What is a Trademark?
A trademark identifies intellectual property belonging to a person or company and provides them with exclusive rights to that work. A trademark is typically a symbol, design, word, or phrase (or a combination of these things), that differentiates one good from another. A trademark sets your business apart from other companies that might offer the same or similar goods, and can help you protect your brand if another person or company attempts to use your intellectual property without your permission. A trademark attorney can help protect your intellectual property by helping to secure a trademark on your work.
Can I Trademark Anything?
In short, the answer is no. First, let’s cover what you cannot trademark:
Generic terms and/or phrases
Government symbols or insignia
Proper names or likeness without obtaining consent from that person
Vulgar and/or disparaging words or symbols
Immoral, scandalous, or deceptive words or symbols
Next, let’s cover a few important factors to consider when fabricating a trademark:
The mark is unlikely to be confused with other, existing marks
The mark is not similar to other, existing marks
The mark is not relative to other, existing marks
The mark is strong and easily distinguishable to consumers
You might be wondering how to ensure your desired trademark meets all of these requirements, and that is why it is important to hire an experienced intellectual property and trademark attorney to assist you with the trademark application process.
The Trademark Application Process
Filing a trademark application can be a long and complicated process if you fail to prepare accordingly. Typically, our intellectual property attorneys begin by requesting a Trademark Research Report; this report analyzes thousands of existing trademarks for those that are similar, nearly identical, or identical to your desired mark. Once we receive the report, we review it for marks that may prevent you from filing a trademark application, or those we think might raise a red flag with the United States Patent and Trademark Office (USPTO). While this report is not a mandatory requirement in the application process, it can save our clients time and money in the long run by highlighting issues with their desired mark that would prevent or make it challenging for the mark to proceed to registration. It is important to note that when applying for a trademark, there is no “pre-approval” process – once the application is submitted, a client will not find out whether or not it has been accepted for several months. After our trademark attorneys review the report and advise the client of any potential issues, and if the situation warrants, the trademark application is filed with the USPTO. It typically takes several months for the application to process through the USPTO’s database due to the high volume of trademarks filed in the United States. Ideally, the application is accepted and the trademark proceeds to registration. However, there are occasions where an examining trademark attorney might find a correctable issue with the mark or the application itself, and they will send correspondence saying as much - this is known as an Office Action. Typically, these issues can be addressed in a response to the Office Action and the mark can then potentially proceed to registration thereafter depending on the issue raised in the Office Action.
Why should I hire an Intellectual Property Attorney?
As you can see above, the process to file a trademark application can be somewhat complicated. Even if your trademark application were to proceed to registration without issue, there are still various forms and fees that the USPTO requires you to file every so often in order to keep your trademark registration alive, such as trademark renewals. Our intellectual property attorneys routinely assist clients with trademark applications and the miscellaneous forms and fees required to maintain trademark registration.