Trademark

(Print/Download) The Trademark Process Patent Info

 

THE TRADEMARK PROCESS | BASIC INFORMATION

 

At Paparella & Associates, we are committed to educating our clients on the patenting process in order to educate our clients on the details and expenses that are part of the trademark process.  Therefore, we have created for you this primer on the process of trademarking a name.  The trademark process can be very complicated at times and as such, though we have tried to simplify this primer, it is not an easy read, nor is it all-inclusive.  Hence, this primer is not meant to be construed as legal advice and is provided solely for informative purposes only.

A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's products and distinguish them from the products of another.  However, under some circumstances, trademark protection can extend beyond words, symbols, and phrases to include other aspects of a product, such as its color or its packaging.  Basically, trademarks make it easier for consumers to quickly identify the source of goods and/or services and are used to help prevent consumer confusion.

In order to serve as a trademark, a mark must be distinctive.  This means that it must be capable of identifying the source of the particular goods and/or services in question.  As such, trademarks are categorized into five basic types:  (1) fanciful; (2) arbitrary, (3) suggestive, (4) descriptive, or (5) generic.  The legal protection afforded a particular trademark will depend upon which category the mark falls within.  Correspondingly, the costs to prosecute a trademark application also, generally, depend on which category the mark falls within.
A fanciful mark is made-up, or invented for the sole purpose of functioning as a trademark.  Kodak® and Exxon® are examples of fanciful marks.
One basic tenet of trademarking is that, the lesser the relationship a mark has with the goods or services it distinguishes, the more protection it is typically offered.  Hence, fanciful marks are ideal from a legal standpoint.  Of course, from a marketing standpoint they, initially, mean nothing to the consumer.  Hence, you must fully develop the goodwill associated with the product.  Correspondingly however, after this goodwill has been achieved, the amount or protection you are afforded is maximized by choosing a fanciful mark (e.g., a high degree of protection is afforded a fanciful mark). 

An arbitrary has a common meaning, but the meaning is unrelated to the goods or services offered for sale under the mark.  For example, Apple® computers is an example of an arbitrary mark. 
Fanciful and arbitrary and marks are clearly the preferred categories for a mark, ignoring marketing considerations. They are easier to adopt than suggestive or descriptive marks (described below), and are typically easier to protect once adopted.
A suggestive mark is a mark that evokes or suggests a characteristic of the underlying goods and/or services.  For example, the Coppertone® is suggestive of sun-tan lotion, but does not specifically describe the underlying product (e.g., a subtle leap of imagination is needed to associate the word with the underlying product and/or service).  Many marketing professionals prefer suggestive marks over fanciful and arbitrary marks because the former helps associates the products and/or services in the mind of the consumer.  Hence, the marketing and advertising costs can be reduced while building brand awareness.  Suggestive marks are in the mid-range of the amount of protection offered and hence, are afforded more protection that a descriptive mark, but less than a fanciful or arbitrary mark. 

Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired "secondary meaning." Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage.
A descriptive mark describes the goods or services of the underlying product or service. They tell us something about the product.  For example, Jiffy Lube® is an example of a descriptive mark.  Descriptive marks are not inherently distinctive and as such, are registerable only if they have acquired "secondary meaning.”  Secondary meaning is when the public associates the mark with a particular source, rather than the underlying product.  For example, Holiday Inn® has acquired secondary meaning because the public associates the mark with a particular source (provider) and not with hotel services in general.  In determining if a mark has acquired secondary meaning, the following factors can be utilized: (1) the amount spent in advertising; (2) the volume of sales; (3) the length of time the mark has been used; as well as (4) consumer surveys.
Finally, a generic mark is a mark that is a generic term for the product or service.  For example, the term "water” is a generic term for drinking water (H2O). Generic marks are entitled to no protection under trademark law. 
Trademarks must be enforced and protected.  Otherwise, under certain circumstances, trademarks can loose some or all of its protection.  Further, extremely successful marks that are not enforced and that are not originally generic, can become generic over time.  For example, the Paparella tube, a mark used to distinguish a specific supplier of middle ear drainage tubes has been held to be generic and as such, lost all of its protection. 
There are different types of trademarks and all “marks” are not created equal.  There are common law trademarks, state trademarks, and federal trademarks.  There is also a distinction between trademarks that describe goods or other tangible products, and servicemarks that describe services.  However, the word “trademark” is used interchangeably for trademarks and servicemarks.  This primer will focus on the federal (word only) trademark as it relates to a product in a single class of goods.  *To sum up the entire process federally registering a mark, the process will take between 1 and 2 years (or more), and you will have invested between $1,000 and $5,000 in the hopes of obtaining registration.  

