TRADEMARK LAW RESOURCES
Frequently Asked Questions
Trademark registration protects brands for both established businesses and those preparing to launch new products or services. Filing and securing federal trademark protection creates a business asset that builds value, strengthens your brand image, and protects your business, allowing it to confidently grow into new markets.
Resonate IP is dedicated to helping leaders and innovators protect what they’ve built and we provide tailored services to businesses of all sizes, from startups to multi-national companies. Whatever your needs, we are here and it would be our pleasure to assist.
What Is a Trademark?
First, what is a trademark? By definition, a trademark is any word, name, symbol, or device that identifies the source of one’s goods or services and distinguishes it from others. While a trademark (referred to as a “service mark” when used with services) typically combines words and/or logos, the definition is expansive, including colors, scents, sounds, motions, and package design. Simply put, a trademark conveys to customers the source of your goods and distinguishes them from others in the marketplace.
What Makes a Strong Trademark: What to Know
Although trademarks come in various forms, not all are created equal; strong marks have a greater scope of protection than weak ones. The strength attributable to a trademark is best visualized as a sliding scale, with strong marks being fanciful (KODAK for film), arbitrary (APPLE for computers), and suggestive (COPPERTONE for sunblock) on one side and descriptive (BREWING CO.) and generic marks (APPLE for apples) on the other.
Many businesses are eager to incorporate the names of cities, states, or other geographic indications as part of their brand. While well-intentioned, geographic terms should be avoided because they describe where the goods/services originate and, therefore, are inherently descriptive and weak trademarks. Descriptive brands are not eligible for federal trademark protection unless the owner can demonstrate substantially continuous and exclusive use for five years or more. Likewise, an owner of a descriptive brand will be entitled to a smaller scope of protection, thereby making it more difficult to enforce their rights against another competing business with a confusingly similar name.
A strong mark is the legal bedrock for your brand. Start by adopting a strong trademark at the outset, avoiding geographic indications or descriptive terms, to distinguish yourself from the competition and ensure that your business/products are entitled to a broad scope of protection against confusingly similar marks in the marketplace.
Our team at Resonate IP is ready to assist and has the expertise to help you adopt a strong trademark for your business.
What are Common Law Trademark Rights?
There are two routes by which a business can obtain trademark rights in the United States. First, they can acquire “common law rights” simply by using a mark with goods/services in the marketplace. These rights are automatic and arise from using the mark, but they are limited to the specific geographic areas where the products have been sold or shipped. Consequently, a local business relying on common law rights may not enforce its trademark against subsequent users outside that immediate geographic region and may be prohibited from expanding into new markets if a similar mark is already being used. Common law rights are often difficult to substantiate thereby making it difficult to enforce the brand against others and have less value to prospective investors and/or purchasers of your business should you wish to sell. The good news is that many existing businesses have enforceable common law rights despite having taken no formal steps to secure protection. Owners should perfect their common law rights by filing a federal trademark application with the USPTO and rely on their prior use under an “actual use” filing basis.
What is a USPTO Trademark Registration?
The second and far more preferable route to secure rights is to file a federal trademark with the United States Patent and Trademark Office (USPTO). Federal trademark registrations are presumptively valid and enforceable against others in all fifty states, regardless of the geographic location in which the covered goods/services have been sold or rendered. A federal trademark registration remains enforceable for (at a minimum) 6-years provided that the goods/services remain in use and will remain registered in perpetuity so long as the USPTO trademark maintenance submissions are filed on or before the 6th and 10th anniversary of registration, and every 10-years after that. Perhaps most important, federal trademark protection secures the consumer goodwill associated with your business and creates a valuable business asset that can be bought, sold, licensed, or used as a security interest to secure a loan for your business. A federal trademark registration is akin to an insurance policy in that it significantly lessens the risk associated with your business to prospective investors or purchasers, and shows them that you’ve secured your IP business assets, thereby driving the valuation of your business upon exit. Likewise, while a federal trademark registration does not remove all risk, it gives a new business assurance that its brand is secure with sufficient opportunity to expand into new markets.Finally, should a trademark dispute arise, having an existing trademark registration significantly strengthens one’s hand in potential settlement negotiations as USPTO federal trademark registrations are presumptively valid until canceled.
