Libenzon & Associates

The ultimate cheat sheet on a trademark registration

There is hardly an entrepreneur or a startup owner that doubts the significance of a federal trademark registration. Before you fill an application, you should discover more about this process and familiarize yourself with the basics. Maybe you need a completely different type of Intellectual Property protection? Let’s find that out.

Defining the meaning

Researching this question you can come across two quite confusing notions: a trademark and a service mark. A trademark is a say, title, phrase, symbol, design, logo or a combinations of all these elements that determines and draws a line between your tangible product and others on the market, whereas a service mark serves for the recognition and distinction of services. As an example, stores and restaurants require service mark to secure the original services they offer, while the producers of jewellery and clothes will more likely require a trademark. Practically speaking, you can detect that in everyday life the term “trademark” refers to both service marks and trademarks. But forewarned is forearmed and now you know the distinguishing feature.

The key difference between trademarks, copyrights and patents

To make it clear right from the start, trademarks, copyrights and patents support completely various types of Intellectual Property and before initiating an application, you definitely need to know and be able to mark out the peculiarities of each protection type.
As it was mentioned above, trademarks exist to safeguard names, logos or designs of products or services. Copyrights are obtained by authors, artists and other creative professionals for the maintenance of their literary or artistic work. Patents are issued to secure unique inventions.
Let’s imagine that you have invented a high-tech wearable gadget. To secure it from reproducing, duplicating and selling by your competitors, you need to fetch a patent. To cover the brand name and logo of your gadget, you will need to receive a trademark. And finally, you may want to obtain a copyright for a commercial that is actively used to promote your product.

In addition, you can also check out “The basics of patents, copyrights and trademarks“.

Opportunities a trademark registration offers

  • It provides the exclusive ownership rights across the entire country and is viewed as a legal shield against potential infringers.
  • It grants support during legal actions against those, who adopt your brand without your direct consent.
  • It allows you sue in the Federal Court.
  • It lets you to place the ® symbol next to your product or service to broadcast its uniqueness.
  • It allows you to sell as well as license your business.
  • It can be used as a foundation for the trademark receiving in foreign countries.

Before the registration

Prior to forwarding the application, you should carefully analyze whether your trademark is registerable and search the USPTO trade marks database to verify if it is already registered.
To be certain that the application won’t be rejected, your trademark should be one-of-a-kind and contain words, names, phrases, symbols, colors, logos or their combinations. Along with that, it mustn’t:

  • Include disparaging, swear, offensive words or images
  • Be misleading and too generic, common and non-distinctive
  • Relate to already registered good or services
  • Resemble or include an individual’s name, a book or a movie title
  • Bear similarity to state symbols

Once you determine the absence or presence of all these aspects, take some time to glean the data that must be enclosed in the application.

  1. Information on the mark owner: his name, address, Email, correspondence address, entity type (if you are not applying as an individual).
  2. Information on the mark: clear mark image or “the drawing”. It can be a standard character (made up only of letters, numbers or words without any specific font, style, size or color) or a distinctive form of drawing (includes particular design, wording, style, colors).
  3. A list of exact items or services for which you are going to receive the mark.
  4. Application filing fees.
  5. Specified background for submission: the current mark use-in-commerce or intent-to-use.
  6. A case of practical application or so-called specimen for use-in-commerce applications.
  7. Your signature.

What is the next step?

The trademark registration can be very tricky and simply absorb a lot of your time and money. To avoid pitfalls, prepare consistent application and conduct proper trademark research, you can hire an experienced agent, who can easily address the concerns of the Trade Marks office and duly respond to their invoices, so that your application won’t fail. In any case, you can either rely on the experience of your agent or get the things done by yourself. To simplify the task, check our next article “The ultimate guide to a trademark registration” that gives a comprehensive description of the enrolling process. Don’t miss the next publication!