Michael Kondoudis

COMPLETE GUIDE TO TEAS PLUS

October 21, 2022 by Michael Kondoudis

The TEAS Plus option is faster and less expensive than the regular filing option, but has more requirements and potential pitfalls, especially for the first time filer.

By Michael Kondoudis, Trademark Attorney

This is our COMPLETE guide to TEAS Plus, one of the two trademark application filing options offered by the U.S. Patent and Trademark Office through its online filing system.

The TEAS Plus option is faster and less expensive than the regular filing option, but has more requirements and potential pitfalls, especially for the first time filer. Also, not every application qualifies for this streamlined option.

If you want to quickly learn the ins and outs of TEAS Plus, then this guide is for you.

Let’s get started.

CONTENTS

> About TEAS

> The Requirements for TEAS Plus

> TEAS Plus vs TEAS Standard

> The Benefits of TEAS Plus

> When to Use TEAS Plus (and when not)

> Whether You Need a Lawyer to File In TEAS

> Frequently Asked Questions

1. About TEAS

What is TEAS?

“TEAS” stands for “Trademark Electronic Filing System.” The U.S. Patent and Trademark Office (“USPTO”) encourages all applicants to file their trademark applications online, and TEAS is the USPTO’s online application filing system. TEAS offers two filing options: TEAS Plus and TEAS Standard. Both options provide a pathway to seek registration, but the USPTO designed the TEAS Plus application to provide a less expensive and more streamlined option.

What is TEAS Plus?

TEAS Plus is one of two filing options offered in the USPTO’s Trademark Electronic Filing System (“TEAS”). The other is TEAS Standard. TEAS Plus has more up-front requirements than the TEAS Standard option when initially applying to the USPTO but also requires reduced fees per class of goods or services.

TEAS Plus has the lowest filing fee but comes with more requirements than TEAS Standard.

What is a TEAS Plus application?

A TEAS Plus application is a new trademark application filed using the TEAS Plus filing option. TEAS Plus applications register faster than those filed using other options but have more initial filing requirements.

What is TEAS Standard?

TEAS Standard is one of two filing options offered in the USPTO’s Trademark Electronic Filing System (“TEAS”). The other is TEAS Plus. TEAS Standard has fewer up-front requirements than the TEAS Plus option when initially applying to the USPTO but requires higher fees per class of goods or services.

TEAS Standard has a higher filing fee but fewer requirements than TEAS Plus.

What is a TEAS Standard application?

A TEAS Standard application is a new trademark application filed using the TEAS Standard filing option. TEAS Standard applications are more flexible and have fewer initial filing requirements than those filed by TEAS Plus.

2. The Requirements for TEAS Plus

There are two main requirements for TEAS Plus. The two main requirements for TEAS Plus are:

(1) provision of all of the information required by the application form, including the applicable additional statements; and

(2) an accurate description of your goods/services using only pre-approved entries from the USPTO Trademark ID Manual.

3. TEAS Plus vs TEAS Standard

There are several differences between the TEAS Plus and TEAS Standard filing options. These are the main differences:

1. Cost/Filing fees

2. How you identify goods and services

3. When you pay the filing fees

4. Additional technical statements

1. Cost/Filing Fees

The USPTO charges application filing fees for TEAS Plus applications at $250 per class of goods/services. For TEAS Standard applications, the rate is $350 per class of goods/services.

2. How You Identify Goods And Services

Every trademark application must include an accurate listing of the goods and/or services for which registration is sought. A TEAS Plus application filed using the TEAS Plus filing option requires that you build your listing from entries in the USPTO’s Acceptable Identification of Goods and Services Manual (also known as the “ID Manual”).

When you file a TEAS Plus application, you are limited to the options in the Trademark ID Manual to build your listing of goods/services.

When you file a TEAS Standard application, you can use your own words to build your listing of goods/services.

3. When You Pay The Filing Fees

Every trademark application must be accompanied by an application filing fee, which is based on the number of classes of goods/services implicated by the listing of goods/services in the application.

For TEAS Plus applications, you must pay all application filing fees with your initial application.

For TEAS Standard applications, you can pay the application filing fee for just one class with your initial application and pay the rest later during the examination process.

4. Additional Technical Statements

A TEAS Plus application must include certain relevant additional statements when they apply to your trademark. You must provide additional statements when:

- Your mark includes non-English words (you must include an English translation).
- Your mark includes non-Latin characters (you must include a transliteration and either an English translation or a statement that the transliterated term has no meaning in English).
- Your mark includes color (you must include a claim that color is a feature of the mark and a statement naming the color and describing where the color appears on the mark).
- You have previously registered the same mark (you must state that you claim ownership of the prior registration).
- Your mark includes the name or likeness of a living person (you must identify the individual and provide the individual’s consent).