What are the Benefits of Registering a Federal Trademark?
A non-exhaustive list of the benefits that federal registration provides includes: Nationwide Rights. A federal registration grants a trademark holder the presumptive right to use and enforce its mark anywhere in the United States for the designated goods and/or services. This means you can prevent others from using a similar mark in any state, not just where you’re currently doing business. This also means that businesses can expand into new markets with confidence knowing that their federal trademark registration already provides protection in those geographic areas. • Constructive Notice. Federal registrations are publicly available on the USPTO website, providing constructive notice of ownership in a mark and alerting potential infringers of the liability associated with using the same or similar mark. Owners of federal trademark registrations may also use the ® symbol on their goods/services to denote their rights on product packaging, websites, or other publicly facing materials. • Federal Jurisdiction. A federal trademark owner can enforce its rights in federal court where judges are often more familiar with trademark matters and, if successful, may recover (1) any damages sustained, (2) the infringer's profits, and (3) the costs of the action, with treble damages available for willful infringement. • Transferable Property. A federal registration is a business asset that may be bought, sold, licensed, used as collateral, and shown to investors. Likewise, a prospective purchaser will want to verify the brand is secure and not subject to any collateral risk, thereby driving the valuation of your business upon exit. • Incontestability Status. A federal trademark becomes “incontestable” upon reaching its fifth registration anniversary, conclusively establishing ownership in the name of the trademark holder. Consequently, an entity with prior common law rights will be barred from challenging an incontestable federal registration based on its prior marketplace usage, and its business expansion will be geographically frozen as of the date the incontestable registration was filed. • Amazon Brand Registry. Many online retailers, such as Amazon, require a federal trademark registration before a business can formally register its brand online. This is often a critical step in securing online storefronts which allows for greater visibility amongst prospective consumers. Likewise, almost all online retailers and social media platforms require federal trademark registration as a prerequisite to filing an enforcement complaint or takedown notice if someone is using your brand without your permission.
Is a Federal Registration Required for Amazon Brand Registry?
Yes, filing a federal trademark is necessary in order to participate in the Amazon Brand Registry. Your registration must be federally filed and active in order to qualify for brand monitoring through Amazon. State trademarks are not eligible to participate in the Amazon Brand Registry.
What is the Difference Between State and Federal Trademark Registration?
In certain circumstances, a business owner may not be eligible for federal trademark protection with the USPTO in which case it may want to consider obtaining a state trademark registration. State trademark applications are filed with the Secretary of State Office and often have cheaper filing fees than a federal trademark application. Although most states have adopted the Model State Trademark Bill, each state has different rules and standards of review necessary to secure a state trademark registration. State trademark registrations have advantages over unregistered common law rights, in that the trademark owner will have a state registration number that it can reference should it need to enforce its rights via a cease-and-desist letter or in a state trademark infringement action. However, a state trademark registration is not enforceable outside the state that granted the trademark and state trademarks, unlike federal trademarks, are not entitled to presumptions of validity or incontestability status. Finally, intent-to-use applications are typically not available for state trademarks as most states require that a good/service be sold before a state trademark can be filed. This does not mean that state trademark registrations are without purpose. For example, state trademarks are well-suited to protect products (such as cannabis, or consumable CBD products) that are legal under state law but which do not qualify for federal trademark protection under the Controlled Substances Act (CSA). Likewise, state trademark registrations are often an excellent starting point for smaller businesses with limited resources or for purely local enterprises that do not sell goods/services in interstate commerce. Obtaining a federal trademark registration with the USPTO is the gold standard to protect your brand or business name in the United States.However, in certain circumstances, state trademarks provide value and are an indispensable tool in your brand toolbox. Our team at Resonate IP can assist in determining the most effective means of protecting your brand based on your goals and the facts presented.