Before we prepare and file a trademark application, we usually recommend that a search be conducted.  This search helps us determine whether or not your name is registerable, and if so, the amount of protection you may receive from registration.  There are numerous types of searches that can be performed.  However, three are used most frequently: (1) the knockout or preliminary search; (2) the intermediate search; and (3) the premier or comprehensive search. 

The preliminary search utilizes the Federal (USPTO) database only and looks for other marks that are exactly the same or very similar to the mark in question.  *The cost of such a search for a word mark only is typically around $250.  However, if you are comfortable with search engines (i.e. Google, Yahoo, MSN), these initial searches can be done yourself by going to http://www.Qlver.com and clicking the trademark search link in the Resources section;

The intermediate search reviews the Federal (USPTO) database, in conjunction with all 50 state databases.  *The cost of such a search for a word mark only is typically around $500; and

The comprehensive search reviews the Federal (USPTO) and state databases, in conjunction with over 3,000,000 common law databases.  *The cost of such a search for a word mark only is typically around $1000.  However, this search can also be used to judge the likelihood of possible future infringement issues with the use of the mark.  Hence, this is the search we recommend if a substantial marketing effort will be involved with the mark. 

Please be advised that there is simply no substitute for a trademark search that has been conducted by trained professionals. While there are numerous organizations offering “discounted” or “low-Price” trademark searches on the World-Wide-Web, you should exercise extreme caution.

Although a search is not a prerequisite for filing a trademark application, we highly advise that one be conducted.  In the majority of cases we have found that a trademark search allows you, not only to make a more informed decision as to whether or not to seek trademark protection on the particular mark, but it also helps in the prosecution of a subsequent trademark application.  In addition, it is our opinion that a trademark application which has been prepared after a search has been conducted, offers more thorough protection for your mark.  This is because by analyzing the marks that were disclosed during the search allows us to prepare an application that is easier to defend during prosecution.  As such, by having conducted a search, the costs associated with the prosecution of the application (discussed below) may also be reduced. 

If, after reviewing the trademark search report you decide to proceed with the preparation of a trademark application for filing in the United States Patent and Trademark Office (USPTO), we can typically have the application ready for filing a short time thereafter.  *The cost for preparing and filing a United States trademark application is typically between $500 and $1000 depending on the complexity, with most cases being around $750 for a single class of goods. Of course, more complicated cases will be more expensive. Multiple classes can be added for an additional $500 per class.  Notably, you may want to file in multiple classes for maximum protection of your mark.

If you are comparing the relative pricing structures of various organizations, be careful.  As with any comparison, make sure you are comparing the exact same services.  With trademarks, you will want to know: 1) what type of mark you are having registered (i.e. word, design, or word+design); and 2) what costs are included in there fee (i.e. drawings, USPTO fees, number of classes).  The policy of Paparella & Associates is to set forth inclusive fee structures in order to apprise you of the “total” costs for the various steps involved and so that you’re not surprised by a bill that is significantly higher than what you were quoted.  As such, the pricing structure set forth herein includes everything to prepare and file a word application with the USPTO (includes all attorney time for the preparation of the application and the payment of the USPTO fees (for a single class of goods), and all other items in order to prepare and file your application with the USPTO).  It is also imperative that you determine if the filing organization will represent you in prosecuting the application before the USPTO.  If not, you may have to seek the counsel of an experienced patent attorney in order to finish the application process (e.g., handle the prosecution of the application).  Further, if the application was not prepared correctly, you may have to start over and will have lost all of the monies you had spent thus far.  Hence, it is strongly recommended that you seek the advice and assistance of a qualified and registered patent attorney to assist you. 

