Trademarks
Your brand is one of your most valuable business assets.
We help you protect it nationwide with federal trademark registration and ensure you are not infringing on anyone else’s brand.
Strategic Brand Development
For clients in the brand development stage (or those unable to decide among multiple potential brand names), we collaborate with you to develop/choose a trademark for your products/services that has the strongest likelihood of federal registration. Although we can’t guarantee federal registration—no one should—we know what USPTO examining attorneys typically look for in evaluating trademarks.
During the trademark development process, we will run a basic USPTO “knockout” search for currently registered trademarks that might be confusingly similar. We analyze the results of the knockout search and provide our analysis to you with our specific recommendations or concerns.
Trademark Registration + Prosecution
For clients who are ready to register their trademark(s) with the USPTO, our representation starts with an initial 60-minute strategy meeting. For clients who want it, we are happy to conduct this initial strategy meeting via video. We use this initial meeting to gather information about your business, brand, and vision, as well as address any questions or concerns you may have.
Once we have obtained the information we need, the next step is to run a comprehensive search to identify potential conflicts and competing trademarks. We use industry-leading software to conduct this comprehensive search. We evaluate the results of the search and provide you with an opinion letter summarizing the findings, and our recommendations for next steps. We also provide you with a copy of the search report.
If the search results allow us to proceed, the next step is to prepare and file your trademark application. This stage includes: (1) determining and selecting the appropriate USPTO process (i.e., your mark is already in use vs. you intend to use soon) and international class designations, (2) drafting goods and services descriptions, and (3) evaluating and presenting the evidence, called “specimens” of your use of your trademark.
The final registration stage is prosecution. Here we serve as the official attorney-of-record to handle all documentation and communication with the USPTO examining attorney regarding your application. We also respond to minor, technical communications and office actions received from the USPTO examining attorney.
Some clients want the peace of mind that we will also handle substantive office actions, if any, issued by the USPTO, and we are happy to customize flat fee packages that include this.
Trademark Monitoring, Licensing, + Defense
Protecting your brand intellectual property doesn’t end with registration. Trademarks are not a register it and forget it kind of asset. Our trademark monitoring service includes advising you about the USPTO requirements for maintaining your trademark registration, tracking the maintenance filing deadlines for your mark, and timely filing required registration maintenance documents with the USPTO on your behalf. We can also monitor the USPTO trademark database to determine if anyone is attempting to register marks that could jeopardize your registration(s).
We also help trademark owners with trademark licensing and trademark assignments (which just means transferring the ownership of your trademark to someone else).
We help you defend your trademarks by preparing cease and desist letters when someone tries to infringe on your brand.
Questions?
Like what you’re reading, but not sure what you need or where to start?
We offer a FREE 20-minute initial discovery call for you to see what we’re about, and for us to determine if we are a good fit for your needs.
Frequently Asked Questions
What is a trademark + why do they matter?
Trademarks are the identifying aspects of your brand. These identifying aspects, or “source identifiers,” can be your business name, slogan, product line, podcast, logo, sounds (think NBC tri-tone), colors (UPS brown trucks), or other design elements (coke bottle, Apple store design). Simply put, a trademark is any type of indicator that tells the consumer something about where the product came from.
The main purpose of trademarks is to prevent customer confusion. Think about how confusing it would be if there were two different computer companies named Apple and you didn’t know which company you were getting your smartphone from. Now think about how you would feel if Apple Company 1 made faulty smartphones that died after a week and cost the same as the top-quality smartphones made by Apple Company 2, and you bought Apple Company 1’s phone by mistake. You’d be furious. You know who else should be furious? Apple Company 2. We don’t want you to be Apple Company 2.
Why should I register my trademark(s) with the USPTO?
Trademarks give you exclusive rights to your brand (business name, logo, slogan, etc.). Under US law, you automatically have “common law” rights in your brand the moment you conduct business under your brand name. The problem is these automatic trademark rights are weak. They only prevent others in your geographic region from using the same or similar name. This means that another company outside the immediate area where your company does business can use the same or similar name for the same goods and services and not be infringing on your brand. If you are OK with this, you may not need federal trademark registration. If you aren’t OK with this, let’s talk.
Let’s face it, most modern businesses operate (or plan to operate) throughout the U.S. and/or globally. Securing federal trademark registration from the USPTO gives you exclusive rights nationwide to your brand.
Are there any other useful benefits of registration?
Absolutely. Federal registration provides:
notice to the public that you are the owner of your brand
a solid legal foundation on which to build your company’s reputation and goodwill with consumers
protection against the use of the same or confusingly similar trademarks by your competitors
standing to enforce your rights as the owner of your trademark
There’s a company with a name similar to mine. Can I still use mine?