A TEAS Standard application filed using the TEAS Standard option permits an applicant to make these statements later – when they apply.

4. The Benefits of TEAS Plus

It is your choice whether to use the TEAS Plus option or the TEAS Standard option. A TEAS Plus application lowers your filing fee and increases the likelihood of your application moving more quickly toward publication and registration. Also, the success rate of TEAS Plus applications is higher than TEAS Standard applications. So, the TEAS Plus option is a way to decrease the risk of refusal of your application by the USPTO.

5. When to Use TEAS Plus

When to use TEAS Plus

You should file a TEAS Plus application using the TEAS Plus filing option when you can:

(1) provide all of the information required by the application form, including the additional statements; and

(2) accurately describe your goods/services using pre-approved entries from the USPTO Trademark ID Manual.

If you can make all required additional statements and your goods/services in the USPTO’s Trademark ID Manual, then TEAS Plus is probably the better filing option.

When not to use TEAS Plus

You should not file a TEAS Plus application using the TEAS Plus filing option when:

(1) The USPTO’s Trademark ID Manual does not include an accurate pre-approved listing for your goods/services; and

(2) You don’t have all the information required by the application form, including the additional statements required by the TEAS Plus option.

If you are unsure whether additional statements are required or need a customized listing of goods/services, then TEAS Standard is probably the better filing option.

Which Types of Trademarks Qualify for TEAS Plus

Only applications for trademarks and service marks seeking registration on the Principal Register are eligible for TEAS Plus.

If you are filing an application for any of the following types of trademarks, you must use the TEAS Standard option:

(1) certification marks

(2) collective trademarks and service marks

(3) collective membership marks

(4) Applications for registration on the Supplemental Register

6. Searching the USPTO’s Trademark ID Manual

What is the USPTO’s Trademark ID Manual?

The USPTO’s Trademark ID Manual is a searchable database of pre-approved identifications of goods and services.

How to Search the USPTO’s Trademark ID Manual

You can Searching the USPTO’s Trademark ID Manual by following these four steps:

1. Navigate to the Manual at https://idm-tmng.uspto.gov/id-master-list-public.html

2. Enter your search terms in the search box and select the search icon

3. Review the search results. ID Manual displays search results in a table format.

4. Sort the search results by clicking on the various column headers of the results table (optional).

7. Do You Need a Trademark Lawyer?

Do You Need a Trademark Attorney to Use TEAS Plus?

No, but the U.S. Patent and Trademark Office strongly recommends that all applicants work with a trademark attorney – for several reasons. (see below).
Remember, the trademarking process is much more than just filling out online forms (that’s the easiest part of the process). The USPTO will only grant your application after meeting all of their many legal and procedural requirements.

Do you need help with your trademark?

Why Should You Consult a Trademark Attorney to File Your Application With TEAS?

Filing a trademark application with the USPTO to register your trademark starts a legal process that can get complicated, expensive, and confusing. Working with a trademark attorney can make the process smoother, faster, and result in better protection.

Also, studies show that working with a trademark attorney can increase your chances of successfully trademarking your brand by over 50%.

8. Frequently Asked Questions

1. Should I file TEAS plus or standard?

TEAS Standard is the better option if you need a custom description of your goods and services. TEAS Plus is the better option for first-time or inexperienced applicants who can describe their goods and services using the U.S. Patent and Trademark Office’s Trademark ID manual.

2. Can I use TEAS Plus for intent to use?

Yes, you can file intent to use applications using the TEAS Plus application option.

3. What is TEAS in USPTO?

TEAS stands for the Trademark Electronic Application System, which is the U.S. Patent and Trademark Office’s online filing system. TEAS permits you to submit application forms directly to the USPTO over the Internet and pay application filing fees by credit cards, electronic funds transfer, or through an existing USPTO deposit account.

4. What does TEAS stand for trademark?

TAKE THE NEXT STEP

Take next step toward LEGALLY owning your Trademark!

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your brand, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Can You Trademark Clothing Design?

October 17, 2022 by Michael Kondoudis

Clothing designs are not eligible for trademark protection. But that doesn’t mean that you can’t use trademarks to protect your clothing brand.

By Michael Kondoudis, Clothing Trademark Attorney

This is our quick guide to trademarking clothing designs.

> Can you trademark clothing design

> Why clothing designs are not trademarked

> What a clothing company can trademark

If you need to know whether you can trademark your fashion or clothing design, this guide is for you.

Can I Trademark a Clothing Design?

