Don’t Miss the Mark

One of the most common legal questions I am asked by clients and friends is, “How do I get a trademark?” This week, I’d like to share the abridged answer with you.

Any time you use a word, phrase, symbol or design that you originated, you have what’s called a “common law” mark. It exists by operation of law, as soon as you create it, and you have the right to print the “TM” symbol next to it whenever you use it to let the world know it’s your proprietary property. If your word, phrase, symbol or design describes or is related to goods, it’s called a “trademark.” If it describes or is related to services, it’s called a “service mark.” The common law mark and use of the TM symbol together give you basic ownership protection over the mark without doing anything further. Think of this like the basic TV package offered by your local cable provider: you get service with just the basic channels.

And just as you can “upgrade” your TV package to include more programming, if you want more protection for your mark, you can apply to register your mark with the United States Patent and Trademark Office (USPTO). If you apply and the USPTO gives your mark their seal of approval, you get a higher level of recognition of and protection for your mark under the law. Individuals and companies that do this get to use the “®” symbol as notice to the world of their extra legal protection.

In order to file an application to have a mark registered, you will need to submit basic contact information regarding the owner of the mark, a sample of the mark showing how it is used in commerce to advertise your goods or services, a good description of the mark and the sample use, the international class(es) of the goods or services, and a filing fee. There are three types of fees involved in the application process: the USPTO fee of $325 per class of goods or services (note that this fee is going up to $400 on January 1, 2017), legal fees for preparing the application (it is possible to prepare and submit an application without an attorney’s assistance, but having some application writing experience behind you is wise), and legal fees for responding to the examiner’s concerns and public objections, if any (again, it’s good to have an attorney help you with this if at all possible).

Once the USPTO receives the application, it will assign an “examiner” to review the application and look for any problems or concerns. Though there are a variety of criteria the examiner may use to scrutinize the mark, the majority of refusals occur because the mark is either (1) likely to be confused with an already registered mark or (2) merely descriptive of the services/goods/location of the business. On the issue of confusion, the question will be, “how likely is it that the consumer could be confused,” regardless of whether actual confusion has occurred. If the registered mark is similar in “commercial impression, sound, connotation or appearance” to your mark, you may have trouble getting your mark registered. As to descriptiveness, if your mark merely describes the location of your goods or services, or the things you do or make, (for example, “Kathy’s Detroit Law Firm”) you may also have an uphill battle on your hands. If the examiner raises concerns with the application, you will have an opportunity to present evidence and argument to support your position.

If you are able to resolve the examiner’s concerns (or if the examiner does not raise any), the final step is for the USPTO to “publish” the mark. The USPTO will publish notice of your mark in their Official Gazette and then wait for a 30 day period in which the general public can object to registering your mark (objections occur in about 3% of applications). If you get through the publication period without objection, your mark will be registered!

When it comes to basic trademarking, Now You Know It. If you have further questions or would like more information regarding registering your mark(s), we can help. Please contact us at (248) 477-6300.

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