A trademark is anything (e.g., a word, phrase, symbol, image, color, scent, sound, etc.) that serves as a source-identifier for products or services. In simple terms, you can think of trademarks as your company’s branding. More specifically, a trademark identifies and distinguishes the source of your goods (i.e., products) from the goods of others. A service mark identifies and distinguishes the source of your services from the services of others.
For example, the COCA-COLA® trademark identifies and distinguishes The Coca-Cola Company’s beverages from the beverages of other companies.
Continue reading to the right (below on a mobile device) for answers to the most frequently asked questions Simpson Law receives regarding trademarks.
Frequently Asked Questions
Once you retain Simpson Law as your attorney, you gain full access to Sarah Simpson’s experience and knowledge. She will walk you through the trademarking process and make sure you understand how to use, protect and retain the rights in your trademark.
Contrary to what some online services will lead you to believe, protecting your trademark is not as simple as filling out an online form. If your trademark application is not filed correctly from the beginning, there are many nuances to trademark law that can lead to forced (and very costly) rebranding, infringement actions, non-registration and/or cancellation of your trademark registration. Trademark rights can last indefinitely as long as you properly use, police and maintain your trademark registration. Ms. Simpson invests time into teaching her clients about trademark law to ensure her clients understand how to obtain and maintain full protection of their trademark rights.
Ms. Simpson’s process begins with a comprehensive trademark clearance search, followed by the preparation and filing of a federal trademark application with the U.S. Patent and Trademark Office. Ms. Simpson provides standard updates to the client during trademark prosecution, and once the client’s trademark registration issues she will educate the client on the maintenance requirements, policing requirements and use of the registration symbol. Ms. Simpson’s fee for this process, including the clearance search and federal trademark registration application, is $1,500* for a single international class standard character mark application, and $1,750* for a single international class design/stylized mark application.
*Please note, this fee does not include attorney’s fees for preparing and filing a substantive Response to an Office Action from a U.S. Examining Attorney (this is only required in select cases). A detailed listing and explanation of Ms. Simpson’s flat-fee rates is provided to clients before clients retain Simpson Law as their attorney.
In addition to attorney’s fees, clients are responsible for paying the U.S. government trademark filing fees, which range from $225 – $275 per class of goods or services. Most often, Ms. Simpson files TEAS Plus applications, which have a lower fee of $225/class of goods or services.
A trademark protects brand names, logos, etc. used to identify the source of goods and services. A copyright protects an original artistic or literary work. A patent protects an invention.
Can I add an “s” to another mark or make another minor change to someone else’s trademark for my own brand name?
Generally, no (see exception below). The USPTO typically will not issue a trademark registration on such a mark, and you could be sued for trademark infringement for using a mark that is confusingly similar to an existing mark.
Is it possible to get a trademark registration on a mark that is similar to someone else’s mark, if there is no likelihood of consumer confusion?
Yes. Likelihood of confusion requires similar marks AND related goods/services. Generally, two similar (or even identical) marks can coexist if the goods/services are not related (see exception for famous marks below).
Famous marks (e.g., COCA-COLA®, APPLE® and NIKE®) have achieved extensive public recognition and are generally instantly recognizable. You should not use any kind of variation of a famous mark, as doing so could result in trademark “dilution” of the famous mark, in which case you would be required to change your mark and you could be liable for damages in the case of willful dilution.
Trademark dilution differs from trademark infringement in that there is no need to prove a likelihood of confusion and there is no need to show the goods/services are related.
The most common reason the USPTO refuses registration of a trademark is a “likelihood of confusion” between your mark and an existing mark (i.e., a registered mark or a mark in a prior-pending application).
A likelihood of confusion exists when both (1) the marks are similar (there is no requirement that the marks be identical or even almost identical), and (2) the goods/services of the parties are related, such that consumers would mistakenly believe the goods/services come from the same source.
Unfortunately, no simple mechanical test exists for determining whether a likelihood of confusion exists. That is why it is important to seek the advice and expertise of a trademark attorney to perform a thorough trademark search before you file your non-refundable trademark application with the USPTO.
Yes, some marks are easier to protect and register than others. I often provide trademark searches on a list of potential marks and advise clients on which marks will be the strongest and easiest to register and enforce.
Marks fall into one of four categories: (1) fanciful or arbitrary; (2) suggestive; (3) descriptive; or (4) generic. The category your mark falls into will impact both its registrability and your ability to enforce your rights in the mark.