No, you cannot trademark a clothing design because clothing designs are schematic instructions to make garments. Trademarks protect names, logos, and phrases used to identify the brands of garments. So, clothing designs are not trademarked.

Why Can’t I Trademark Clothing Design?

A trademark tells customers which products come from your business. A trademark identifies your garments and differentiates them from the competition. The most common trademarks are names, logos, and slogans because they can effectively identify companies, products, or services.

Clothing designs are like assembly instructions for garments. They do not tell customers which clothing products come from your company. Also, clothing designs do not individualize or differentiate your garments from the competition. For these reasons, clothing designs are not eligible for trademark protection.

What Can a Clothing Company Trademark?

A clothing company can trademark those things that identify and differentiate its brand and clothing.

If you are starting a clothing line, you’ll want to consider trademarking your clothing brand name, logo, and any slogan that you will use to identify your products. Trademarking your clothing brand name, logo, and slogan will prevent competitors from using them and give you exclusive rights to use them. Also, you will have the option to seek federal trademark registration for them as well.

Company Logos

Designers can also trademark their logos when they are used in branding. Designers can trademark their logos to differentiate their clothing from other clothing brands. This can help to protect the designer’s brand and ensure that other designers do not copy their logo. By registering a trademark, the designer can take legal action if another company attempts to sell garments with similar logos.

Trademarked designer logos include the HILFIGER flag, the DOLCE & GABBANA “G&B” and CHANNEL “double C’s.”

Designer Brand and Company Names

Designers can trademark their company names to prevent other businesses from using the same or similar name. This protects the designer’s brand and ensures that consumers can distinguish between products. Trademarking a company name also helps to build customer loyalty and create a stronger connection between the consumer and the designer.

Examples of trademarked brand names include FENDI, LACOSTE, and PRADA

So, if you want to avoid legal issues down the road, it is best to trademark your clothing line’s brand name and logo. Read our quick guide to all of the reasons to register a trademark.

TAKE THE NEXT STEP

Ready to LEGALLY Own Your Trademark?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your trademark, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Taylor Swift Trademarks: A COMPLETE GUIDE

October 6, 2022 by Michael Kondoudis

By Michael Kondoudis, Registered Trade Mark Attorney

This is our COMPLETE guide to Taylor Swift’s trademarks.

If you want to learn about Taylor Swift’s trademarks, what products and services she protects, and Ms. Swift’s trademarking strategy, then this guide is for you.

CONTENTS

> Introduction

> Taylor Swift’s Trademarking Efforts

> The “Taylor Swift” Trademark

> Taylor Swift’s Trademarks

> Taylor Swift’s Trademarking Strategy

1. Introduction

Over the years, Taylor Swift has established herself as a force to be reckoned with in the music industry. She has become one of the most popular recording artists in the world. In addition to her success as a recording artist, she is also known for her savvy business acumen. Recently, she has been making headlines for her trademarking efforts.

Along with her successful music career, she has also built a successful brand, trademarking phrases like “this sick beat” and “nice to meet you, where you been?” In addition to trademarking her name, Swift has also trademarked several of her song titles, including “Shake It Off” and “We Are Never Ever Getting Back Together.”

By trademarking them, she is ensuring that they can only be used in association with her products and services. In a competitive industry like the music business, trademarking is a smart way to protect one’s brand and maintain control over one’s image. Taylor Swift is a master of both music and marketing.

RELATED: What is a trademark?

2. Taylor Swift’s Trademarking Efforts

Taylor Swift, individually and through her company TAS Rights Management, currently owns over 200 U.S. trademarks.

How many trademarks does Taylor Swift have?

Taylor Swift has about 50 trademarks and owns over 200 federal trademark registrations for them. Ms. Swift started using her trademarks in 2001 and started registering them in 2008.

When did Taylor Swift start filing trademarks?

Taylor Swift first began filing trademark applications in 2007. Since then, Taylor Swift has filed over 350 trademark applications.

What does Taylor Swift trademark?

Taylor Swift has filed trademarks for:

Her name, her initials, and her signature
The names of her albums and fan club
Song titles and lyrics
The names of her concert tours and music festivals

3. The Taylor Swift Trademark

The TAYLOR SWIFT trademark covers a wide range of merchandise, including clothing, stationery, and toys. The trademark has been used extensively by Taylor Swift and her team to promote her brand and sell merchandise. In 2014, the trademark was featured on the cover of TIME magazine. The Taylor Swift trademark is a valuable asset for Taylor Swift and her team, and it has helped her to build a successful career in the music industry.

Is the Taylor Swift name trademarked?

