PROTECT YOUR BUSINESS NAME OR BAND NAME WITH A TRADEMARK REGISTRATION
If you are a business or a musical act, then a business name trademark or band name trademark can be an essential part of your brand identity. To trademark your name, logo, or slogan Creative Vision Legal uses a three-stage process:
TRADEMARK CLEARANCE & REGISTRATION PACKAGE: $1100 total ($455 legal fees + $370 comprehensive third-party trademark search report + $275 federal filing fee for one class of goods/services using standard TEAS application*)
- STAGE 1 ("Knock Out" Search) : Preliminary search of the USPTO's Trademark Electronic Search System (TESS) for confusingly similar trademarks based on intake questionnaire responses about your proposed trademark given in secure client portal.
- STAGE 2 (Clearance): Procurement of a comprehensive nationwide trademark search report from a trusted third party, a thorough review of the results, and an opinion letter from the firm's trademark lawyer regarding the availability of your proposed trademark.
- STAGE 3 (Registration): Preparation of your trademark application with the United States Patent and Trademark Office (USPTO).
- 30 minutes of legal consultation split between review of results from the TESS search and review of search report results.
- Client pays $455 in legal fees to begin service.
- Client can pay $370 for third-party search report directly to vendor or $370 + 2.8% credit card processing fee^ in client portal.
- Client pays $275 federal fee* per class of goods/services and files the application with the USPTO based on instructions from the firm.
- The firm will respond to any non-substantive, purely ministerial Office Actions from the USPTO at no extra charge; work on Office Actions involving legal research and/or substantive advocacy will be charged at the firm's standard rate of $250/hr.
- Your trademark registration certificate will be mailed to you once it is received from the USPTO.
- All work except the third-party search report is performed by the firm's trademark attorney. Additional legal and USPTO filing fees apply if registration in more than one class of goods/services is desired, or if the firm is retained to handle additional trademark filings subsequent to issuance of a certificate of registration by the USPTO.
TRADEMARK MYTHS DEBUNKED
The following are some “myths” related to trademark law and the facts to dispel them (note that all of these are questions from past clients):
“An internet search is all I need to find out if the trademark I want to register is available, so search reports are a waste of money.”
The most critical step in the firm's trademark registration process is Stage 2 (see above) in which a third party search is conducted on your behalf for any uses of your trademark by others in the U.S. or internationally (if needed). Failure to discover such uses may render your trademark registration useless or worse (see "Warning!" below). Trademark searches scour not only the USPTO records and the internet, but also databases of periodicals, state and local business listings, and state trademark registrations from every locality in the geographic area in which you seek protection. The firm's trademark attorney will review your trademark search report and use it as the basis for an opinion letter outlining the prospects for registering your trademark.
WARNING! Watch out for any trademark registration service that only offers to perform searches of USPTO records and the internet before filing your trademark application. These services leave you vulnerable to (1) an opposition proceeding in front of the Trademark Trial and Appeal Board (TTAB) by another user of your mark before your mark is officially registered, or (2) a cancellation proceeding in front of the TTAB or in some cases, a federal district court, after your mark is registered. You may also forfeit all fees paid during your unsuccessful attempt to get a trademark, because the USPTO does not refund fees after an application is filed for reasons of unavailability of the mark. A third-party trademark search is worth the money because it gives your trademark attorney a tool to avoid these bad outcomes. This firm does not make any money from procuring third-party searches, and always includes the receipt for searches in your client file located in the secure client portal.
“Once I file my trademark application, the USPTO will automatically register my trademark because the application is just a formality.”
WRONG! The USPTO website is very clear about this: “Registration is NOT automatic and requires legal review by an examining attorney”; also, “Step 3:...Not all applications result in registrations. Your fee will not be refunded, even if ultimately no registration issues." (emphasis added). The examiners at the USPTO have the discretion to deny a trademark registration for a variety of reasons, including unavailability of your proposed trademark because of someone else’s prior use.
Trademark examiners perform their own search of your proposed mark, which makes your pre-registration third-party trademark search report (see Myth #1 above) all the more vital. And don’t forget, as the USPTO warns on their website, “Step 4:...Filing fees will not be refunded, even if the application is later refused registration on legal grounds.”
“The government makes sure nobody else infringes my registered trademark and will tell me if that happens.”
This would be a nice perk to trademark registration but unfortunately, it is NOT TRUE. Although the USPTO tries to make sure no one else receives a federal trademark registration for an identical or similar mark in the classes of goods or services your mark is registered in, YOU are responsible for discovering possible infringements and enforcing your trademark rights.
“It’s OK if I put an ® next to my trademark even though it is not registered because you are allowed to put a © on a work that is not registered.”
It is true that a copyright notice symbol (“©”) may be placed on an unregistered work, because copyright in a work exists once it is fixed in a tangible medium of expression and does not depend on registration. The same does not hold true for trademarks. In fact, placing an ® symbol next to your unregistered trademark can result in some unintended and dire consequences like a fraud inquiry by the USPTO or possible cancellation of your trademark application. If your trademark is in use but is still unregistered and you want to tell the world that it is yours, a ™ symbol would be an acceptable (and legal) alternative.
OVERVIEW OF TRADEMARK LAW
A trademark identifies and distinguishes the goods of one provider from those of others; service marks perform the same function for providers of services. Trademarks and service marks are therefore essential for forming unique brand identities in goods and services. A trademark or service mark can be something as simple as a single word or combination of words like a slogan, a name (for example, a company’s “trade name” or a band name), or a logo or symbol, or as esoteric as a color, a melody, or the shape of a bottle (which would really be an offshoot of trademark protection known as “trade dress”). Basically, as long as the identifier (word, symbol, etc.) is used in conjunction with a good or service, it can serve as a trademark, service mark, or trade dress.
