Trademark registration is the process by which you file an application to the USPTO, the United States Patent and Trademark Office, asking the United States government to, essentially, acknowledge and validate that the word or brand or logo that you are submitting is, in fact, considered trademark worthy under U.S. law.
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
Matt Plessner: Hi, it’s Matt Plessner for Trademark Law Radio. Today we are talking with Enrico Schaefer for the Traverse Legal in Traverse City, Michigan, about how to trademark a name, brand or logo. Enrico, how are you?
Enrico Schaefer: I’m doing great, Matt. How are you doing today?
Matt Plessner: I am well. Let’s first start out talking about registration. What exactly is trademark registration and how do you go about doing it?
Enrico Schaefer: Well, trademark registration is the process by which you file an application to the USPTO, the United States Patent and Trademark Office, asking the United States government to, essentially, acknowledge and validate that the word or brand or logo that you are submitting is, in fact, considered trademark worthy under U.S. law.
So, you go through a trademark registration process which involves submitting your application, and an examining attorney from the trademark office will review your application. They may give you an office action saying we need clarification of this, that or the other thing.
After you get through that process, they will publish your trademark. If they believe that your trademark is acceptable and isn’t infringing someone else’s mark, then they will publish it for opposition for 30 days where anyone in the world could come in and oppose your trademark, rarely do they. Then, once you get through that process, if all goes well, after approximately 12 months, they will issue you a Certificate of Registration. And at that point, your trademark will go from a common law trademark to a registered trademark with the USPTO.
Matt Plessner: And, Enrico, is trademark registration important?
Enrico Schaefer: Yes, it’s really important, Matt. The reality is that the moment you start doing business under a name or a brand or a logo and you start offering goods and services under that name, brand or logo, you have common law trademark rights. What that means is without doing anything more than being in business, your brand becomes a trademark under law. But going through the trademark registration process with the United States Patent and Trademark Office and actually achieving registration is really important because you get a bunch of really good benefits from doing that.
Number one, you get a presumption under law that your trademark is valid. Number two, you put the world on notice that you’re claiming trademark rights. Number three, you get to use that little, Matt, you might know the little circle ‘R’ that you see by so many logos, that tells the world that not only are you claiming trademark rights, but that you’re registered, your trademark is registered with the USPTO.
The most important thing that you get through the trademark registration process is you get to assert statutory damages against anyone who infringes your trademark willfully. So, let’s say, you’ve got your trademark, you’ve got it registered, and all of a sudden you notice your competitor across the street starts using a really similar name. You can now send them a trademark infringement threat letter saying we want you to cease and desist, and if you don’t, you could be liable for up to $150,000 in statutory damages plus attorney’s fees.
Matt, as you might imagine, that typically gets people’s attention.
Matt Plessner: Well, great. And, now, understanding about a trademark name, it sure sounds important. Tell me, Enrico, what is the attorney’s role in all of this?
Enrico Schaefer: Well, look it, you can go ahead and try and get through the registration process with the trademark office on your own. You can use a service like Legal Zoom where they just, basically provide you what is already available online through the USPTO.gov, which is the form, the application form, or you can hire a trademark registration attorney to actually get you through the process of registration.
The attorney’s role becomes really to help the client understand what is a good trademark. So, if you’re a company or business or start-up that is trying to figure out what your brand name is going to be or what domain name you are going to pick for your company, you need to understand the difference between a generic word, a descriptive word, a suggestive word or an arbitrary trademark.
A generic word can never be trademarked. So, if I’m selling cars and I’m going to call my company ‘Cars’, I can’t have any trademark rights in that. If I want to use something like ‘The Best Cars in the World’ as my company name, well, that’s just describing my service and the quality of my service. That’s a terrible trademark. The best trademarks are suggestive or arbitrary. So, Nike is a made up word. It can only mean one company in the world and that’s Nike. That’s a really strong trademark. So, you need to understand what you’re trying to achieve under trademark law when you pick your brand.
If you’ve already got your brand, then the next thing the attorney is going to do is he’s going to do an availability search to make sure that before you file your application for trademark registration, that the trademark is ‘clear’, meaning that no one else is already on file with something similar that’s going to not only potentially stop your trademark from going through; but, perhaps, even trigger a threat letter against you by that company saying you can no longer use that name.
So, the first thing is a trademark availability search and opinion letter. If it comes back as clear enough as a tolerable level of risk for your trademark, then you get into the trademark application process. And there’s all kinds of things within the application that you need to get right or you could really be causing yourself a problem. It does not cost that much money to hire an attorney to help you get through the trademark registration process. And a good trademark registration attorney can take you all the way from A to Z, get you through the process, get you your registration and now you’ve got a much more valuable asset, an intangible property asset, with your trademark registration.
Matt Plessner: And how long does it take to trademark a name?
Enrico Schaefer: It’s variable, but in the United States, you’re usually talking between 8 and 16 months to get through the entire trademark registration process at the USPTO.
Matt Plessner: And, now, I guess one final question, Enrico, how much does it cost to register a trademark?
Enrico Schaefer: There are a couple of variables, but in general, you should plan on spending something in the $1600 to $1700 range to not only get a trademark availability search and opinion from the attorney. If the trademark comes back as clear … even if you’ve been using it for ten years, you should still get a trademark availability opinion and clearance letter from your attorney.
But if it comes back clear, then you’re going to go through the trademark registration process. So, that approximate $1600, $1700 is going to buy you all of that and that even includes the $300 or so registration fee with the trademark office. A very low investment for what will be a very valuable item in terms of your assets moving forward.
Matt Plessner: Well, thank you very much for your time, Enrico, and I’m sure we all have a better understanding of how to trademark a name.
Enrico Schaefer: Yeah, not a problem, Matt. We’ll talk to you next time.
Matt Plessner: Join us next time on Trademark Law Radio. I’m Matt Plessner.
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