Yes, the name Taylor Swift is trademarked. Taylor Swift trademarked her name in 2007 and currently owns more than thirty trademark registrations for her name.

U.S. Trademark No. 3,439,210 for TAYLOR SWIFT

When was Taylor Swift trademarked?

Ms. Swift filed her first trademark applications for TAYLOR SWIFT in March of 2007. The applications were granted by the U.S. Patent and Trademark Office, and they are now registered.

What does the Taylor Swift trademark cover?

The TAYLOR SWIFT trademark registrations cover:

Clothing;
Entertainment services including live musical performances by an individual;
Series of musical sound recordings; pre-recorded audio cassettes, compact discs, DVD’s and video tapes featuring performances by an individual;
Digital media including downloadable audio files and downloadable audio and video recordings featuring musical entertainment;
Downloadable video and musical sound recordings

…and more

Is Taylor Swift copyrighted or trademarked?

The name Taylor Swift is trademarked because it is a brand. Names, including the names of recording artists like Taylor Swift, are eligible for trademark protection.

Copyrights protect creative works, such as music, songs, lyrics, and album covers. Copyrights do not protect names such as Taylor Swift.

Related: Trademarks vs. Copyrights

4. What are Tylor Swift’s Trademarks?

Taylor Swift has trademarked her name and image to prevent others from using them without her permission. She has also trademarked several phrases from her songs, such as “This Is Why We Can’t Have Nice Things” and “Swish Swish.” This is an effort to protect her brand and ensure that she receives all the profits from any products or services that bear her name or likeness.

How many trademarks does Taylor Swift own?

Taylor Swift owns over 200 U.S. trademark registrations.

What did Taylor Swift trademark?

Some of the things that Taylor Swift has successfully trademarked over the years include her name, her stage name (“Taylor Swift”), certain phrases associated with her (“this sick beat,” “nice to meet you,” “wherever you are”), and even her cats’ names (“Meredith” and “Olivia”).

The Taylor Swift trademark list

The Taylor Swift trademark list includes trademarks for:

Her name: TAYLOR SWIFT
Her initials: T.S.
The names of her tours: THE 1989 WORLD TOUR
The names of her Albums: FEARLESS. 1989
The name of her fan club: SWIFTIES
Song titles: SHAKE IT OFF, AND I’LL WRITE YOUR NAME
Selected song lyrics: PLAYERS GONNA PLAY

She’s even trademarked her signature!

Here’s the full Taylor Swift trademark list:

MIDNIGHTS MAYHEM WITH ME
TAYLOR SWIFT MIDNIGHTS
FEARLESS TAYLOR’S VERSION
RED TAYLOR’S VERSION
SWIFT
TAYLOR SWIFT EVERMORE ALBUM
REPUTATION TAYLOR’S VERSION
1989 TAYLOR’S VERSION
SPEAK NOW TAYLOR’S VERSION
RED TAYLOR’S VERSION
TAYLOR SWIFT TAYLOR’S VERSION
FEARLESS TAYLOR’S VERSION
TAYLOR’S VERSION
TAYLOR SWIFT EVERMORE ALBUM
CHRISTMAS TREE FARM
TS
FOLKLORE ALBUM
FOLKLORE
LOVER FEST
A GIRL NAMED GIRL
SWIFTMAS
LOVER FEST EAST
LOVER FEST WEST
TAYLOR SWIFT TOURING
LOVER
MEREDITH, OLIVIA & BENJAMIN SWIFT
THE OLD TAYLOR
MEREDITH & OLIVIA SWIFT
TS
BIG REPUTATION
TAYLOR NATION
… READY FOR IT?
THE OLD TAYLOR CAN’T COME TO THE PHONE RIGHT NOW
LOOK WHAT YOU MADE ME DO
REPUTATION
TAYMOJI
SWIFTIES
SWIFTIE
TAYMOJI
SWIFTMAS
BLANK SPACE
AND I’LL WRITE YOUR NAME
THE 1989 WORLD TOUR
NICE TO MEET YOU. WHERE YOU BEEN?
COULD SHOW YOU INCREDIBLE THINGS
CAUSE WE NEVER GO OUT OF STYLE
THIS SICK BEAT
S.
T.S. 1989
1989
PLAYERS GONNA PLAY
SHAKE IT OFF
WELCOME TO NEW YORK, IT’S BEEN WAITING FOR YOU
1989
TAYLOR SWIFT
SPEAK NOW
TAYLOR SWIFT FEARLESS
REPUTATION
TAYLOR SWIFT

5. Taylor Swift’s Trademarking Strategy

Taylor Swift and her team have carefully cultivated and protected an expansive brand comprising a variety of trademarks. Some believe she may be planning to start a merchandising empire similar to what Beyoncé has built. But, whatever her reasons, by trademarking her name and other brand elements, Swift has protected her brand and prevented others from using her work without permission. As a result, she has maintained control over her image and her career, cementing her place as one of the top recording artists in the world.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Can You Trademark Food Names? – A COMPLETE GUIDE

October 4, 2022 by Michael Kondoudis

If you want to trademark your food name but aren’t sure how to begin, just follow our five steps to food trademark protection.