Fanciful and Arbitrary Marks
Fanciful and arbitrary marks are the strongest and the easiest to protect. Fanciful marks are invented words with no dictionary or other known meaning (e.g., EXXON®, KODAK®, PEPSI®, CLOROX® and XEROX®). Arbitrary marks are actual words with a known meaning that have nothing to do with the goods/services protected (e.g., APPLE® computers and DOVE® soap). Fanciful and arbitrary marks are easier to register than suggestive and descriptive marks, and it is less likely that others are already using these marks.
Suggestive marks suggest, but do not describe, a quality or characteristic of the products/services (e.g., EXTEND YOUR BEAUTY® eyelash extensions, L’EGGS® pantyhose, and GLASS DOCTOR® window repair). While suggestive marks may be more difficult to register compared to fanciful and arbitrary marks, suggestive marks are registerable and many clients choose suggestive marks for marketing reasons.
Descriptive marks describe a quality or characteristic of the goods/services. If your competitors need the term(s) used in your trademark to describe their products, your mark is most likely descriptive. Descriptive marks are considered weak marks. Descriptive marks are difficult to register, and your competitors are most likely already using the mark to describe their goods/services, making it difficult and costly to police and protect the mark. Nevertheless, it is possible to register many descriptive marks, and we can provide advice on doing so if you decide to use a descriptive mark.
Examples of descriptive marks include HOLIDAY INN® hotels, ALL BRAN® cereal, and AMERICAN GIRL® dolls. Many descriptive marks use a geographic location to identify the product/services (e.g., LUBBOCK TALENT AGENCY, OBX (to designate North Carolina’s Outer Banks), and BANK OF AMERICA).
I am a trademark attorney, not a marketing professional. I encourage my clients to work with marketing professionals when selecting a new mark and designing a new logo. However, it is important to remember that while the use of descriptive marks allow consumers to immediately identify the product/service being offered, this approach often leads to marks that cannot easily be protected and enforced.
Generic marks use the common, everyday name for the goods/services. Everyone has a right to use generic terms to refer to their goods/services (e.g., the use of the word APPLE to describe apples). Generic marks are never registrable or enforceable against third parties. If you adopt a generic term to identify your goods or services, you will not be able to prevent others from using the same term to identify competing products or services. Nevertheless, if you use a generic term in combination with a unique design element, the design element portion of your mark may be registerable.
No matter how strong your trademark is, over time it can become generic and lose its protection as a trademark. If you start using your mark in a non-trademark manner (e.g., ESCALATOR for moving staircases, KLEENEX for tissue, and ASPRIN for pain relief medication), or if you fail to police the use of your mark, you can lose any trademark rights you have in the mark.
To help prevent your mark from becoming generic, never use your mark as a verb and pair your mark with the generic product or service description (e.g., KLEENEX® tissue).
As part of the examination of your application, the USPTO will conduct a search of your mark. If the USPTO finds another registered mark or earlier-filed pending mark confusingly similar to yours for related goods/services, it will refuse to register your mark.
I do not want to waste your time and money by filing an application on a mark that is obviously going to be rejected by the USPTO. Performing a trademark search saves you the expense of applying for a mark for which you will likely not receive a registration. Also, the search results may show whether your mark or a part of your mark appears as generic or descriptive wording in other registrations, and thus is weak and/or difficult to protect.
While some of the following refusals might result in an absolute bar to registration, I can help you overcome many of the following USPTO rejections:
- Likelihood of confusion with an existing mark.
- The mark is merely descriptive or deceptively misdescriptive.
- The mark is primarily merely a surname.
- The mark is geographically descriptive of the origin of the goods/services.
- The mark is a foreign term that translates to a descriptive or generic term.
- The mark is an individual’s name or likeness.
- The mark is a title of a single book and/or movie.
- The mark is used in a purely ornamental manner.
Simpson Law includes a U.S.-licensed trademark attorney who focuses on trademark law. Ms. Simpson can provide valuable legal advice about many important legal issues and help you before, during, and after the trademark application process. Before you file your application with the USPTO, Ms. Simpson can save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks to determine if your mark is available for use and if it is eligible for federal registration.
When preparing your application, Ms. Simpson can help you navigate the registration process to provide maximum protection of your trademark rights. Additionally, Ms. Simpson can prepare responses to any refusals to register your mark that a USPTO examining attorney may issue. Finally, Ms. Simpson can help you understand the scope of your trademarks rights and advise you on the best way to police, enforce and maintain those rights.
No. In the United States, you are not required to register your mark to obtain protectable rights. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration.
Common law trademark rights are established by the use of a mark in commerce in connection with goods/services. Common law trademark rights are restricted to the geographic area in which the mark is used.
