus version of the form is $275 per class, but this comes with stricter requirements, while regular TEAS is $325 per class. It is also very important to note that the filing fee is not refundable, even if you do not receive a registration for your mark.

While this application process may not seem difficult, it is still important to hire a  trademark attorney. An attorney can help you before, during, and after the trademark application process. Before the application process, an attorney will be best suited to conduct a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before you file your application. During the application process, an attorney can determine the best way to describe your goods and services and prepare responses should the trademark office refuse to register the mark. After the application process, an attorney can police your trademark rights to ensure no one else will use your marks.