By Michael Kondoudis, Restaurant Trademark Attorney

This is our COMPLETE guide to food name trademarks.

Building a food brand is hard work. It takes creativity and luck because the food industry is competitive and crowded. You need a recognizable brand to stand out from the crowd. A strong brand is the key to success in the food industry.

But how do you safeguard this valuable asset? How do you protect a food name and brand?

That’s where trademarks come in. This guide discusses protecting a food brand with trademarks and answers important questions about trademarking food names. In fact, this is the information that we use to register food trademarks for our clients.

So, if you’re ready to learn about food trademarks and how they can help protect a food brand, this guide is for you.

Let’s dive in!

Trademark reg. no. 6,853,760 secured by The Law Office of Michael E. Kondoudis for Regal Meat LLC

CONTENTS

→ I. About Food Trademarks

→ II. Why Trademark Food Names?

→ III. When to Trademark Food Names

→ IV. Requirements for Food Trademark Protection

→ V. How to Trademark Food Names

→ VI. Choosing Strong Food Trademarks

→ VII. Searching Food Trademarks

1. FOOD TRADEMARKS

What is a Trademark?

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of the goods of one party from those of others. In other words, it sets your product or service apart from your competitors.

What is a Food Trademark?

A food trademark is a name, logo, or phrase used to brand and distinguish a food product from similar food products made by other companies.

There are different types of trademarks that can be used for food products. The most common food trademarks are names, logos, and phrases.

For something to be considered a food trademark, it must be used to brand a food product. Also, a food trademark must be used to brand a food product to be registered with the U.S. Patent and Trademark Office (USPTO).

Food trademarks registered with the U.S. Patent and Trademark Office (USPTO) come with enhanced protections, including exclusive nationwide rights. There are many benefits to federal trademark registration.

A food trademark is a name, logo, or phrase that distinguishes a food product from one company from those of the competition. Food trademarks distinguish food products from different companies to prevent confusion.

What is Trademarking?

Trademarking is the legal process of protecting a word, logo, or phrase that you use to represent your brand. Trademarking protects your brand and ensures that no one else can use a similar name for their products. When you trademark the name for your food product, you’re ensuring that no one else can use that name or a similar one for competing food products.

What is Trademark Registration?

Trademark registration is the process of applying for a Federal trademark from the U.S. Patent and Trademark Office (USPTO). The USPTO administers trademark registrations. There are many benefits to federal trademark registration. Read more about why you should register your trademark.

Can Food be Trademarked?

No. Food cannot be trademarked, but food names can be trademarked. Foods cannot be trademarked because they do not represent a brand. However, food names can be trademarked because they identify a company’s food product and represent brands. Product names, including the names of food products, are eligible for trademark protection when used in branding. Trademarking a food name is the best way to protect your food brand. Food names can be trademarked.

Can Food Names be Trademarks?

Yes, food names can be trademarks when they are used to brand a food product. Food names are eligible for trademark protection. In fact, trademarking a food name is the best way to protect it for your food brand. When you trademark a food name, you reserve it for your exclusive use. The U.S. Patent and Trademark Office (USPTO) accepts applications to trademark a food name as a food trademark. It is possible to trademark the name of a food product when the name is used in branding and marketing.

Which Parts of a Food Brand Can Be Trademarked?

Names, logos, and slogans can be trademarked to brand and market food products.

2. WHY TRADEMARK FOOD NAMES?

Why Should You Trademark Food Names?

There are several reasons to trademark food names.

Firstly, you should trademark your food name because it will confirm your legal ownership of it and how it is used. Both are essential to building a unique food brand.

Secondly, you should trademark your food name because it will help keep anyone else from using your name for their food products. This ensures that your food name remains distinctive. If someone else starts selling a food product with your name, they can steal sales from you.

Thirdly, you should trademark your food name because it will prevent anyone else from trademarking it (or anything similar) for their food products. If someone else trademarks your name, they will own it, and you will need to rebrand.

