Introduction

Welcome to the Simplifying Legal podcast, brought to you by Businessese. I’m your host, Danielle Liss.

Many years ago, someone told me I was the least lawyer-y lawyer she’d ever met because I helped make legal easier to understand. To this day, it’s one of the best compliments I’ve received in my professional life.

If you’ve ever felt legal was too scary, too overwhelming, too complicated, or just plain incomprehensible, you’re not alone. The Simplifying Legal podcast was created to help. 

In each episode, we’ll do a deep dive into a legal topic and give you concrete next steps so you can apply it to your business. 

My goal is for you to walk away from each episode thinking, oh, that was easier than I thought it would be.

Let’s get started.

Episode Content

Hey there, I’m Danielle. Welcome to episode 29 of Simplifying Legal for Small Business Owners. I’m happy to be back from my hiatus and I have a lot of great new content planned for you. 

I’ve mentioned before that we’d be talking more in-depth about trademarks and copyrights in upcoming episodes and now it’s time! Today, it’s all about trademarks and the next episode will focus on copyrights. The goal for these episodes will be to give you an overview of the topic and to answer some of the most frequently asked questions that I get. 

Disclaimer: As always, before we get into today’s topic, a quick disclaimer. This podcast is meant to provide you with legal information only. It’s not legal advice and does not create any type of attorney-client relationship between us. Please don’t take any action without consulting your lawyer first. 

Now, one quick thing before we dive in. I’ll be referring to USPTO a lot. That stands for the United States Patent and Trademark Office and they handle all of the trademark registrations. 

Trademarks

To get started, let’s talk about what a trademark is.

A trademark is something that represents your brand in commerce. In other words, it is something that consumers associate with your products. Additionally, you can have a service mark to represent your services. 

For today’s episode, I’ll be collectively referring to trademarks and service marks under the umbrella of trademarks. 

Here are some examples of things that can be trademarked: words or phrases, like Nike’s Just Do It. Company names, like Nike. And, symbols like the Nike swoosh. 

These three are probably the most common types of trademarks; however, there are other categories that we call nontraditional trademarks, which can include things like smells. For example, Play doh has that signature smell trademarked. 

Some brands also have their colors trademarked, like Tiffany blue. You can also do things like a sound and a great example of this is the NBC Chimes. 

A trademark can be anything that is used to identify your brand as the source of goods or services. 

Trademark Rights

There are different types of trademark rights:

If you register your mark with the USPTO, you receive certain rights under federal legislation. Registration on the principal register offers substantial benefits like notice to the public of the mark’s registration; a legal presumption of ownership nationwide; and the exclusive right to use the mark in connection with the goods and services listed in the registration. 

If you’re using a trademark without registering it, you may have common law rights in the mark. Common law rights mean rights that are developed through your usage of the mark, not through registration and statute.

Common law rights are more limited than what you receive through registration with the USPTO and generally only extend to the territory where the common law trademark is used. For example, if you are using your trademark for products sold in Nevada, Arizona, and California, you would be protected in that region. Your common law rights would not extend to prevent someone from using the mark in Florida and Georgia.

Occasionally, common law trademark rights are asserted to oppose the application of another mark, if the common law mark claims first use. 

As you can see, there are a lot of benefits to registering a trademark, but it’s really important to note that you can’t trademark absolutely anything you want.

First and foremost, your trademark cannot be deemed too similar to any other mark, or likely to cause confusion with that mark. Remember, a mark doesn’t have to be identical for there to be a likelihood of confusion. The USPTO considers things like similar sound, appearance, meaning, and look. Additionally, they’ll look at whether the goods and services are similar. I once had a client who was a business coach and we found a similar mark in use by an exterminator. Since they weren’t related services, we were able to register her mark. 

Next, a trademark has to be eligible for registration, which means it functions as a trademark by representing your brand in commerce and the mark itself is distinctive.

The USPTO bases distinctiveness on the following scale:

First, there are Fanciful marks, which is a mark that’s invented and didn’t exist before it was used for the brand. Xerox is a great example.

Next, there are Arbitrary marks, which use an existing word in a meaningless or unexpected way. Like apple to represent computers. 

