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No! In the United States, trademark rights begin when you first use your trademark in connection with the sale of your product or the offer for sale of your service, not upon registration. Registering your trademark, however, better protects your rights by expanding your protection across the U.S. and by putting you in a stronger position in the event you discover someone infringing on your trademark. A registered trademark is also an asset to consider should you ever want to sell your company or entice investors.
The timeline for a trademark is based on factors not within our control, but a well-planned and carefully crafted application takes less time and has a greater likelihood of success than a poorly drafted one. You should expect your trademark application to take at least fifteen months, as the US Patent and Trademark Office (the USPTO) is so backlogged that it takes as much as eight months before they even pick up a new application for review. Current timelines for processing applications are provided and updated by the USPTO here.
A successful trademark registration always begins with planning. You and I will first discuss your trademark and your plans for its use. After you provide me with the word(s) or the design you are using or intend to use and the products or services you plan to use it for, I will conduct a search of the USPTO database to see whether any marks already on the register would prevent your mark from being registered. Two marks cannot (generally) co-exist for the same or closely related products or services, so if there is a trademark like yours already registered for related goods or services, the USPTO will refuse the application. A proper search helps avoid this early obstacle and enables you to decide whether to proceed with the same marks or make changes before you waste any time and money on a weak application. Search depth varies depending on your needs and budget, so we will talk about that before the search commences. After we discuss the outcome of the search, you will have the information to decide whether to proceed with the application. From there, I will draft the application. If you are using the mark already, you will provide a photograph or website or something else that proves use. If you are not using it yet, we would file an “intent-to-use” application and the proof is not required until later in the process. You can find a diagram of our process here.
The USPTO reviews the application and if it is all good, they publish it for 30 days to allow any third parties to oppose the registration. If no oppositions are filed and if the trademark is already in use, boom!, your mark is registered. That’s the shortest route. If your mark is not yet in use, but it still sails through the process, the USPTO issues a Notice of Allowance, not a registration. You then have six months to launch your product or service and to provide proof of that. If you have not been able to launch within that time, you get five six-month extensions (each at a fee) to get it done. This assumes, however, that there were no refusals or oppositions. You can find a flow chart of the process here.
A trademark is any word, phrase, symbol, logo, design (and even a color, sound, or smell! Think T-Mobile magenta, UPS brown, or the ba-dummmm of Netflix) that identifies your product or your service and distinguishes it from similar or related products or services offered by others. But even registering or using your trademark does not give you ownership over a particular word or phrase. A trademark only has life to the extent it is connected to a particular product(s) or service(s).
Contrary to popular belief, Taylor Swift did not succeed in registering “This Sick Beat,” but she does have a registered trademark for “Speak Now.” Does it mean you cannot say “Speak Now”? Or “Winter is Coming,” because HBO registered a trademark in the phrase? Not at all. Ms. Swift has registered SPEAK NOW for jewelry, clothes, recordings, drumsticks, guitar picks, art prints and other things. You’re welcome to shout “Speak Now!” in private or in public all day long. You can sing it at her concert. You can sing it in your car. What you can’t do (without infringing on the mark) is use “Speak Now” as a brand to sell jewelry, clothes, recordings, drumsticks, guitar picks, art prints or anything else she has registered under the mark. Though poorly researched articles may proclaim “We can’t say Taco Tuesday anymore” because Taco John’s in Wyoming registered a trademark in the phrase, this is just not true. What you could not do while the trademark registration was valid (it has since been canceled), was provide restaurant services under the phrase. No one owns language, they can only borrow it for the purpose of identifying their product or service in the marketplace.
You can, however, own all the rights to an original drawing you use for a trademark, but ownership over the creation apart from the goods or services is copyright territory, not trademark.