What is the Standard for Trademark Conflict?
The legal test for determining the availability of a proposed trademark for use or registration is whether the mark, when applied to the relevant goods/services, is sufficiently similar to another mark to create a likelihood of confusion among consumers. The USPTO and federal courts will consider several factors in assessing the likelihood of confusion, including the similarities between the marks in sight, sound, meaning, and commercial impression, as well as the relatedness of the goods and/or services, channels of trade, purchaser sophistication, and the strength of the respective marks, among other factors. Importantly, two marks need not be identical for there to be a likelihood of confusion and minor changes in spelling may not make a difference. Likewise, the goods/services do not need to be the same so long as they are related in some way which causes a consumer to become confused and mistakenly assume that the goods/services originate from a common source. Resonate IP is here to guide you as you navigate and assess the risk presented by the proposed use and registration of your mark.
How Do I Know if My Name is Available?
Once you’ve chosen a name for your product or business, the next step is to conduct a clearance search to ensure that it is available and not being used by another business. This determination, known more formally as a “trademark clearance search” is an integral part of selecting a new name. Each new name carries with it an inherent degree of risk unless it is a coined term that has never been used before. Likewise, each business owner has a different tolerance for what constitutes an acceptable degree of risk. Performing an early clearance search of the USPTO database and/or common law resources (marketplace usage, domain names, state trademarks, business records, etc.) allows you to assess the relative risk of your proposed mark and determine what, if any, similar marks may exist that may present a conflict. Resonate IP offers a suite of clearance search services tailored to businesses of all sizes, ranging from start-ups to multi-national companies, that provide valuable insight into the relative risk associated with a proposed mark without breaking the bank. Our team is happy to assist in helping you adopt a strong mark that is compatible with the needs of your business and your risk tolerance.
Can I File a Trademark Before I Launch?
USPTO trademark applications can be filed under either an (1) actual use or (2) intent-to-use filing basis. For actual use, an existing business can file a trademark and provide a “specimen” (or an example of use) showing how the mark appears with the goods/services and a “first use date” representing when the goods/services were first publicly offered for sale and first sold in interstate commerce. For a business that has not launched, or who is preparing to launch, the USPTO allows a trademark application to be filed under an intent-to-use (ITU) filing basis. ITUs allow startups to mitigate risk as ITU trademark applications obtain a constructive use priority date as of the date the application is filed with the USPTO. Once filed, an ITU will have an earlier priority date against any later filed trademark application and the owner’s rights (assuming there are no prior use-based rights) will be determined by the date the respective trademark applications were filed with the USPTO. ITU applications are filed and examined by the USPTO in the same manner as those based on actual use with the exception that an ITU will be approved following examination, but will not register as an enforceable trademark, until the applicant has filed a specimen showing how the mark is used on the goods/services covered by the application. The USPTO allows an ITU trademark applicant up to 3-years following approval to file a statement of use before an ITU application will be abandoned. However, once a statement of use is filed, the nationwide trademark rights associated with that application will post-date back to the filing date of the underlying application. ITU applications are an indispensable tool to secure an early filing date with the USPTO while allowing sufficient time for a new business to bring a product/service to market. When paired with a trademark clearance search, ITU applications mitigate the risk that a third-party will obtain earlier prior-use rights with the same or similar name before your business or product launches.
How Much Does a Federal Trademark Cost?
