As I threatened to do a longtime ago, I am trying out simplified articles that are quicker to read and less dense than some of my regular treatises. Perhaps these will be more accessible to a wider audience (power to the people!). I hope you find it useful.
This one is on trademarks and applying for them. If you want a more in depth approach, feel free to read my prior article on the subject here.
Disclaimer: The following information does NOT constitute legal advice and is only for general educational purposes. Each situation is different and specific legal issues usually require additional research and investigation, so do not rely on this article to address a particular legal issue; use this as a starting point to gain a general understanding. This article, although educational in purpose and substance, nevertheless, might be deemed attorney advertising, and prior results do not guarantee future success.
1. What's a Trademark and How Does it
Differ from other Intellectual Property?
I'll walk you through some of the basics of trademarks here. What's a Trademark and How Does it Differ from other Intellectual Property? A trademark is phrase, design, or sound that denotes the source of goods or services.
This is different than patent which is right to exclude others from making, selling or using your new and non-obvious invention or process. A copyright protects the original expression of an idea fixed in a tangible medium (i.e. a painting, a musical score, a poem, a book). All three are forms of intellectual property which give you legal rights to enforce in a court of law.
The typical example you will see in blogs and info sheets is that if you invent a new product, like a special air conditioner, the machinery design could have a patent. The instruction manual, you might be able to copyright. And your company's tagline "Glacial Cold" would be the trademark.
2. How Do I Obtain a Trademark?
You obtain a trademark by filing an application with the United States Patent Trademark Office.
There is an online form to fill out (or you can file by paper) and costs vary (from around $200-400 per international class depending on how you file).
International Classes are the way the USPTO organizes trademarks. So, legal services is different from clothes. There are 45 classes.
You can have two different trademarks with the same name, held by two different companies, in different classes. Think Delta Airlines vs. Delta Faucets. How can this be? As long as the USPTO does not believe there will be consumer confusion over the ORIGIN of the goods or services. Is Delta Airlines installing your plumbing? If that sounds ridiculous or unlikely, probably there would not be any confusion. If there was a company, Delta Air Freight, independent from Delta Airlines, the USPTO probably would not permit Delta Air Freight to have their own trademark because of the confusion with Delta Airlines.
SAFETY NOTE: Information you enter on the application form (like your phone number and email address) will be PUBLIC. So, make sure you have company only numbers and emails unless you want the world to have that information.
SAFETY NOTE #2: You WILL be spammed on that information by offers from other companies to "help" you file or maintain your trademark. Be careful, official government emails should only come from .gov addresses.
3. How Long Does It Take to Obtain a Trademark?
Assuming no issues at all, it takes about a year and a half to get a registration approved by the USPTO, sometimes, more or less. If there are issues with your trademark, the USPTO will issue Office Actions, and you will need to respond to them. If you can address the issues, your application will move forward. The USPTO issues and your responses are PUBLIC and easily read through the USPTO website. If the USPTO does not have any issues with your application, they will Publish it for approval, and others will have a chance to object to it for *certain* reasons. If there is no Opposition, the USPTO will issue you a Registration Certificate and you will have responsibilities in the future.
4. What Are Some Obstacles to Obtaining a Trademark?
Well, you need to be using or *intend* to use the trademark in INTERSTATE commerce if you want to file with the USPTO. "Intend" has to be a true intent, that you are actively working toward, not just wishful thinking or squatting on a good name. By interstate I mean you have to have business outside of your own state, but that can include solicitations that don't necessarily result in sales, at least not yet.
Your trademark cannot be too descriptive or generic: "yellow bananas" bananas will be rejected as being too generic. The more arbitrary or fanciful something is the better chance of having it approved. For example, "Apple" for computers is arbitrary since apples have nothing to do with computers. Fanciful is a made up name: Xerox for copies. So are proper names that aren't already famous (Kate Spade).
You can confuse consumers. If someone has your name in a related product or service, the USPTO probably will reject your application for a trademark.
Previously, you could not trademark something offensive or disparaging but last year the US Supreme Court threw that prohibition into question. It's possible Congress will fix that down the road, so for now you might have greater latitude but don't necessarily count on that forever.
Finally, another party can object if they believe you will confuse their own trademark.
5. Do I Need A Lawyer to File for A Trademark?
You can file a trademark application pro se (without an attorney). Also, an attorney licensed in any state of the United States can represent you before the USPTO for a trademark (patent attorneys need special licensing but not trademark attorneys).
Be aware that not all registration services are the same. The cheap services online may very well do a good job for you, but if there are any issues make sure they will respond to them. For instance, if the USPTO issues an Office Action saying they believe your proposed trademark was filed incorrectly or infringes on another trademark, will your registration service respond to that Office Action as part of the price?
I have met sophisticated business people that were able to file their own trademarks without any problem at all, and other folks who just ... well, really messed it up. So my advice, is if you are unsure if you want to hire a professional, go to the USPTO website, and get as far through the application process as you can yourself, and if you do and feel confident you understood everything, congratulations! If you start to feel overwhelmed you might want to consider getting help either from a service or an attorney.
Best of luck!