There are two types of trademark application that can be filed:  In-use and Intent-to-use.  If the mark has been used in interstate commerce, an “in-use" application is filed along with specimens of the trademark as actually used.  However, if the mark has not yet been used, but there is a bona fide intention to use the mark, an "intent-to-use" application may be filed.  In the U.S., in order for a mark to be federally registered, the mark must have been actually used in interstate commerce.  Hence and intent-to-use application will “reserve” your mark, but will not be registered unless and until the mark is actually used. 

Once your application is filed with the USPTO, your application has entered what we call the prosecution phase.  *During this phase you will need to invest from another $500 to $4,000 in the prosecution of your application.  The USPTO examines the applications it receives in chronological order.  Considering the current USPTO backlog, it will typically take about one year before your application is examined.  Once examination starts, the process can last between one to two years, with the USPTO reviewing your application at least once.  When an Examiner reviews your application he prepares a written report of what he finds.  This report is called an Office Action (OA) and must be correctly responded to or your application will go abandoned.  As we receive these Office Actions, we will report them to you and prepare responses to the arguments on your behalf.  During this period, you will be billed on an hourly basis.  The costs associated with these expenses are extremely difficult to estimate in advance.  *However, typical prosecution expenses tend to fall within a range of from $500-$2000 for each Office Action.  Hence you will have to invest from another $500 to $4,000 during this period of prosecution.  Additionally, it is essential that you keep in mind that no one can guarantee that an application will eventually become registered.

If the trademark is successfully registered, you will obtain protection for your mark such that you should be able to enjoin anyone from adopting an infringing mark in the United States.  However, competing marks, adopted prior to your adoption of the mark, may not be able to be stopped by your subsequent federal registration.  This is because the owner of the competing mark may have previously established common law rights.  On the other hand, this owner may be enjoined from expanding the territory were their mark is used.  Further owners of common law or state marks, adopted before your mark was adopted can oppose your registration.  Thus, it is important to choose a mark wisely in order to avoid future problems.

Your trademark is valid for 10 years and renewable every ten years.  If not renewed, you mark will go abandoned.  In order to remind you of these dates, we offer a service that you may subscribe to.

If you have any interest in obtaining protection on your mark in foreign countries, a foreign application must be filed within (in most cases) 6 months of your U.S. application in order to obtain the benefit of the U.S. filing date.  If you are interested in filing in a foreign country consult a registered patent attorney for more information. 

Also note that in order to obtain a federal trademark registration you will be required to distribute the product or service in inter-state commerce (in more than one state).  If you do not plan on utilizing your mark in interstate commerce, talk to an experiences registered patent attorney about the rights you can acquire or developed under common law and state regimes (e.g. without filing for federal registration).

If you have any other questions, please do not hesitate to contact our office.   

*Please note that the costs which are provided herein are cost “estimates” and are provided as a convenience only.  There are numerous factors that go into the costs associated with all intellectual property and as such, these costs are variable and your costs may be different than that those listed.  Hence, you should talk to your patent attorney about the costs associated with your particular case.  The costs provided herein are a base cost structure for a word mark in a single international class (as of January 2007).  More complex marks and additional classes will increase your costs, possibly significantly.

About Paparella & Associates:
Paparella & Associates is a law firm which specializes in intellectual Property.  Namely, Patents, Trademarks, & Copyrights.  Serving the business community throughout the U.S., Paparella & Associates is uniquely situated to deliver the highest quality representation, while charging fees that are more in line with business expectations.  Representing clients in all intellectual property matters including, Patents, Trademarks, Copyrights, Infringement Matters, Clearance Opinions, Freedom to Operate Opinions, and Litigation.  For more information, please visit our website at www.Qlver.com

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