According to the United States Patent and Trademark Office,
Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.
Trademark is one of the protections available for your Intellectual Property. Once you’re ready to register your trademark for your brand identifier, you will need to start the process and register it with the United States Patent and Trademark Office (USPTO).
Typically, trademarks can be renewed forever, for as long as the protected mark is being used commercially.
Any information you submit to the USPTO is considered public information and readily available online. The only information that won’t be made available is your credit card banking information.
This means when filing for or registering a trademark, don’t include more data than necessary.
Also, before we move forward, I’d like to give a little warning when it comes to Trademarks. This is a highly complex field of law. It’s super technical and requires a certain level of expertise.
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What Does trademark protect?
Trademark law covers the use of goods and services such as words, colors, slogans, names, symbols, logos, phrases and other marks that identifies the source or sponsorship of goods and services.
Trademarks can represent both goods and services. Goods represent the objects. When your business is about providing goods, the object itself, then you classify your trademark as such.
However, when your business is about providing a service (i.e. catering, coaching, etc.), then your trademark is for services.
You can, of course, have both goods and services without any issues.
For trademark law purposes trade service marks identify the source of service. Trademarks identify the source of goods.
Another part of the trademark law is the trade dress and product design. This shows that Trademark law protection goes beyond mere words, logos, colors, sounds, etc.
Trademark protection can and does apply to the packaging and design of materials used to sell a product. It can also apply to the actual product design itself. In other words, trade dresses are anything that is not words or symbols. As already stated, these can be product designs or packaging.
For trademark law purposes, trade dresses are treated the same as service marks and Trademarks. There are certain limitations to them, but that’s a topic for another day.
Federal government has a law of Trademarks. However, states themselves have many laws that pertain to trademarks. Federal law at the Federal level does not apply to Trade Names.
Why you need to do a trademark search
When you’re ready to register your trademark to better protect your intellectual property, one of the first steps you need to do (or better yet, your attorney needs to do) is conduct a search in the database to make sure that there is no other similar business that has a trademark registered.
To be transparent, the system is not 100% foolproof. Sometimes things fall through the cracks, and you pay for registering your trademark when there is already something similar out there.
However, it works more often than not. Besides, conducting a thorough search is one of the good practice procedures when getting ready to register your trademark.
Moreover, conducting a thorough search could help you save a lot of money because in case there is an existing or pending registered mark, then you won’t apply and have your application be rejected.
How to do a trademark search?
The United States Patent and Trademark Office has a free search system called Trademark Electronic Search System or TESS for short. TESS is available 24/7 and can be accessed at http://www.uspto.gov/trademarks at “Search Trademarks”.
Once you click the “Search trademarks” subtitle, it will take you to a different page. From there, you must again select the appropriate options to get to the search window.
After you click on the options presented, you’ll get to the search window where there are several different options for conducting a Trademark search.
This is what the search window should look like. This database is kept updated.
Once you file your mark, then your mark can also be searched in the database. If there is a confusingly similar mark that has registration pending or is already registered, then the USPTO will not register your mark.
Also, keep in mind that when you search, you’re limited to only federal registered marks. Businesses or people who have Trademark protection based on common law rights will not come up there.
Common law rights are those that are not federally registered but have been using that mark commercially first. Trademark rights are heavily dependent on who used it first in a commercial setting.
You might have more rights to the trademark even without having registered it if you used it first in a commercial context.
Since the database search only shows those results that are registered or pending, you must expand your search to get as many results as possible.
You should search on different channels of social media, Google, YouTube, and other search engines such as Yahoo, Bing, etc. This is for your own good.
In an ideal world, you would be able to conduct one search, get 100% of the results, and move forward with your application knowing that there is no other mark out there that could become problematic.
However, as we all know, we don’t live in an ideal world, and sometimes, even with all these searches, you might not be able to discover something that should have been there.
In some instances, the USPTO will register your trademark, but there exists another mark that would cause confusion for the audience. In those cases, there is no easy solution. Things usually boil down to expensive litigation to figure out who used it first, who registered it first, etc.
For this and many other reasons, registering your trademark is a task best left to attorneys who specialize in trademarks. At least this way if there is a problem with filing and registration, you have someone in your corner who will fight to make things right.
Should you register your trademark?
Many bloggers, course creators, coaches, small businesses etc. wonder whether they should register their trademark.
It can be a course name, it can be their business name, or anything else that is trademarkable.
To be clear, you don’t need to have a federally registered trademark to have Trademark protection. From the moment an individual or business uses the mark in business (for commercial purposes) in the designated geographic location, for the identified purpose, that person enjoys common law right of trademark protection.
There are, however, certain advantages to having your trademark officially registered, and depending where you are in your business, registering your trademark might just be the next step for you.
What benefits does a federally registered trademark have?
When you federally register your trademark with the USPTO, you now have the exclusive right to use your trademark nationwide.
