I field a lot of questions from clients about whether they should “trademark” their name. Of course, what those clients really mean is whether they should register their name or logo or both with the United States Patent and Trademark Office (USPTO). Although I can’t answer that question for you, I can provide a quick overview of the process.
Let’s start with a definition. According to the USPTO, a trademark is a word, phrase, symbol, or design, or some combination of thereof, that identifies and distinguishes the source of the goods of one party from those of another. To qualify for federal registration, your trademark must be distinctive, either inherently or by virtue of acquired secondary meaning, and actually used in commerce (although you can also file an Intent to Use application with the USPTO). Significantly, if you are the owner of a valid trademark, then you have the right to prevent others from adopting similar trademarks that are likely to cause confusion in the marketplace.
Common Law v. Federally Registered Trademarks
Registration isn’t required for protection of your trademark. By virtue of your use of your name or logo to identify goods or services in the marketplace, you’ve accrued rights in those names or logos, and those rights can be enforced against others. An unregistered trademark is referred to as a common law trademark, and you can signal to the world that you claim rights to that common law trademark by appending ™ to your business name or logo.
But, although registration isn’t technically required, you should know that it’s recommended in most circumstances, as registration provides numerous additional benefits beyond what you’re entitled to as the owner of a common law trademark. Those additional benefits include exclusive nationwide ownership of the trademark (except for any prior uses of the trademark by others – more on this below); official notice to others of your ownership of the trademark; the right to append ® to the trademark to signify its status as a registered trademark; and a legal presumption that you are the owner of the trademark, provided that you continuously use the trademark for a period of five years after federal registration.
Of the additional benefits described above, the most important is the exclusive nationwide ownership of the trademark. If you are relying on common law trademark rights, then your rights in that trademark only extend as far as the geographic reach of your goods or services. In other words, if you only provide services in Atlanta, then your rights in your name and logo only extend to the borders of Atlanta. That means that if another company, without prior knowledge of your use of the name, adopts that name and uses it to provide services in Seattle, then there may not be a lot you can do about it. Worse, the Seattle company’s use of the name in Seattle may prevent you from expanding into that area. Worse still, if the Seattle company registers the trademark in the name with the USPTO, then they may be able to obtain nationwide rights to the name in every area but the area in which your company is then operating, effectively boxing you into your existing market and preventing expansion.
Importance of Trademark Searches
Let’s assume at this stage in the analysis that you have determined you have a distinctive name or logo that you are actually using in commerce, and that you understand the difference between common law and registered trademarks and would like to obtain a federal registration. Before you jump headlong into that process, you should strongly consider conducting, or hiring an attorney to conduct, a thorough trademark search.
A trademark search, also called a trademark clearance, typically involves searching various databases, including the USPTO, for direct matches to your name or logo, researching more broadly in an attempt to identify any use (whether pursuant to a common law or registered trademark) of the name or logo, analyzing those results, and then, where necessary, taking additional steps to address whatever obstacles may have been uncovered by those searches, including conducting use investigations of potentially conflicting trademarks, obtaining consent or coexistence agreement from parties who own potentially conflicting trademarks, or petitioning to cancel conflicting registrations with the USPTO.
A thorough trademark search can save you time and money down the road, either by identifying and helping you to address potential weaknesses in your trademark, or by saving you the trouble of paying for a federal trademark registration that is likely to be rejected. You can research about, and conduct, a trademark search on your own, but tread carefully: a trademark search is perhaps the most important aspect of the entire process.
Trademark Application Fee and International Classes
Assuming that the trademark search went smoothly, and any issues that were identified have been addressed, you can finally turn to registration. And as with any business decision, cost is an important factor in determining whether to proceed, and if you do proceed, how thoroughly to protect your interests in your various trademark assets.
The application fee for a federal trademark is between $225 and $325 per international class ($375 for paper applications). The phrase “international class” refers to the descriptive categories of goods or services used by the USPTO. There are 45 such classes in total, 34 for products and 11 for services. You must decide how many classes are applicable to your goods or services as well as what your budget is for registration. Complicating matters, you also need to determine whether to register your name or logo or both. As you can see, if you choose to register both your name and logo, say, in three classes each, then your actual costs can exceed fifteen hundred dollars – without even accounting for attorney fees and the cost of the initial trademark search, if applicable, which are not inconsequential.
Do I Actually Need An Attorney?
No, you don’t have to have an attorney to register your trademark. You can learn the application yourself – great resources abound on the subject. But, although the application is not designed only for attorneys, it’s a little complicated if you don’t know what you’re doing. Some trial and error may be involved, and error in the wrong area of the application can result in a rejected application and a forfeited application fee. A recent University of North Carolina School of Law student analyzed 25 years’ worth of USPTO data, and determined that applicants who retained an attorney were 50% more likely to successful register their trademarks than those who weren’t represented by an attorney.
Note too that an attorney can help you walk through the appropriate pre-registration analysis and conduct a thorough trademark search. We can also help you to prioritize your registrations pursuant to your budget. And in some cases, the decision might be to simply rely on the common law trademark, at least for the time being.
Should You Trademark Your Name?
The answer to the above-proposed question is not so simple. There are many factors to consider, including the distinctiveness of your proposed name or logo, whether there is a prior use of the name or logo that may affect your claim, and the cost of the process, whether or not you hire an attorney to assist you. And the above is simply an overview of the process – there are some additional nuances that will come into play as you make your decision and begin the application process. If you’re interested in learning more about how we can help you sort through the issues discussed in this article, then feel free to contact us.
The information and materials on this blog are provided for general informational purposes only and are not intended to be legal advice. The law changes frequently and varies from jurisdiction to jurisdiction. Being general in nature, the information and materials provided may not apply to any specific factual and/or legal set of circumstances. No attorney-client relationship is formed nor should any such relationship be implied. Nothing on this blog is intended to substitute for the advice of an attorney, especially an attorney licensed in your jurisdiction. If you require legal advice, please consult with a competent attorney licensed to practice in your jurisdiction.