Get Answers to Common Questions About Trademark Law
There are a lot of questions surrounding trademark and copyright law. We answer a number of the most commonly asked questions about trademarks, like “How long does a trademark application take?” If you can’t find an answer, feel free to contact us. We have experience and experts who can help you out.
Frequently Asked Questions
Why do I need a trademark registration?
Your name is the first, and potentially most important, asset that your business has. From Goodyear to Google, a good name, logo, and slogan will stick in the minds of customers, and help your business expand. Just imagine spending a year or more of your blood, sweat, tears, and dollars growing a business, developing a product, and growing your customer base, only to have the name that you built torn from your hands by a lawsuit. Even if you succeed in the ensuing litigation and reclaim your name, you will have spent tens of thousands of dollars, and months, if not years of time that you could have spent on your business instead.
Don’t let this happen to you! A registered trademark grants you strong, federal rights in the trademark across all 50 states, and for as long as it is in force. This is 6 years for the initial application, with potentially unlimited 10-year renewals. In addition it creates a valuable piece of intellectual property that can be controlled, licensed, and sold apart from your goods and services themselves. This attracts investment and establishes your legitimacy as a business.
Do I need a trademark to get on the Amazon® Brand Registry?
Yes! A current, Principal Register trademark registration is currently required to be eligible for the Amazon® Brand Registry. A Trademark Garden attorney can you understand this requirement, and will work with you to make sure that your trademark will qualify for the brand registry, if at all possible.
What's the USPTO?
The USPTO is the United States Trademark and Patent Office. It is the government agency tasked with examining and recording federal trademarks in the United States. The USPTO will be your primary adversary during the application process, and your best friend after your mark has registered, once the weight of a federal government registration is behind you.
How long does a trademark application take?
Although Trademark Garden can usually have your application submitted within days of your initial application, the USPTO is, unfortunately, far slower. The average wait time to have your application examined by the government is 3-4 months, and the average total time to registration is about 6-8 months if no issues arise. This can increase to potentially a year or more if there are issues.
Is Trademark Garden a law firm?
Yes! Unlike most of our competition, Trademark Garden is a law firm, which offers legal opinions and other legal services for clients that purchase any service package. Our experienced attorneys will research your trademark, write your application, and can even offer other legal work product as needed, on a case-by-case basis. Remember, only a trademark attorney can offer legal advice, and only an attorney can work with the USPTO on your behalf.
What can be a trademark?
Almost any brand identifier that you can think of! The most common trademarks are words, phrases, and images, but anything from a sound (think the MGM lion roar or the Intel jingle) to distinctive smells can potentially be trademarked. There are of course guidelines and limitations, and your trademark attorney can help you understand and work through them. But if it’s something that your clients or customers associate with your brand, chances are that you can protect it with a trademark.
What can't be a trademark?
There are limitations to what may serve as a valid trademark. The most obvious one is that no one can trademark a term (or image, smell, etc.) that is “confusingly similar” to a term that another party has already trademarked. The second, and just as important limitation is that no one can trademark a “generic” trademark, or, trademarks that are entirely comprised of the generic term for the goods or service provided. For example, BUMPER REPAIR would not be a valid trademark for a body shop, even if the shop worked on more than just bumpers. That said, there are ways around this limitation, including the addition of nonverbal visual elements, and distinctive, non-descriptive words. Ultimately, only an attorney can give a reliable legal opinion on the validity of a trademark, and provide alternative registration strategies.
Can I file a trademark if I haven't sold anything?
Yes! While a trademark cannot register until something has been sold or otherwise provided under the trademark, you can submit an application well before your business has sold anything, or taken on any clients. Filing early has two primary benefits. First, by having your trademark examined early, you can proceed with the peace of mind of knowing that your mark is “free and clear” as far as the federal government is concerned, and that you can move forward to investing in it further. Second, it holds your place in line, as your application will have priority over any applications filed after yours, and any such applications would be suspended while your application is pending. Then, once you begin selling, and your application matures, any later-filed conflicting applications would be refused by the USTPO, as the federal machinery moves to protect your new trademark rights.
Why do I need a trademark search?
A trademark offers its owner the exclusive right to use it in presenting, advertising, or otherwise identifying some set of goods and/or services. This means that if someone else has thought of your trademark before you, and has registered it for goods and/or services that are sufficiently related, that the trademark is no longer available for your use. Although this is never the desired outcome, it can be very valuable information, as it can save you hundreds of dollars in government fees, as well as the time that you would be waiting for your trademark to process, only to see it refused.
Finally, it helps prevent the risk of the owner of the prior registered trademark finding out about your use of a similar trademark, and coming after you legally. On the upside, while we can never guarantee that the USPTO won’t find any issue with your application, a trademark search that does not identify any direct conflicts can offer great peace of mind as you move forward with your application.
Can I run my own trademark search?
While a trademark search by an experienced professional is far more effective than a search run by someone lacking experience, it can still be a useful first step in the branding process. The official U.S. government federal trademark register search engine can be found here. Beware third party trademark search engines! While some of our competitors offer their own proprietary search engines and algorithms, these are often intentionally configured to return only exact matches, or to otherwise downplay potential risks in an attempt to make you believe that the trademark is free and clear, and to encourage you to pay for filing services. We recommend using only the official USPTO search engine linked above in your trademark research.
Can the government refuse my trademark application?
Yes. 3-4 months after filing, the USPTO will examine your trademark application, at which point they may, or may not issue an initial refusal, formally referred to as an Office Action. Office Actions run the gamut from very simple Requests for Information, in which the Examiner is simply asking the applicant to clarify something about their goods or services, to Likelihood of Confusion Refusals in which the Examiner refuses registration of a trademark based on its similarity to another, already registered, trademark.
Whatever the nature of the refusal, the applicant, or applicant’s lawyer, can always respond, either by calling the Examiner and discussing the issues, or filing a formal written response. It may seem frightening, but an experienced attorney can diffuse the vast majority of Office Actions with a simple phone call or email, with only the most serious Office Actions bearing any real risk of long term refusal to our client’s applications.
Can third parties interfere with my trademark application?
Yes. After an application is examined by the USPTO, it will proceed to a step called Publication. During this phase, the trademark application will be published in the USPTO’s digital gazette for a period of 30 days, during which the application may be opposed by third parties. For example, say you have an idea for a logo featuring a fruit with a circular bite taken out of it for your furniture company. In all likelihood, this logo would get past USPTO examination, only to be formally opposed by a certain computer company that is very protective of its intellectual property. Oppositions are essentially lawsuits, carried out remotely before the Trademark Trial and Appeal Board in Washington D.C. If the opposer is successful, in the proceeding, the application is cancelled.
I got my trademark! Now what?
First of all, congratulations! Trademark registration is a long and difficult process, and you should be proud of yourself for reaching the end. Now that you’d received your registration, your trademark will get to work protecting your brand, but it will need some more work from you, too. 5 years after your initial registration, the USPTO will issue a renewal notice. From the date of this notice, you will have 1 year to renew your registration, or it will lapse and become abandoned. You will also have an opportunity to file a notice of incontestability, which will take away the ability of any third parties to attempt to cancel your trademark. Once renewed for the first time, additional renewals will only become due every 10 years.