The USPTO charges a filing fee for each class of goods/services covered by the trademark application filing. The number and nature of the trademark classes will depend on your business, as well as the goods/services that you plan to offer. For example, if you plan to sell clothing, headwear, and footwear, those goods would fall into a single class of goods (Class 25). On the other hand, if you plan to sell jewelry (Class 14), bags (Class 18), and protect your e-commerce retail store services (Class 35), each of those classes will require a separate filing fee, thereby increasing the cost of the trademark filing. Filing in every class is prohibitively expensive and (presumably) does not accurately reflect goods/services offered by the business. A prudent approach is to protect the core goods/services associated with the business and file subsequent trademark applications when you expand into those fields. Resonate IP offers its trademark filing services on a flat fee, or fixed cost basis, which covers all anticipated work to file a trademark application and report the status through to approval. We believe that price transparency facilitates trust and ensures that each client can start building an IP portfolio and budget accordingly.
How Long Does USPTO Registration Take?
The USPTO is currently taking 7-8 months to examine applications after they are filed. Assuming no issues are raised during the examination, the application will then proceed to publication with the USPTO Official Gazette which starts a 30-day window for others to contest the trademark application before the USPTO Trademark Trial and Appeal Board (TTAB). If no third-party objection is received, the application will proceed to registration (or approval for ITU applications) approximately 2 months thereafter. All in, most trademark applications are approved approximately 10-11 months after the filing date. The USPTO examines applications based on the date that they were filed. Therefore, we encourage those considering trademark protection to file early to secure an early priority filing date with the USPTO, thereby mitigating risk against subsequently filed applications.
How Long Does a Trademark Registration Last?
Trademark registrations remain enforceable for an initial term of 6-years, at which point trademark owners must file trademark maintenance documents to ensure the registration remains valid and enforceable. Trademark registrations must be renewed between the 9th and 10th anniversary of registration, and renewed every 10 years thereafter. If properly maintained, a trademark registration remains valid and enforceable in perpetuity provided that it continues to be used for the goods/services covered by the registration.
How Do I Protect My Trademark Internationally?
Trademark rights are territorial and use/registration in the United States does not provide protection in other countries. The vast majority of countries adhere to a “first-to-file” system in which trademark rights are determined by the first party to file a trademark application in that country. Actual use of a mark is not required to secure trademark rights in these countries, which creates both opportunities and risks as your products are sold//shipped to customers abroad. Bad faith filings are particularly rampant in Asia and it is not uncommon for businesses to have their trademarks owned by another party in those countries without their permission. Resonate IP takes a pragmatic approach to protecting your trademarks abroad, focusing on where your product is manufactured/sold and protecting rights in emerging markets, and vigorously defending your rights against bad-faith actors when necessary.
What Are the Benefits of Hiring a Trademark Attorney?
The USPTO allows individuals or businesses to file trademark applications without representation by counsel. However doing so may cause the application to be filed incorrectly or to mistakenly assume that a business name is available, when it is not. Retaining knowledgeable counsel will help avoid these pitfalls, ensuring that your application is correctly filed and presented to the USPTO such that it has the best chance of registering as an enforceable trademark. Using counsel to file a trademark application is also advantageous in that they will be the principal contact for the application with the USPTO, thereby avoiding your personal information and email from being publicly displayed on the USPTO database. Unfortunately, there are many bad faith actors who will scrape your contact information from the USPTO website and send misleading or false correspondence (invoices, renewal notices, etc.). Protecting the disclosure of your information will limit your exposure to this correspondence and any false information can be verified by your trademark counsel as a scam. Trademark counsel will notify you of the issuance of your trademark registration and advise you of the trademark maintenance and renewal deadlines to ensure that your trademark is not inadvertently abandoned. Finally, trademark counsel can establish trademark monitors or watches of the USPTO database to alert you of any confusingly similar trademark application and, where necessary, can assist you with enforcement efforts.
Why Resonate IP?
Resonate IP goes beyond just helping you register a trademark and we pride ourselves on the ongoing relationships that we have with our clients. Our goal is to be a continuing resource to you and your business, from inception to successful exit. We offer a suite of trademark services, from trademark monitoring, enforcement, and international protection, to ensure that your needs are covered at each stage of the business lifecycle. Resonate IP is here to make sure you get it right the first time, every time.
This website and its contents are for informational purposes only and do not constitute legal or professional advice.