When you don’t register it federally, or have a common law rights trademark, then you’re only limited to the area where you used that mark and can’t expand.
Having a federally registered trademark also serves to give constructive notice to everyone that you hold and own trademark rights, and no one is allowed to use your mark without your say so.
Another big benefit of a registered trademark is that you can use your federal registration to obtain trademark protection in another country/internationally.
Having a registered trademark also means that you could bring an action in a federal court if someone used your mark without your say-so. And you could potentially get higher amounts and attorney fees due to your federal registration.
Last, but not least, when your trademark is federally registered, you can also use the federal registration symbol ®. However, make sure to not use the ® symbol without having a registered trademark.
How to register your trademark
When you’re ready to register your trademark (a source that identifying goods or services your business provides), and only after you or your attorney conducted a thorough search, the next step would be to file the application.
If you’re a U.S. resident, technically you don’t need an attorney, and can file on your own. However, if you’re a foreign resident trying to register a trademark in the United States, or are a party to a court case, you must be represented by a U.S. licensed trademark attorney.
How to determine your trademark class
Before you start completing the application, there is one additional thing you must know about. That thing is to figure out what class or classes you’re going to file your trademark under.
Depending on what it is you’re trademarking, you might have more than one class you need to file it for. Keep in mind that you have to pay per class.
You can do an online search for the classes at this address.
Remember, a good or service might fall under several different classes, and you’ll do well to include them all (even though it will be expensive).
Aside from using the web address above for searching classes, make sure to also check the updates that USPTO makes on their website. Here is where you need to go to check the 2019 updates for classes that also include explanations.
How to file the trademark application
The USPTO had two methods for filling out your application and submitting it: 1) filing a physical paper application by sending it in the mail; and 2) filing an online application.
However, as of the time of writing this book, there is a new update that will become the law starting December 21, 2019.
Under the new rule, all trademark registration applications, with very few and limited exceptions, must be filed electronically by using the online application. This is a good thing. Online filing is easier, faster, and more accurate.
Furthermore, when you’re filing for the first time, the online application process is helpful because you can always click on the active hyperlinks and get help, explanation as to what you’re supposed to be doing.
To file your application online, you need to click here.
Once there, scroll down and select the form that is appropriate for your situation.
If you’re filing for trademark registration for the first time, then you’ll need to click on the Initial Application forms to get to the actual page from where you have to make a selection as to which application you’re filing: TEAS Plus, TEAS RF, or TEAS Regular.
TEAS Plus has the cheapest filing fee, but you must know all the information about the mark before you file it. Moreover, your mark has to have an identified class and code.
If you searched for the mark class, but could not find something that represented it exactly, and had to come up with your own, then you cannot use the TEAS Plus application.
You should use the TEAS RF application, which stands for Reduced Fee when you don’t have all the required information to complete the TEAS Plus application form.
In both the Plus and RF applications, you have to have a valid email address, and be willing to communicate electronically with USPTO about your application.
Finally, if you do not have the required information, you’re not willing to fill out certain online forms through TEAS, then you would use TEAS Regular.
Be aware, that this particular application has the highest filing fee. As of the time I am writing this book, the filing fee is $400 (the filing fees are always subject to change with future updates, so always check for yourself before proceeding).
I took a few screenshots for you and wrote some directions as to what you have to do.
The screenshot below shows you that you have to select the TEAS Plus application if you want to file online and want to pay the least amount of money for filing it.
After you select TEAS Plus, it’ll take you to the page for that application, where you can find more information on it. This page is a great place to spend some time and familiarize yourself with the application process and preview the application itself.
As you can see, when you select the “Get help with this form” option, several different helpful tips will open up for you.
One of the most crucial ones is the “form preview” option. By previewing the form, you can find out which ones are the required fields that you must fill out, and in general, what information you’ll need for the application.
This is a great opportunity for you to gather all the data and information you’ll need before starting to fill out your application.
Moreover, there is another helpful option available to you, and that is a step- by-step tutorial when you click on the “TEAS Tutorial” link.
At the risk of sounding like a broken record, even though the steps are there for you, I strongly advise against trying to file your own Trademark registration.
The process is very technical and complicated. Your application gets rejected for every little thing, regardless of how complex or simple the issue at hand is.
Filing for federal trademark registration is a task best left to professionals.
Trademark law is a complicated and complex field of law that entrepreneurs need to address throughout their business existence. Some people choose to register a trademark for their business names, others for specific products, such as courses, logos, sounds, etc.
Trademark is possibly one of the areas of the law where I believe a person shouldn’t attempt to do it themselves. This is because if there are complications, which is a very possible outcome with trademarks, then you will need to get an attorney for that. Sometimes it’s more costly to hire an attorney to fix something, rather than hiring one from the beginning to do it themselves.
Trademarks are about the reputation of your business. That’s the main and most important point behind trademark law. When some product or service identifies the source as your business, you want the reputation of your business to speak for the “quality” of the product.