Next, there are Suggestive Marks, which tend to indicate the nature of, quality, or characteristic of the product or service, but it doesn’t describe it. An example of a suggestive mark is NETFLIX.

Next, there are Descriptive Marks, which use the dictionary meaning. Typically, these marks can’t be registered on the principal register unless they have acquired distinctiveness, which is usually extensive use in commerce over a five-year period. However, the supplemental register may be an option if you have a descriptive mark and I’ll talk more about that in just a moment. 

The final category when considering distinctiveness is Generic terms, which are common words used to discuss a product or service. An example would be cinnamon. Generic marks are not eligible for registration, even on the supplemental register.

Trademark Registration

Now, let’s talk about the two different registers. If a mark is deemed distinctive, it’s eligible for registration on the principal register. This means that you receive the full rights granted through federal registration. This is the goal when you are registering your trademark. 

Descriptive marks are not eligible for registration on the principal register; however, they may be registered on the supplemental register. This gives an owner an opportunity to put the public on notice of their use and, over time, it allows the mark to acquire distinctiveness.

The supplemental register does not provide any trademark rights beyond common law right; however, there are still benefits. 

Marks on the supplemental register may be cited by the USPTO in an office action if an application is similar and likely to cause confusion. Marks on the supplemental register are still added to the trademark database, so the public is on notice of your use of the mark. You also receive the right to use the registration mark. 

Database

Now, let’s talk about the trademark database. TESS is the Trademark Electronic Search System and it’s a free tool that you can use to search the USPTO’s trademark database. 

Visit https://tmsearch.uspto.gov, which I’ll link in the show notes. You can enter different variations on the potential mark to see if it’s in use. 

I strongly suggest trademark searching whenever you are considering names for products or services. However, be aware that there may be other variations of the mark in use, so it is often better to go to an attorney or commercial search service. 

Process of Trademark Registration

Now, let’s talk about the trademark registration process.

For many businesses, the first step is to hire an attorney if you do not plan to do it yourself. This is what I often advise since trademark law can be extremely nuanced and it helps to have an experienced attorney assist with the process. 

Next, you’ll likely complete a preliminary search to determine the mark is not in use by anyone else. Many lawyers refer to this as a knockout search. During this step, consider whether or not to complete a full search and obtain an attorney’s opinion on the registrability of the mark. 

A full search is typically more expensive than a knockout search and may not be necessary for everyone, but they are extremely comprehensive. Usually, it’s conducted by a commercial service and you get a document that’s hundreds of pages. Your attorney can then review the results and provide an opinion on the viability of your potential mark. 

Once you’re done with searches and you’re ready to file your application, you need to determine the classes for registration, which is an identifier for the goods or services that your mark will represent. 

Next, you’ll prepare your application and submit it to the USPTO. If you are filing as “already in use,” you’ll need specimens demonstrating that the mark is being used. If you aren’t already using your mark, that’s slightly different and I’ll address that shortly. 

Once the application is filed, you wait. It used to be about three months from the time of the application until an examining attorney was assigned. Right now, that’s between 6 to 7 months. 

Next, the examining attorney will determine if your mark is approved for publication or they will issue an office action.

If you get an office action, don’t panic; it’s correspondence from the USPTO that may be minor, like modifying a class description, or major, like a potential refusal due to the likelihood of confusion with another mark. The office actions are typically extremely detailed. If you are working with a lawyer, check to see if they will help you with your response. You will have up to six months to respond to the office action.

After you submit your response, the examining attorney will then determine if your mark is approved for publication or if another office action will be sent in response.

If your application is approved for publication, this means that your mark will be published in the Trademark Official Gazette. During publication, the public has a 30-day period during which they can file an opposition to your application.

If you complete publication without an opposition, you are almost done! It typically takes 4-6 weeks to receive your registration certificate, which means you are officially registered and can begin using the ® symbol.

After registration, you need to defend your mark and ensure that no one’s using it, which can include sending cease and desist letters. Typically, you’ll require monitoring the mark to ensure there are no infringing uses.