The Benefits of Trademarking Food Names

There are many benefits to trademarking your food products. For one, it can help you build a strong and recognizable brand. Customers are more likely to buy products from brands they know and trust, so a trademark can boost your business significantly. Moreover, a trademark can also help you stop others from using your ideas without permission. If someone tries to pass off your product as their own, you can take legal action against them.

There are several benefits to obtaining a food trademark. First, it can help you to build brand recognition and customer loyalty for your food product. If customers know that they can only get your specific product from your company, they are more likely to continue buying from you in the future. In addition, having a trademark can help you to enforce your rights if another company attempts to copy your product. Finally, obtaining a trademark can also make it easier to license or sell your food product in the future.

When you trademark a food name, you give yourself exclusive rights to use that name. This means that no one else can produce or sell a food product with the same name. Trademarks also give you the right to take legal action against anyone who uses your trademarked name without permission.

Another benefit of trademarking food names is that it can help you build goodwill with customers. If customers know that they can trust your brand because a trademark backs it, they are more likely to buy from you again in the future. Trademarks can also help you differentiate your products from the competition. A strong and distinctive brand can be a significant advantage in a crowded marketplace.

A food trademark helps create a unique and recognizable brand and increases customer awareness. A food trademark ensures that the name of your food product stays yours. A food trademark prevents anyone else from trademarking the same or similar name for their food product. A food trademark helps avoid future legal disputes, which can be costly.

Top Reasons to Trademark a Food Name

1. Avoiding conflicts with other food trademarks

The U.S. Patent and Trademark Office (USPTO) will only let one food maker trademark a food name. If you get the trademark, that is OFFICIAL legal confirmation that your trademark is unique.

2. Legal ownership and exclusive use

A federal trademark comes with significant legal rights, including the right to use a trademark in all 50 states. Also, only one business can own a food trademark, and it is usually the one that trademarks the name first.

3. Protection against copycats

Trademark registration protects your food name from people who would copy it and use it for their food products. The fact is that a food name is less likely to get imitated if you trademark the name.

If you don’t trademark your food product name, nothing stops another company from creating a similar-sounding name for their product. This could confuse customers and lead to lost sales.

4. Easier enforcement

Trademarking your food name helps avoid costly litigation. But, if you are forced into court in a dispute over your food brand, having a trademark is a great advantage because it is legal confirmation of your ownership of your food marks and that they are valid and enforceable.

If someone does infringe on your trademarked name, you have the legal right to take action against them. This includes ordering them to stop using the name and/or pay damages.

5. Make your brand stand out

Having a unique name for your food product helps create brand recognition and differentiation from other products on the shelf. A strong brand can lead to customer loyalty and repeat purchases. If customers know that they can only get your specific product from your company, they are more likely to continue buying from you in the future.

The food marketplace is crowded. A trademark is an efficient communication tool for capturing user attention and making your brand and products stand out.

6. It protects your investment in your brand

If you have spent time and money developing a strong brand identity, you don’t want someone else to be able to cash in on that by using your name. Trademarks also make it easier for customers to find your products and distinguish them from similar products on the market.

Do You Have To Trademark A Food Name?

No, trademarking a food name is not mandatory. But, if you don’t trademark your food name, you won’t have exclusive rights to it. Other companies would be free to use your foods name for their food products.

Do you need to trademark a food name?

Yes, if you want to protect it from being copied by someone else. If someone else copies your food name, they could potentially damage your business or even steal your customers. If you spend a lot of time and money developing a food product, protecting your work from being copied by someone else is vital. By getting a food name trademark, you can prevent others from using it and create a stronger association between your food product and its name.

3. WHEN SHOULD YOU TRADEMARK FOOD NAMES?

How Long Does It Take to Trademark Food Names?

In most cases, it takes more than 12 months to get a food trademark. The trademarking process for food names is a legal process that takes about a year.

When Should You Trademark Food Names?

Most authorities agree that you should trademark food names as early as possible. Ideally, you should trademark a food name as soon as you have settled on it and before your food product is offered for sale.

Getting trademark protection for your food name as quickly as possible is crucial to prevent other companies from copying. The trademarking process typically takes more than 12 months and starting early means that your food name will have maximum protection against imitators and knock-offs.

Also, the U.S. Patent and Trademark Office (USPTO) will let you trademark your food name up to three years before your food product is even released.

Simply put, the sooner you file your trademark application, the better.

4. REQUIREMENTS FOR FOOD TRADEMARK PROTECTION

A trademark is only eligible for trademark protection when specific trademark requirements are met. There are two trademark requirements, and you must meet them to qualify for trademark protection. There are two basic requirements for trademark protection:

(1) the mark must be distinctive

(2) the mark must be in use

Read our guide to requirements for trademark protection.