The short answer is it depends. It depends on whether the similarity between the names is likely to lead to consumer confusion. The use of similar trademarks might be okay if the companies using the similar marks are in different industries and use the marks on different goods or services. Trust us on this, you do not want to risk infringing on someone else’s trademark. We can help you mitigate the possibility of trademark infringement by conducting detailed trademark searches and providing a thorough legal analysis of the search results.
I registered my business with my state, and I own the website and social media handles, do I really need trademark registration?
Absolutely, yes. Many business owners don’t realize that registering their business or trade name with a state agency does not necessarily give them the legal right to use that name to identify their goods and/or services in the marketplace. There are two very different contexts in which a company’s name may be used:
Trade Name. The formal name of the business for purposes of registering with the state, opening bank accounts, creditors, and potential lawsuits; and
Trademark or Service Mark. The name that the company uses to market its goods and/or services.
Registering your business with the state addresses the first context only. For example, suppose you register your business name, “Flying Lion Events” as a corporate or fictitious business name with your state agency. Now suppose that “Flying Lion Events” is already being used as a trademark by another company that has secured federal registration for the mark. To add further complication, assume your company and the second company provide the same or similar goods and/or services. While you can legally use the corporate business name “Flying Lion Events” to open bank accounts, etc. You cannot legally use “Flying Lion Events” on your signs, advertising, and products/services because you will be infringing on a federally registered trademark.
The legal distinction between formal corporate or trade names and trademarks is tricky. We can help you navigate it.
How long does it take to get a trademark registration?
Short answer: 12-14 months. The USPTO has received a literal flood of trademark applications in recent years. On one hand, this is great news because businesses are protecting their assets. On the other hand, it is terrible news because it can take more than 9 months for a new trademark application to be assigned to a USPTO attorney. Once the application is assigned, the USPTO attorney reviews the application to determine if it can be approved. This review process usually takes an additional 3-5 months. Trademark applications that have errors or do not provide enough detail can lead to increased delays (or a refusal to register). We know what the USPTO looks for in a trademark application. We take steps to ensure your application has the highest chance of success for swift approval and, ultimately, successful registration.
Do I need a lawyer to register a trademark?
Technically, no. You can complete and file the application yourself, or hire an “affordable” form-filling service to do it. But - and we say this with love - you get what you pay for.
Applying for a US trademark registration is complicated. Done correctly, the trademark application process requires legal research, analysis, and strategy to ensure you get the best and most complete protection for your brand. We know how to navigate the USPTO. So when you get an initial refusal (which as you see below is highly likely), it doesn’t have to be fatal to your application. So, no, you don’t need a lawyer to apply for trademark protection, but we recommend our friends and family to use one. (And, yeah we’re totally biased about this.)
Real talk re: trademark applications
The USPTO receives several hundreds of thousands of trademark applications each year. Nearly 70% of all trademark applications are initially rejected by the USPTO attorney reviewing the application. Many times, these initial rejections can be overcome. Even then, only 52% of trademark applications are ultimately successful. Let’s make sure you are in the 52%.
Doesn’t LegalZoom also file trademark applications? Can’t I just use them?
You can. We don’t recommend it. In our experience, clients who have used LegalZoom and other cheap filing services for their trademarks end up regretting it…and wasting valuable time and money.
A trademark filing service (i.e., LegalZoom) might advertise a lower cost at the outset but this lower cost represents far less value than what you receive when you hire an attorney to file your trademark registration.
Here’s why. Cheap online filing services like LegalZoom are not law firms. And, because they are not law firms, they cannot give you legal advice. When you pay the filing service’s fee, you have no idea whether your trademark will have problems (i.e., the same or similar trademark is already registered and your application is likely to be rejected).
Cheap filing services also don’t warn you about small, often technical, details that can become big problems later in the application process. And, If you do have problems, these filing services don’t just give you your money back. (They don’t support you either with those technical details.)
Filing services, like LegalZoom, provide no support once the application is submitted to the USPTO. As we mentioned above, nearly 70% of all trademark applications run into some sort of issue during the registration process. If you use a cheap filing service, you are on your own to deal with any issues that come up.
What if I just want a trademark search?
DO IT! We cannot overstate the importance of investing in a quality comprehensive trademark search. That way, you know from the outset whether you will run into problems with your proposed trademark. One of the most heartbreaking mistakes we see is when clients skip - or skimp - on a trademark search.
The cost and (quality) of trademark searches varies greatly. We strongly recommend that you research what is included in the cost of any trademark search you are considering. Higher cost searches typically deliver a higher value search. They also typically include an attorney analysis of the results and recommended next steps.
Many trademark attorneys, like us, include the cost of a comprehensive trademark search in their overall trademark package. We also offer a complimentary second search in the event the results of our first search indicate we cannot proceed to registration with your original mark.
Regardless of who you engage to conduct a search, we want to ensure that you get a good quality search. Stay away from search services that offer a limited search that clears only your exact mark. At a minimum, you need a search that looks at your specific mark AND any variations on your mark that the USPTO might find confusingly similar to an already registered mark.