- Exclusive right to use the mark nationwide
Once registered, your mark will be treated as if used nationwide as of the application date, which is vital in a system in which the first user wins. If you don’t register your mark, your rights (i.e., “common law rights”) exist only for the specific geographic area in which the mark is used, potentially allowing others to use the same mark in another geographic area and leading to inevitable confusion when you and/or the other party expands. A state trademark registration only provides rights within the borders of that one state.
- Listing of your mark in the USPTO’s online database
This discourages others from using similar marks by making the mark easy to find in a trademark search.
- Protection against registration of confusingly similar marks
The Trademark Office has a duty to cite prior registrations against applications for confusingly similar marks and to refuse to register such marks, thereby enlisting the power of the U.S. Government in helping to prevent infringement at no additional cost to you.
- Nationwide notice of ownership of the mark as of the registration date
This prevents others from claiming their subsequent adoption of the mark was in “good faith.”
- Evidence of the validity and exclusive ownership of the mark
Federal registration serves as evidence of the validity and exclusive ownership of the mark for the goods/services listed in the registration, with heightened protection after five years and the possibility of becoming “incontestable,” which can help in court proceedings, and perhaps more importantly, in quickly convincing others to cease using a mark without the need to go to court.
- Use of the federal registration symbol “®”
Federal registration grants the right to use the ® symbol when the mark is used in connection with the goods/services listed in the registration, putting competitors on notice that you are serious about protecting your rights.
- Ability to enforce your trademark rights in federal court
You must have a federal trademark registration before you can sue for trademark infringement in federal court. Bringing suit for trademark infringement in federal court involves judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, increased damages, and attorney’s fees and costs.
- Increased damages for infringement
In certain cases, you can obtain treble (3x) damages and attorney’s fees, thereby providing for potential significant monetary recovery in appropriate cases.
- Statutory damages
In certain cases, having a federal trademark registration entitles you to certain statutory damages in the case of counterfeiting, relieving you from the requirement to demonstrate actual damages in order to receive a monetary award.
- Foreign trademark protection
A U.S. federal registration provides a basis for foreign registrations, facilitating protection of your marks worldwide as your business expands.
- Prevent importation of infringing foreign goods
Federal registration empowers U.S. Customs and Border Protection (CBP) to prevent importation of infringing foreign goods once your registration is separately recorded with CBP. This allows CBP to help you prevent infringement at no additional cost to you.
Typically, Ms. Simpson applies for federal trademark registration on the Principal Register. Trademarks that are deemed “merely descriptive” of the associated goods/services, however, are not eligible for registration on the Principal Register. Such marks are eligible for registration on the Supplemental Register.
Registration on the Supplemental Register provides the following benefits:
- Use of the ® symbol, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
- Inclusion of the registered mark in the USPTO’s database of registered and pending marks.
- Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
- Use of the registration as a basis to bring suit for trademark infringement in federal court.
Once a mark on the Supplemental Register has “acquired distinctiveness,” a new application can be filed seeking registration of the mark on the Principal Register.
Each time you use your mark, it is best to use a designation with it. If registered, use ® after the mark. If not yet registered, use TM for goods or SM for services, to indicate that you have adopted this as a trademark or service mark, respectively, regardless of whether you have filed an application with the USPTO. You may only use the registration symbol with the mark on or in connection with the goods/services listed in your federal trademark registration.
Yes. An application may be filed on a mark that is currently being used in commerce, or an application may be filed based on an intent to use a mark in commerce in the future.
Please note, a trademark registration will not issue until your mark is actually used in commerce. Additionally, you cannot reserve a mark indefinitely, and you cannot file an application on a mark that you do not plan to use in the future in order to prevent others from using that mark.
No, a U.S. trademark registration is effective only in the United States. If after filing a U.S. application you want to protect your mark outside the U.S., Ms. Simpson can help you file an international application.
A specimen is a real-life sample of how you are actually using your trademark in commerce with your goods or services. A specimen shows your trademark as purchasers would encounter it in the marketplace (e.g., a specimen could be a photograph showing your mark on the product or packaging).
- Photo of the actual product, packaging or container on which the trademark is imprinted/engraved
- Photo of a label/tag bearing the trademark and attached to the product/packaging
- Photo of static display showing the product being exhibited along with a sign on which the trademark is displayed to customers
- Instruction sheet/manual imprinted with the mark that accompanies the product when sold
- Screenshot of web page showing the mark in close proximity to the product and showing a means of ordering the product
- Advertising materials
- Photo of signage (e.g., on billboards or at the business headquarters)
- Screenshot of web page advertising the services
What are NOT acceptable specimens?