Trademark rights ultimately flow from use in commerce . Use in commerce without registration yields common law trademark rights governed by case law. Registration results in rights under the statutes governing registration and enforcement in a particular jurisdiction (such as the Lanham Act (also known as the "Trademark Act of 1946") for U.S. trademark registrations). Federal intent-to-use registration (see "Federal Trademark Registration Process in General" section below) gives limited rights for trademarks not yet in use are perfected once use in interstate commerce is subsequently established.
BENEFITS OF TRADEMARK REGISTRATION
While common law trademark rights are “real” enforceable rights and are not to be taken lightly, registering a trademark gives the owner many valuable benefits. The key benefit to federal trademark registration is that it gives notice to the public (known as “constructive notice”) that you have the exclusive right to use your business name trademark or band name trademark nationwide. Specifically, once your trademark appears on the principal register, constructive notice occurs. After five continuous years of use following your trademark registration date, your mark becomes incontestable and thereafter can only be challenged under limited circumstances.
Besides serving as public notice of your trademark, a trademark registration also allows you to sue in federal court to enforce your rights and if successful, receive remedies that may not be available to owners of common law trademarks. These remedies include:
Injunctions with a nationwide reach
A federal district court can issue an order on your behalf forcing the infringer(s), wherever they are in the U.S., to immediately stop using your trademark.
Profits, Costs, and Treble Damages
If your trademark infringement case is successfully proven, a court may award you the defendant’s profits from the infringing use of your registered trademark, actual damages you suffered, and your costs in bringing the action. The court may also in exceptional cases award you treble (3x) damages and reasonable attorneys’ fees.
FEDERAL TRADEMARK REGISTRATION PROCESS IN GENERAL
SUBMITTING A TRADEMARK APPLICATION
Federal trademark registrations can follow two distinct paths: a section1(a) application based on actual use in commerce, or a section1(b) application based on your intent to use your mark in commerce. The firm's trademark attorney can help you assess which path is right for your trademark or service mark. There are other issues to consider before filing your trademark application, all of which are dealt with in the Rapidocs interactive trademark questionnaire available in your secure client portal and during your initial consultation:
"What should I register? A simple word or slogan, a logo, or both?"
How about the look and feel of my store or restaurant that might be protectable trade dress? Note that registration of a logo should be done using an application separate from that of the word or slogan contained in the logo.
"What class(es) of goods/services does my trademark belong to?"
There are 34 distinct classes of goods and 11 classes of services recognized internationally for trademarks, and your trademark application must identify the class(es) in which you are seeking registration. Each class of goods/services requires a fee with the USPTO. For example, if you want to register your band name trademark in class 9 for CDs your band is releasing AND class 41 for your band name in conjunction with your live performances, your fees to the USPTO would be $275 x2 or $550.
"When did I first use my trademark or service mark in commerce?"
If filing a section 1(a) trademark application based on actual use in commerce, you will have to identify the approximate date you first began using your mark in commerce for each class of goods/services you are registering in. Your trademark application must also contain at least one specimen of your proposed mark being used in commerce. For example, if you are a musical act seeking a band name trademark, the specimen can be a photograph of a performance with your band’s name displayed during the performance, even if the name only appears on the drummer’s bass drum!
AFTER SUBMITTING A TRADEMARK APPLICATION
After your trademark application, fees, and specimen are submitted, you receive an application serial number, and an examining attorney begins reviewing the application, which can take a few months. The progress of your application can be tracked online via the “Trademark Status and Document Retrieval” system. Barring any Office Actions (letters or communications from the examining attorney seeking clarifications or corrections or in the extreme, a refusal of registration), your trademark application will be approved after review for publication in the USPTO’s Official Gazette.
In the case of trademarks already in use (section1(a) applications), if nobody steps forward during the 30 days following the date of publication to oppose your trademark registration, then the USPTO will usually issue a registration certificate 11 weeks after the date of publication in the Official Gazette. For intent-to-use registrations (section1(b) applications), a “notice of allowance” will issue from the USPTO about 8 weeks after the date the mark was published, if there is no opposition.
You then have 6 months from the date of the notice of allowance to begin using the mark in commerce and submit a “Statement of Use” (SOU) form with a $100 fee to the USPTO, or to request a six-month extension of time to file a statement of use. Extension requests require an additional $150 fee with the USPTO. An examining attorney reviews the SOU and if no basis for refusal exists or additional requirements are not needed, then the USPTO will issue a registration, usually within 2 months after approval of the SOU.
POST-REGISTRATION MAINTENANCE OF YOUR TRADEMARK
After your registration, maintenance is required to keep your trademark registration enforceable. To that end, certain documents must be filed periodically with the USPTO or you will lose your trademark registration. For example, a “Section 8 Declaration of Use or Excusable Nonuse” must be filed, along with a $100 USPTO fee per registered class, between the 5th and 6th year after the registration date. Around the same time as the Section 8 Declaration is due, an optional Section 15 Declaration of Incontestability may be filed (with a $200 USPTO fee) which gives a trademark owner certain valuable rights (see "Benefits of Trademark Registration" section above). Finally, between the 9th and 10th year after the registration date and every 10 years after that in which you continue to use your mark, you must file a combined “Declaration of Use or Excusable Nonuse” and “Application for Renewal” which requires $500 total in USPTO fees.
The USPTO does not issue reminders for these deadlines, but because the firm will notify you well before deadlines approach, you will never miss a critical deadline for trademark registration maintenance filings.