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Forming a company with the Secretary of State does not give you any trademark, servicemark, or copyright protection. These are separate and distinct processes with separate and distinct costs. It is always a good idea to consider protecting your intellectual property (IP). And, although there can be some automatic common-law protection available to you under certain circumstances, it’s always wise to take the steps to protect the investment you’ll be making into your IP (such as your brand, tagline, etc)
HINT: It’s expensive to rebrand . . . make sure you at least research your IP’s availability before you start using it. At a minimum, places to check are trademark/servicemark registrations in the states in which you plan to operate, the US Patent & Trademark database, the US Copyright Office catalogs, and domain registrations.
As with formation, you can "do it yourself" but it is especially not wise to go it alone in the IP realm. The first step is to determine if you can register (keep in mind generic and merely descriptive items may not be registerable) and, if so, how. After deciding whether to register at the state or national level, you’ll then have to navigate what appear to be simple forms. But, as with formation, if you don’t understand the effect of the information you put in your application, you may be unpleasantly surprised later.
A few examples,
(1) There is a difference between “nondownloadable” information (i.e. text on your webpage) and “downloadable” information (i.e. the same text posted in a downloadable PDF). This distinction is reflected in how you register, and you may have to pay a separate fee for each of those options.
(2) Your initial application controls the description of your good or service. If you use an improper or vague description and are asked by the USPTO to clarity or revise your description, you can’t expand it, you can only narrow it. Thus, if you don’t understand how the descriptions work, you could register on a much narrower description than you intended.
You may not think you need to pay the expense to register your marks, not doing so leaves your brand identity exposed. And, although it may seem like an unnecessary expense now, the cost of registration is a lot more expensive than defending against accusations of infringement, rebranding your company, or adapting to limitations on your ability to use a mark that have been using for years.
Even if you can’t afford to register your marks today, keep this item on your “to do” list and, as soon as you have the funds, get it done.
A nonstylized trademark is a mark that is registered as text alone with no defining characteristics. It is the simplest mark to register and provides expansive coverage no matter how you use the mark. A stylized trademark is a mark that is registered with defining characteristics such as color, font or an image.
Many companies, especially large companies, register multiple trademarks and register both nonstylized and stylized marks. For example, Facebook® has more than 50 registrations, at least one of those is a nonstylized registration of the word “Facebook” itself. The other registrations include Facebook® with several variations of its signature blue box and various social media shortcut links. For the most part, it’s a good idea to at least consider registering both nonstylized and stylized versions of your mark.
This is a good news / bad news answer. The bad news, it takes up to a year, and possibly longer, to register your trademark with the USPTO. The good news, once you’re registered, your protection extends back to the date of your initial application.
INPUT GATHERING Registration starts with a little homework. You’ll need to list out the various names or phrases you want to register, identify the classes in which you want to register them, and draft a preliminary description of the good or service.
NAME SEARCH Next, you’ll need to determine whether anyone already has the mark registered in the same class and/or for the same goods and services that you want to protect. A preliminary search of the USPTO online database along with a general online search allows you to eliminate any names that are obviously not available. Any name that you’re serious about and that survived your preliminary search, should be vetted through a more robust paid search through any of the trademark-search companies.
APPLICATION Once you are reasonably certain that your name is available, an application is submitted to the USPTO. You can apply online (somewhat cheaper) or via paper. Also, before you apply, you need to determine if you’ll be able to use one of the standard descriptions already acceptable to the USPTO or if you need to apply with a nonstandard description (which will likely incur additional fees).
EXAMINATION BY USPTO After you submit your application to the USPTO, it will be assigned to an examining attorney who will perform an extensive search in the USPTO records, analyze your mark for distinctiveness and its similarity to any currently registered mark, and determine whether to approve or reject your application. This process will likely generate Action Letters (see below).
RESPONSE TO ACTION LETTERS You may (and likely will) receive action letters from the examining attorney. These letters can range from alerts that your application is deficient, to requests for clarification, or an indication that your application has been rejected and the reasons why. You typically have six (6) months to respond to the letters and failure (or forgetting to do so) will likely kill your application. If your application is rejected, you can file a response challenging the rejection (if you’ve opted to handle your application yourself to this point, you really should consider consulting with counsel to respond to a rejection).
PUBLICATION Assuming that you get through the examination process, once the examining attorney has approved the application for publication, your mark and pertinent application details will be printed in the USPTO Trademark Official Gazette. And, if no one challenges your mark within thirty (30) days of publication, your registration will be approved.
APPROVAL Once approved, your mark is protected back to the date of your initial registration (if you first applied with an “intent to use” status, your protection will date back to that application). You’ll need to renew your mark every so often, so once you receive notice of the registration date, make sure you calendar renewal date reminders (make sure you build in enough time to take the necessary steps to renewal, it won’t do you any good to just put the expiration date in your calendar).
The actual USPTO filing fees begin at $275.00 and go up from there depending upon a few factors: (1) if you register online and can use the standard descriptions, (2) if you are already using the mark “in commerce”, (3) number of classes you register into, and (4) the extent of the protection you want (domestic, international, or both).
Trademark search firms typically charge between $600 and $1200. Keep in mind that you get what you pay for so you want to make sure that if you’re using a low cost provider, they are performing a robust enough search so that you can have confidence in the results.
Attorney’s fees. If you use an attorney (and you should) fees will range from $500 to $1500 per mark to initiate registration. The range is due to a variety of factors, but just make sure you shop around and find an attorney that you will like working with. Also, keep in mind that attorneys typically charge a flat rate fee to initiate registration and, if anyone contests registration or the application is rejected, an hourly fee structure kicks in.
For tips on how to select an attorney, click here.
You can register slogans, but they are more problematic as they typically lack the distinctiveness necessary for registration—either because they are purely descriptive or aren’t used in a traditional trademark sense.
You can take some steps to put the world on notice that you consider the mark or material indicated to be proprietary. For more information on those options, click here. But the one thing you cannot do is use the ® symbol.
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