What are the Requirements to Trademark a Food Name?

For a food to be eligible for trademark protection, it must be distinctive and not confusingly similar to any other existing trademarks. The food name must also be in use in commerce. Read how to pick a distinctive trademark below.

5. HOW TO TRADEMARK FOOD NAMES

Where Do You Trademark Food Names?

You trademark a food name by applying to the U.S. Patent and Trademark Office (USPTO) in Washington DC and getting your application approved for registration.

How to Get a Trademark for The Name of a Food Product

Registering a trademark, including a food trademark, is not an automatic process. To qualify for trademark protection, a food name must be able to meet certain requirements. Also, you need to file an application with the U.S. Patent and Trademark Office (USPTO) and successfully complete the application process. But once you have it, you‘ll have peace of mind knowing that your products are protected.

Here’s how to start the process of trademarking a food name:

(1) Choose a unique food name and logo. Read more about how to pick a strong trademark here.

(2) Check whether your food name is available. Read more about how to search trademarks to find out if anyone else has registered or applied to register your food product name.

(3) Collect the required information and decide on a trademarking strategy. Many strategic decisions go into a high-quality application.

(4) Prepare and file your new application (correctly) with the U.S. Patent and Trademark Office (USPTO).

(5) Work with the USPTO examiner and navigate the USPTO application review process.

(6) Use the correct trademark symbol with your food name and logo. Read more about trademark symbols here.

The USPTO will grant your application and add your trademark to the list of Federal (registered) trademarks IF your application meets all of the requirements of the Federal Trademark Statute. If the USPTO does not initially grant your application (which happens over 80% of the time), you would need to respond to the reasons for the rejection.

6. CHOOSING STRONG FOOD TRADEMARKS

How to Choose a Distinctive Name For Your Food Product

When choosing a food trademark, it is important to select something that is not already in use by another company. It is also important to select a mark that is distinctive and easy to remember. A good food trademark should be able to identify the source of the product without being descriptive of the product itself.

Make sure not already in use: Before applying for a trademark, you’ll need to make sure that the name isn’t already being used by someone else. To do this, you can search the USPTO’s database of registered trademarks. Read about trademark searching below.

7. SEARCHING FOOD TRADEMARKS

Why You Should Do a Trademark Search for Your Food Product Name

You should do a trademark search for your food name for several reasons.

(1) You should do a trademark search for your food name because it can help you avoid picking a name that someone else has already trademarked and is already taken. If you use a food name that is already trademarked and in use, you might be charged with infringing someone else’s trademark.

(2) You should do a trademark search for your food name because it can ensure that you will not be forced to rebrand in the future. No one wants to receive a cease and desist letter from another business.

(3) You should do a trademark search for your food name because it will help you pick a name that you can own and protect with a trademark. If you use a food name that other companies are using, you won’t be able to trademark it for yourself. You won’t legally own it and won’t be able to stop anyone from copying the food name.

Your food name will function as a trademark, which identifies the source of your food product and distinguishes it from the competition. It is critical that the name of your food product is unique and that no one else is using it. A trademark name search is the only way to ensure that your food name is unique and protectable.

How To Do a Trademark Search for Food Name Trademarks?

To check if someone has already trademarked a food name, you can search the USPTO’s trademark database. Go to the USPTO’s Trademark Electronic Search System (TESS) and choose a search option. You can use the “Basic Word Mark Search” option to search a name or phrase. You will need to use the “Word and/or Design Mark Search” option to search a logo, graphic, or design.

1. Go to the USPTO’s Trademark Electronic Search System (TESS) available on the USPTO website at www.uspto.gov.

2. Select a search option. If you are checking if a food name is trademarked, you can use the “Basic Word Mark Search” option.

3. Enter your food name into the search field to search the USPTO’s trademark database.

You can check if a food name is already trademarked by searching the U.S. Patent and Trademark Office’s (USPTO) trademark database.

Caution: The USPTO will reject your trademark application if there is “a “likelihood of confusion” with another registered mark. So, it is a good idea to search for exact matches and any trademarks close to yours using variations of your trademark (e.g., different spellings, abbreviations, and plurals).

TAKE THE NEXT STEP

Take next step toward LEGALLY owning your food trademark and brand!

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your food name, logo, and brand, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

How to Copyright a Restaurant Name

September 28, 2022 by Michael Kondoudis

The correct way to protect the name of a restaurant is to trademark it. Restaurant names are not eligible for copyright protection.

By Michael Kondoudis, Restaurant Trademark Lawyer

This is our QUICK guide to copyrights for restaurant names.