- Anything that does not show the complete trademark with or near the goods/services
- Visual mock-up/digitally-altered image (the specimen must show the mark in actual use in commerce)
- Printer’s proofs for advertisements/marketing materials
- Press release
- Drawing of the trademark
- Display of the mark only that does not show the products/describe the services
- Order form or invoice
- Photo showing the mark used in a purely ornamental or decorative manner (e.g., a slogan or design across the front of a T-shirt)
- Advertisements or marketing materials for goods/products (these items may only be used as acceptable specimens for services)
What happens after my trademark application is filed?
- USPTO Examining Attorney Review
An assigned Trademark Examining Attorney will review your application to determine whether federal law permits registration.
- Office Action
The Examining Attorney may issue a letter (Office Action) explaining any reasons for refusing registration or other requirements.
- Approval for Publication
If no refusals or additional requirements are identified or if all identified issues have been resolved, the Examining Attorney will approve the mark for publication in the Official Gazette, a weekly online publication.
- Opposition Period
After publication in the Official Gazette, there is a 30-day period in which the public may object to the registration of your mark by filing an opposition. An opposition is similar to a court proceeding, but it is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. A third party who is considering filing an opposition may first file a request for an extension of time to file the opposition, which could delay further action on your application.
- Registration or Notice of Allowance (NOA)
- Registration (Actual Use in Commerce Applications)
If your application was filed based on a mark you were already using in commerce and if no opposition (or extension of time to oppose) was filed, the USPTO generally will issue a registration certificate within 3 months after publication.
- NOA (Intent to Use Applications)
For trademark applications filed based on an intent to use the mark in commerce (i.e., if you filed your trademark application before you were actually using the mark), if no opposition (or extension of time to oppose) was filed, the USPTO generally will issue a Notice of Allowance (NOA) within 2 months after publication. An NOA indicates that your mark has been allowed by the Trademark Examining Attorney, but an NOA does not mean that your mark has registered. You must first use your mark in commerce and submit a Statement of Use, including a specimen of use, before the USPTO will issue a registration certificate.
- Registration (Actual Use in Commerce Applications)
The overall registration process typically takes 9-12 months, or longer, depending on several factors such as the filing basis of the application (it takes longer to register a mark that is not being used in commerce at the time of filing) and whether or not the Examining Attorney issues an Office Action with a refusal to register the application.
Rights in a federally registered trademark can last indefinitely if you continue to use the mark and file all the required maintenance documents with the required fees at the appropriate times.
- File a §8 Declaration of Continued Use or Excusable Nonuse
Between the 5th and 6th years following the registration date (or within a 6-month grace period thereafter), you must file a §8 Declaration.
- §15 Declaration Incontestability – While not required, Ms. Simpson often files a Declaration of Incontestability along with the §8 Declaration, which can provide you with heightened protection and can help you win and avoid trademark disputes.
- File a Combined §8 Declaration of Continued Use and §9 Application for Renewal
Between every 9th and 10th year period following the registration date (or within a 6-month grace period thereafter), a Combined §8 Declaration of Continued Use and §9 Application for Renewal must be filed.
Failure to file the required maintenance documents and fees will result in cancellation and/or expiration of your trademark registration.
A copyright protects original works of authorship. This includes writings, music, films, paintings, choreography, photographs, graphic art, product art, sculptures, sound recordings, architectural plans, and other creative works that exist or have existed in some physical form.
Continue reading to the right (below on a mobile device) for answers to the most frequently asked questions Simpson Law receives regarding copyrights.
Frequently Asked Questions
Once you retain Simpson Law as your attorney, you gain full access to Sarah Simpson’s experience and knowledge. She will walk you through the copyright application process and make sure you understand the nuances of copyright law. Ms. Simpson’s flat fee for preparing and filing a federal copyright application is $750 for the first application, and $400 for each additional application.
In addition to attorney’s fees, clients are responsible for paying the U.S. government filing fees. U.S. Copyright Office filing fees for electronic registration are $45 to $65 for basic claims.
The moment a work is created and fixed in a tangible form (i.e., a form that is perceptible either directly or with the aid of a machine or device).
Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed. Additionally, copyright does not protect titles, names, short phrases or slogans. To be protected by copyright, a work must contain at least a minimum amount of authorship in the form of original expression.
Copyright protects the expression of an idea, but not the idea itself. Patents are often used to protect ideas as inventions or discoveries. A trademark protects names, logos and other branding used to identify and distinguish the source of goods/services.
No. Copyright exists from the moment your work is created. However, you cannot enforce your copyright against infringers (e.g., others copying your work) without a federal copyright registration.
