Few doubt the importance of protecting a business’ name and logo with a federal trademark. Yet, many business owners focused on more immediate problems and concerned about the cost and time associated with applying for a trademark put the task aside. Some local businesses that have had a name and logo in continuous use prior to other trademark registrations will benefit from common law trademarks. However, if those businesses begin marketing themselves on line (even if only locally), they may run up against trademark infringement claims. In addition, the common law trademark will only protect a business’ name within a limited geographic area where the business is located. While there is no need for all business owners to fall victim to the “you can’t afford not to trademark” doomsday threat, it is important to evaluate your risk. Consider consulting a trademark attorney for guidance.
If you do need a federal trademark, the process is relatively straight forward but can be challenging for the lay person. The first step is to be sure that someone else hasn’t already trademarked the name. This does not necessarily mean that your trademark cannot include the same words as other trademarks. The question is whether your trademark is similar enough to an existing trademark for a similar product or service such that it creates a likelihood of confusion to the consumer. Registering a trademark without an attorney requires some research to better understand this concept and evaluate your trademark against existing registrations. The actual search for existing trademarks is simple enough and can be conducted on the United States Patent and Trademark Office (USPTO) website using the Trademark Electronic Search System (TESS). If there is a potentially conflicting Trademark, be sure to check its status. It may be that the trademark registration was canceled. Finally, qualifying for a federal trademark requires that the mark at issue be in use in interstate commerce. A restaurant that serves customers from other states does business in interstate commerce as does just about any internet business.
The next step is to draft a description. This includes a description of the mark and the goods and/or services the mark will be used with. Refer to the USPTO’s manual Acceptable Identification of Goods & Services for valuable assistance in preparing your description. You will also need to select a classification. The classification options are listed on the USPTO website. The trademark application also requires an actual representation of the mark. The mark can consist of the words only in standard letter format or can be a designed logo.
Finally, note that trademarks containing the following are unregistrable: the U.S. flag; the name, likeness or signature of living persons, unless they give consent (this protection is includes deceased Presidents, whose widows must give consent); and government insignias. The USPTO will also refuse to register marks that: are generic or too descriptive; may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols; are too similar to existing trademarks registered with the USPTO; or comprise immoral, deceptive, or scandalous matter. In addition, otherwise registrable marks may contain unregistrable components. For instance, the USPTO may consider the words “business” and “leasing” to be unregistrable, but the complete mark “Amco Business Leasing” to be registrable. A disclaimer in the application would address this problem. However, an initial trademark application need not include any disclaimers. If the USPTO feels one is necessary, they will notify the applicant. This can cause delay. A full explanation of the disclaimer element is beyond the scope of this article.
After evaluating the mark, checking the mark against existing registrations, describing the mark and the goods or services the mark will be used with, selecting a classification, and drafting a representation of the mark, you are ready to begin the application process. Simply follow the instructions. The application may be submitted on-line or by mail. Applications submitted by mail require a filing fee of $375.00 per class of goods and/or services. There are two options on-line: TEAS Plus at $275.00 per class or TEAS for $325.00 per class. TEAS Plus is the best value, but has stricter application requirements.