What's In A Name? Frequently Asked Questions About Trademarks

Q: What does a trademark protect?

A: While patents protect inventions, and copyrights protect an original work of authorship, trademarks protect a word, phrase, symbol, design, or other distinguishing feature that identifies your product or service. Trademarks allow you to exclude others from using the same—or highly similar—brand as yours.

The word “trademark” can refer to both trademarks and service marks. A trademark is used for goods, while a service mark is used for services.

Q: How is a trademark established?

A: You actually become a trademark owner simply by being the first person to use your particular name or design in commerce. That is, your trademark—and the rights that go with it—are established by using it, not by registering it.

However, such “common-law” trademark rights are quite limited and will typically be inadequate for most companies. Officially registering the mark provides a number of advantages, such as being able to sue for monetary damages against other companies for trademark infringement. For this reason, it is always a smart move to officially register your trademark.

Q: Can I register a trademark on my own?

A: Yes, you can register a trademark totally on your own or with the help of a cheap, do-it-yourself trademark registration service. But the registration process is highly technical, consisting of a number of detailed steps, and from start to finish, the entire process can take up to a year or more to complete. Plus, if you make even a minor mistake, your application can be rejected at any stage during this process, and then it could end up more difficult or even more expensive to get your trademark registered.

And while you are in the process, you may be investing in your name and logo with no assurance that it is protected. The cost of that could be far more than just hiring an experienced lawyer to handle it for you. In fact, as many as 66% of all trademark filings are initially rejected, according to USPTO trademark statistics. In the end, whether you do it all on your own or with the help of a DIY registration service, the cost of having your application rejected and having to start all over will nearly always exceed the flat fee you would pay us, as your Family Business Lawyer™, to help you file your application.

Q: How does the registration process work?

A: To federally register your trademark, you must file an application through the USPTO’s Trademark Electronic Application System (TEAS). Once your application is submitted, it undergoes a thorough examination to determine if your trademark meets all the legal requirements for registration and ensure that there are no issues or problems that would cause your application to be denied.

If the USPTO determines your trademark isn’t registrable, it will send you what's known as an office action. This letter will explain why registration is being refused, and it may include suggestions for fixing your application. You must respond to the office action by its stated deadline, and if your response successfully corrects the problem, your trademark may be approved.

However, before submitting your application, the first step in the process is to make sure the trademark you want is eligible for registration and not already in use by a competitor.

Q: How do I check to see if a name is already trademarked?

A: To find out whether any business similar to yours has already trademarked the name you want, you should use the USPTO’s Trademark Electronic Search System (TESS). This database contains all active and inactive trademark registrations and applications, and it can help you decide whether to file an application for your particular trademark. 

Keep in mind, however, that such a search can be complicated. While searching for the exact same trademark is fairly simple, searching for marks that might be regarded as confusingly similar requires some skill. Your Family Business Lawyer™ can ensure your search is done properly, so your registration has the highest chances of getting approved. 

Q: Do I need to trademark my logo if I've already trademarked my company name, and they're used together?

A: Registering your business’ name for a trademark provides protection for the name itself, but that protection doesn’t extend to your logo, even if it is used together with your company name. If you want the same protection to extend to your logo—and you most definitely should—then you need to register the logo, also known as a “design mark,” separately from your business name.

Q: How much does trademark registration cost?

A: It generally costs between $250 to $350 per class to register a trademark in one class of goods and services with the USPTO. And the total cost of registration varies depending on the number of classes of goods and services in which you register. We often recommend registering your name and/or logo in more than one class.

The USPTO has 45 different classes of goods and services. Depending on your product or service and your business, you may need to register in multiple classes. Deciding on which classes to register in is something we can help you with as well.

Q: What is the difference between the ™ symbol and the ® symbol?

A: The ™ symbol stands for trademark, and it is used with trademarks that are not yet officially registered. Once your registration is approved and your trademark is registered with the USPTO, you have the right to use the ® symbol with your branding.

Although you are not legally required to use either the ™ symbol or the ® symbol to protect your trademark, you most definitely should, especially once you have your mark registered. Indeed, the ® symbol gives your company more credibility and prestige, while letting competitors know you are serious about protecting your IP.

Enlist Our Help With Trademark Registration

Rather than rolling the dice by trying to register your trademark on your own or with a DIY registration service, we recommend you save yourself the time, money, and hassle, and hire us to support and guide you through the process. When you work with us as your Family Business Lawyer™ to get your trademark application handled (whether you DIY with our guidance or hire us to get it handled), you will pay a flat fee that covers the entire process, from the initial search all the way to final registration, with no billable hours, hidden fees, or nasty surprises. 

And once you have your trademark registered, you will need to take steps to ensure your intellectual property rights aren’t infringed upon and your investments in your intellectual property are protected and even maximized—and that’s something we can help with, too. As your Family Business Lawyer™, we will not only support and advise you step-by-step through the process of trademarking your name and logo, but also help you enforce your ownership rights should your IP ever be infringed upon, and we will support you to maximize the value of your investments in your intellectual property assets.

Contact us today to get started with a LIFT Business Breakthrough Session, so we can look at all of the legal, insurance, financial, and tax needs of your most important investment—your business.

This article is a service of Sky Unlimited Legal Advisory PC, Personal Family Lawyer® .  We're not your traditional law firm, we stand apart from the rest by helping you make informed and empowered decisions on how to deal with your business throughout life and in the event of an emergency. We offer a complete spectrum of legal services, including a New Business Planning Session or an Existing Business Review Session, which includes a review of all the legal, insurance, financial, and tax systems you need for your business. You can begin by calling our office at (650) 761-0992 today or book online to schedule a Business Planning Session and mention this article to find out how to get this $950 session at no charge.