- Ability to File a Lawsuit for Copyright Infringement
A copyright owner cannot file a lawsuit to enforce/protect its copyright until the U.S. Copyright Office has issued a registration.
- Eligibility for Statutory Damages, Attorney Fees, and Costs of Suit
It is important to file a copyright application within 3 months of publication of your work. When a copyright is registered prior to infringement (or within 3 months of publication), you become eligible for an award of statutory damages (i.e., $750–$30,000 per work infringed, and up to $150,000 for willful infringement), attorneys fees and costs of suit.
- Public Record of Ownership
Ownership is often at issue in disputes over copyrights, and registering copyrights creates a public record of copyright ownership. Additionally, a public record of ownership may deter a potential infringer who is considering using your content without permission.
- Presumption of Ownership
Registration before, or within 5 years of, publication of a work establishes a presumption that the copyright is valid and the facts stated in the registration certificate are true. This means you will be the presumed owner of the copyright, and anyone seeking to challenge your ownership will have the burden to demonstrate otherwise.
- Protection Against Importation of Infringing Works
Registration is required to participate in a U.S. Customs and Border Protection (“CBP”) program, wherein CBP will seize and detain imported goods that violate intellectual property rights in the U.S.
Mailing yourself a copy of your work is sometimes called a “poor man’s copyright.” There is no provision in copyright law regarding any such type of protection, and it is not a substitute for registration.
The United States has copyright relations with most (not all) countries throughout the world, and as a result of these agreements, we honor each other’s citizens’ copyrights.
It generally takes 3-6 months to receive your copyright registration certificate after filing your application. This time period may be as short as 1 month or as long as 12 months.
Life of the Author Plus 70 Years
- As a general rule (for works created after January 1, 1978) copyright protection lasts for the life of the author plus an additional 70 years.
Anonymous/Pseudonymous Work or a Work Made for Hire
- For these works, the copyright lasts for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first.
For works first published prior to 1978, the term will vary depending on several factors.
No. Works created on or after January 1, 1978, are not subject to renewal registration. For works published or registered prior to January 1, 1978, renewal registration is optional after 28 years but does provide certain legal advantages.
Design patents protect the appearance of useful objects. Simply, design patents protect the way an object looks.
Continue reading to the right (below on a mobile device) for answers to the most frequently asked questions Simpson Law receives regarding design patents.
Frequently Asked Questions
A design patent may be granted to anyone who invents a new, original and ornamental design for an object. The subject matter of a design patent application may relate to the configuration or shape of an object, to the surface ornamentation applied to an object, or to the combination of configuration and surface ornamentation.
Utility patents protect the way an article is used and works. Utility patents cover machines, articles of manufacture, methods, compositions of matter, and any new and useful improvement thereof.
Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.
Design patents do not cover the function or construction of an object. If at the time the design was created, there was no unique or distinctive shape or appearance to the article not dictated by the function that it performs, the design lacks ornamentality and is not proper subject matter.
Also, a design must be “original.” A design that simulates a well-known or naturally occurring object or person is not original.
For applications filed on or after May 13, 2015, the patent term is 15 years from the issue date. The patent term is 14 years from issuance for applications filed before May 13, 2015.
No. Maintenance fees are not required for a design patent.
A trade secret is simply confidential information. Trade secrets are a type of intellectual property that comprise formulas, practices, processes, designs, instruments, patterns, or compilations of information that have inherent economic value because they are not generally known or readily ascertainable by others. The owner of a trade secret must take reasonable measures to keep the information secret.
Continue reading to the right (bleow on a mobile device) for answers to the most frequently asked questions Simpson Law receives regarding trade secrets.
Frequently Asked Questions
Contrary to other forms of intellectual property, there is no registration process available for trade secrets. Trade secrets are protected by keeping the information secret (e.g., by using Non-Disclosure and Confidentiality Agreements). A trade secret can be protected indefinitely as long as the information is kept secret.
- The information must be kept secret (i.e., it is not generally known among, or readily accessible to, those that normally deal with the kind of information in question).
- The information must have commercial value because it is a secret.
- The owner must take reasonable steps to keep the information secret (e.g., by using Confidentiality Agreements).
A patent gives its owner a limited monopoly granted by the government in exchange for full and complete disclosure of an invention, whereas a trade secret may be a patentable invention that the owner chooses to keep secret. A trade secret can have an unlimited term (compared to a utility patent term of approximately 17 years, give or take).
The best-known example of a trade secret is the formula for the COCA-COLA® beverage.
A trade secret can last forever if the information is kept secret. If the secret is not protected (i.e., the information gets out or is discovered independently), then the trade secret protection ends.