It is not uncommon for scammers or sketchy businesses to e-mail or mail trademark owners and say something along the lines of: We wish to inform you of a potential trademark registration concerning the brand name [fill in your business or trademark here]. During our extensive search, we discovered your business uses this brand name.” They usually claim that you haven’t registered your trademark, regardless of whether you have or not. Then comes the pressure: “Time is of the essence”. “
Failure to register your trademark may result in loss of your trademark rights and my result in them [the other party] acquiring federal rights, potentially leading to repercussions for your continued use of the name . . .” They may cite the Lanham Act and warn you if the parade of horribles that will come to pass should you not “take action.” They claim you may be sued for infringement and that you may end up owing damages. Then they ask you to contact them to secure your rights in the trademark. They may even state that if you don’t act fast that they’ll continue to represent the other party and help them obtain the mark., Pause here. Beware. These letters are common and usually (mostly, possibly always) come from shady characters who want your money, not your business.
If you get a letter like this, feel free to contact me. I always look at these letters for free.
You know that old phrase “there’s no such thing as a free lunch?” That. Most of the “low fee” registration services are just the front door to a scam. The USPTO has a warning page about that here. So, in some cases, especially the sub $100 variety, the group offering the services aren’t lawyers and aren’t even qualified to file your application. What these solicitors really want is to harvest your information in an attempt to steal your identity and/or your financial information.
In other cases, they will file your application, but do it incorrectly or ask you for filing fees for several classes of goods and then only file for one. They may even send you a receipt of filing that is doctored to make it look like they filed something that they didn’t.
Often in the above case, they will then follow up with requests for more fees for claimed USPTO requirements that don’t exist. For example:
Note, too, that real lawyers and real law firms won’t resort to pressure to gain your services. If you’re feeling pressure to hire this particular service or attorney, pause a minute and check in with your gut.
I have a lawyer answer here: it depends. It is important that you check an attorney’s credentials before you hire them. Note, too, that there is still a problem with overseas businesses “renting” a real lawyer’s license number so that they can file trademarks in the US. This became more common after the USPTO rules limited who could practice before the USPTO. You have to either be the owner of the trademark or you have to be a US-licensed attorney to file a trademark application with the USPTO. Attorneys or “trademark agents” in other jurisdictions cannot file on your behalf.
Some companies offer low fees and guarantees. Some of those companies do, indeed, hire lawyers by contract to file trademarks at a cut-rate fee (companies that shall not be named). These are real lawyers and yes, they can file your application and sometimes this goes very well. The problem is that quality can vary, and you may not have control over the quality of legal services you receive.
I have received clients who first used one of these services before coming to me, and this is what I have seen: (1) a lawyer didn’t properly review the mark for conflicts. They likely just conducted a search for exactly the trademark the client requested, for exactly the goods they provided. This is called a knock-out search. They did not look for similar marks or related goods or services that were going to be (as it turns out) a barrier to registration; (2) a lawyer didn’t take the time to understand the client’s products. In this case, the lawyer filed for goods that were not actually the goods the client sold. they just took the description the client provided without inquiring further. The client’s filing was refused because the application didn’t match the goods they were actually selling under the mark; (3) clients weren’t informed about the likelihood of success, later enforceability, the process, the meaning of certain filings or refusals or how to use the mark after it is registered. In many cases, clients receive no counseling, just a filing service that client probably could have done themselves.
More, services that guarantee your registration or your money back may not provide a valuable service. No trademark can be guaranteed; trademark clearance and evaluation is an art, not a science. I suggest that such a guarantee can only be provided when the fee is so low and the effort put into the application is so small that the lawyer doesn’t sweat the losses. Sometimes this is a volume game. Consider how much effort a lawyer willing to put into a project that costs less than his or her usual hourly rate? In a numbers game, the house usually wins.
There are many solo and multi-lawyer law firms who can provide you quality services for reasonable and transparent rates. Shop around. Look at their websites. Trust your gut. You don’t have to spend exhorbitant sums to receive quality representation, but you should at the very least ensure you are paying a licensed attorney to do your work.
Yes, you absolutely can. And I have seen very good applications filed by the owner with success! I have also seen applications that were destined to fail, simply because the owner didn’t know what was required. The USPTO provides very good guidance. The basics are demonstrated here and the process outlined here. If you’re willing to do the research and read the USPTO rules or, at the very least, review the USPTO videos on basics and on searching (here), you can do it.
If you would like instead the guidance of an attorney, reach out on my contact page.
