Today’s topic is one that can be of great interest to any small business owner. Today we’re talking about Trademarks. Trademarks are a little different than a lot of other types of intellectual property out there in terms of who they are supposed to protect. Originally, a trademark was seen as a way for a business owner to mark goods they had made or that they had endorsed as a sign of quality, or of the source of the goods. This is in contrast to patents and copyrights which have always existed to protect the rights of the owner.
Why Should I Register a Trademark
Trademarks are meant to protect consumers from counterfeits and from inferior products claiming to be from a superior source. This protects your business from being harmed by knock-offs or similarly named products that might be confused for yours.
Say you are in business as Salem Brewing Company in Salem, Ohio. Without a trademark, a company in Salem, Oregon, or Salem, Massachusetts, could easily enter the market with products that could be confused for yours. You have no control over what another business does for quality control, so you don’t want your customers basing their impression of you on what some other company does.
This is the importance of a trademark to your business, the ability to control what products get associated with your name, with your logo, with your brand.
What Can be a Trademark?
Trademarks can be made of images or solely of words. An example of an image trademark is the Nike Swoosh or the McDonald’s Arches. Even without words attached, these logos carry an awareness of the brand behind them.
A trademark may even be a slogan your business uses. Again using Nike and McDonald’s as examples, “Just Do It” and “I’m Loving It” have become completely tied to those brands. It can even be an invented word used as a product name, like iMac or iPod. The key thing to remember is that a trademark is something used to identify your company and to identify your products.
Which brings us to the topic of what cannot be trademarked. You cannot create a trademark that is “purely descriptive.” This means that you can’t trademark “Apple” for apple sales, “Color” for printer sales, or “Safe” for car sales. For us here in Ohio, another good example is “Cincinnati Chili”. These words solely describe the product, not where it comes from or who makes it. In other words, they don’t show how a “Safe Car™” is different from a safe car.
In addition, trademarks can’t be “functional”. This means that you can’t trademark a tire to keep another car company from making tires. You can’t trademark a spark plug to keep other people from making engines. Functional parts fall under patents, and the Trademark Office doesn’t want you to try and use them to run around what might not be able to be patented.
You also can’t trademark names that aren’t used in business. For example, I couldn’t trademark “Alexander Keane” to get people to stop talking about me, though I could trademark “A.T. Keane Law” to prevent another attorney from using that name to provide legal services.
So Now I Know What Can be Trademarked, How Do I Get One?
Trademarks are registered with the United States Patent and Trademark Office. The application can be completed and all required fees paid on the website.
Applying for a trademark can be done either before you start using a logo or name for your business, or after you’ve been using it. When you apply after you’ve been using a name or logo, you have to submit a sample of how you’ve been using it to promote your products. This might be an image of an advertisement, it might be an image of product packaging. For those in entertainment, it might even be a poster for an event they are featured at.
You also need to determine what “class” of goods your products fall under. Each class you apply for makes your application more expensive and requires you to show more examples of how you’re using your brand in the business, so the best idea is to review the classes and find the minimum number that will completely protect what you do. For example, Sony makes many different kinds of products and so they need to apply for more classes than Joe Smith Auto which makes spark plugs.
My Application is In, Now What?
Once an application is received by the trademark office, it is reviewed by a “Reviewing Attorney” within the office to make sure that it qualifies for a trademark. Applications which qualify are then published in the Trademark Gazette for opposition before finally being registered.
At its longest, the process for receiving a trademark can take years, but most applications are processed and registered within a year.
What is the Office Looking for When They Review an Application?
They are checking whether your application qualifies to be granted a trademark. They are making sure that there isn’t already a similar trademark in the field, they are checking to make sure that you haven’t merely described your product rather than trademarking a special name for it. They are also making sure that your “drawing” corresponds with the class of goods you are applying for a trademark in.
Wait, What Was That About Being Published For Opposition?
Once your application has been reviewed and the office says that you are eligible for a trademark, your application is published in the Trademark Gazette for people to object to it. An objection is someone claiming that your trademark is too similar to theirs or is too descriptive within your field, or should not be granted for some other reason.
This process exists because the reviewing attorneys cannot be experts of what exists on the ground in every single field throughout the United States. For example, Apple Computer might object to something like “Apple Consumer Goods” because it is too similar to what they produce, even though it might be completed under a different class than Apple Computer’s products.
Objections are investigated by the Trademark Trial and Appeal Board, or TTAB. TTAB does all its proceedings in writing. Each side presents its case for why a mark should or should not be approved by writing a “brief” or legal argument describing what the Trademark Office has done in the past.
Once both sides have made their argument, TTAB will make their decision about whether the contested mark will be registered. Much of their decision depends on factors like whether the two companies are courting the same customers, geography, how different the two marks are, and other things that could cause customers to not be able to tell the difference between the two.
For example, I use the name “A.T. Keane Law” for my business. There exists a “Keane Law Firm” in California specializing in Children’s Law. If I were filing a trademark and it were opposed by them, I would argue that it is unlikely that my clients in Ohio and theirs in California would come from the same pool. This makes confusion of our two law firms highly unlikely.
What Can An Attorney Do For Me?
When you hire an attorney to file your trademark for you, you aren’t just hiring someone to complete the online paperwork, though the attorney will certainly do that for you.
Attorneys will review your trademark application on a regular basis to make sure you know whether someone has filed an objection or if there are any hiccups that are holding the process up. They’ll keep an eye on things so that you can relax and get on with your business.
If someone does object to your trademark, an attorney will present your case to TTAB and argue why you should get your mark even though someone else argues against it. Like I said before, just because someone files an opposition does not mean that it’s game over. A good attorney can argue your case to TTAB or come to good terms of settlement with the other trademark holder to get you back to work.
Lastly, you are hiring someone who knows the process and can make sure to get exactly the information and pictures from you that make your trademark application go through. An attorney working with the Trademark Office through electronic communication can even reduce the cost of your trademark.
If you have questions about the Trademark process, or whether your business’s brand qualifies for a trademark contact me. I can help you figure out what classes you need to apply for in order to best protect your business. I can help you put together the best application to help you protect your brand. I can help you through the Trial and Appeals Board.
If you are looking to start a business and make sure you are protected in every way you can be, I can also help you figure out what sort of company is best for your business.
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