If a trademark moves quickly through the process, it’s about 10-12 months.

So what about marks that you aren’t using yet. 

You can file an application in two ways. First, it’s already in use in commerce. Or, you can file as an intent to use. 

There are additional steps and fees for an intent to use mark, but it allows you to put the public on notice that it will be used and with what classes of goods it will be associated. 

For an intent to use application, after the mark goes through the publication period, you need to show it’s in use prior to registration. You’ll receive a notice of allowance and then you can submit a statement of use, which includes a specimen showing your usage of the mark. 

If you aren’t using it within six months of the issuance of the notice of allowance, you can extend it in six-month blocks up to five times. 

One more important thing to remember, trademarks do have application fees of $250-350 per class. It’s $250 if you use a class description set by the USPTO in the Trademark ID manual. If you need to create a custom class description, it’s $350 per class. 

If you file an intent to use application, the statement of use has additional filing fees of $100 per class. Extensions to file a statement of use are $125 per class. 

Frequently Asked Questions

First, when should you file for a trademark: 

Honestly, this may depend on your business. Some businesses want to file for a mark right away and others wait for years. For many, it’s when they start making money from the products and services associated with the mark.

Take time to consider whether registration may benefit your business. Trademarks can be valuable assets. 

As always, if you aren’t sure, talk to a lawyer and get their opinion on whether or not to register. 

Next, I hear from a lot of business owners who aren’t located in the US, but many of their clients and competitors are and they want to know if they should register here. 

A foreign company may register a trademark in the US to protect its products and services here. The same standards will apply. 

One important thing to note: All foreign applicants must be represented by a US attorney. 

Next, can I trademark my podcast name?

Yes, possibly, if it represents your brand and is used in commerce.

However, one hurdle for many podcasts is descriptive or generic names. While these are great for SEO, a descriptive name may run into the hurdles I mentioned before. 

Next, does owning a domain give me trademark protection?

Simply owning a domain does not give a presumption of ownership in a trademark. If it’s functioning solely as a website address, then it’s not functioning as a trademark. 

Next question: Should I trademark my personal name? 

A surname is automatically considered descriptive and would be eligible for the supplemental register only. In some cases, you may be able to trademark your name, as it can help protect you against cybersquatters and ensuring others don’t use it. But, remember, you still have to show that your name is also functioning as a trademark, and you’ll need to demonstrate how it’s being used in commerce.

Next: which symbol should I use the ™ or ®?

™ indicates that you are claiming something as a trademark, but it’s not registered with the USPTO.

® may only be used if a trademark has been registered with the USPTO. This carries greater rights than the ™. If your mark has been registered, you should use the ®, rather than the ™. 

And the last question: Should I hire an attorney?

If you’re in the US, you can file a trademark without an attorney, but it is an area where I typically recommend seeking the assistance of an attorney. 

Typically, you can expect to pay between $1,500 and $2,500 (plus filing fees) for an attorney, but these prices may vary. 

This covers our overview of trademark basics. In a future episode, we’ll dive deeper into topics like dealing with trademark infringement and licensing your trademarks. 

Action Steps

Let’s close with today’s action steps. 

1. First, have you completed trademark searches for your key products and services? It’s important to ensure that you aren’t infringing on someone else’s trademark. If you have a new product or service, I recommend completing a search prior to your launch. 
2. Next, does your business have potential trademarks that you haven’t yet registered with the USPTO? If so, have you investigated whether it would benefit you to register your mark? This may be something to work into your legal strategy and budget.
3. Next, if you have registered trademarks, are you monitoring your marks to ensure that no one else is using them? There are a lot of trademark monitoring services and it can be an easy investment. 
4. Last, as always, if you have questions about trademarks, please talk to a lawyer. I offer trademark searches, applications, and trademark monitoring services through my law firm, Liss Legal. If you have questions, I’d be happy to discuss them with you. Visit Lisslegal.com to learn more. 

Thanks for joining me for today’s episode. In the next episode, we’ll cover copyrights. 

I’d love to connect with you outside of the show. Visit Businessese at businessese.com. To find show notes for today’s episode, visit businessese.com/podcast.

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