As a restaurant owner, a memorable and unique name is essential for your brand identity. It’s just as crucial as the menu and service you provide. With so much love and work poured into your business, you need to safeguard your restaurant name. But how? This blog post will explain how to legally protect your restaurant name.

Let’s jump in!

I. Copyrights For Restaurant Names

Can You Copyright the Name of a Restaurant?

No, you cannot copyright the name of a restaurant. Names, including the name of a restaurant, do not qualify for copyright protection. Examples of names that cannot be copyrighted include:

The name of an individual (including pseudonyms, pen names, or stage names)
The name of a business or organization
The name of a band or recording artist
The name of a product or service
The name of a character
A domain name or URL

The way to protect a name, including the name of a restaurant, is with a trademark. Read our guide to trademarking your restaurant name (and logo).

How to Copyright a Restaurant Name

In short, you cannot copyright the name of a restaurant. Names, including the name of your restaurant, cannot be copyrighted. But you can often TRADEMARK the name of a restaurant.

How Do You Protect a Restaurant Name?

The best way to protect a restaurant brand is to trademark the name, logo (artwork), and slogan that you use to promote it. Trademarks are the easiest and best way to protect any brand. Read our guide about when you can trademark a restaurant name.

® Want help with your trademark?

Why You Should Protect the Name of Your Restaurant?

The name of your restaurant is the cornerstone of your restaurant brand, and branding in the restaurant business is as important as your food and service.

Read more about why you should trademark your restaurant’s name.

II. Copyrights vs. Trademarks

Many people often confuse copyrights and trademarks. It’s important to understand the difference between the two to effectively protect your restaurant name.

What is a Copyright?

A copyright is a type of intellectual property that protects creative works, including performances, musical, and artistic works. Examples of copyrightable works include novels, songs, paintings, photography, and movies.

Since the name of a restaurant is not a creative work, it does not qualify for copyright. Read more about the differences between trademarks and copyrights.

What is a Trademark?

A trademark is a signal that distinguishes and differentiates goods or services from one enterprise from those of others. Trademarks represent and protect brands, including restaurant brands. The most common trademarks are words (names), phrases, and logos.

Why is a Trademark the Right Way to Protect a Restaurant Name?

To protect your restaurant name, you need to trademark it instead of copyrighting it. Trademarking your restaurant name confirms your legal ownership of it and is the surest way to prevent anyone else from trademarking it in the restaurant, hospitality, and good service industries.

III. How to Get a Restaurant Trademark

You get a trademark for a restaurant name by submitting an application to the U.S. Patent and Trademark Office and completing the examination process, which takes more than a year. You can read our guide about how to trademark a restaurant name here.

How Do You Trademark a Restaurant Name?

To trademark a restaurant name, you need to apply to the U.S. Patent and Trademark Office. Learn about how here.

A word of warning – filing an application starts a Federal legal proceeding that can be very confusing and complicated. For this reason, and many others, the U.S. Patent and Trademark Office recommends that you work with a trademark attorney. Learn why.

Do You Need a Trademark Lawyer?

Federal registration of the name of your restaurant ensures that it is protected. Working with an experienced trademark attorney maximizes your chances of success during the application process; maximizes your trademark protections; and minimizes how long it will take. Learn why here.

Working with an experienced trademark attorney often makes the difference between success and failure when it comes to trademark registration. Studies of USPTO data show that applicants who work with a trademark attorney are 50% more likely to register their restaurant names.

In fact, the U.S. Patent and Trademark Office recommends applicants work with trademark attorneys:

“we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you throughout the application process.”

www.uspto.gov

Final Thoughts

Protecting your restaurant name is an essential part of building a strong brand identity. Don’t leave it unprotected, as your restaurant name is a valuable asset. Remember to choose trademarking over copyrighting and consider working with a trademark attorney to make the process as efficient and successful as possible.

Take the Next Step and Legally

Own Your Trademark

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Trademark

Request a Free Strategy Call

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

How Long Do Trademarks Last? – AN EASY GUIDE

September 20, 2022 by Michael Kondoudis

Trademarks can last forever, so long as they are used in commerce and renewed on time every ten years. Trademarks do not expire after a set period of time.

By Michael Kondoudis, Trademark Attorney

This is our EASY guide to how long a trademark lasts.

Success in business depends on having the right tools and knowing how to use them. One of those tools is a trademark. As long as you keep your trademark in good standing, it can protect your brand from being stolen, copied, or diluted. They have tremendous value, but how long does a trademark last?

If you want to know for how long a trademark lasts and whether a trademark expire, then this guide is for you.

Let’s jump in!

CONTENTS

This article discusses issues that every business needs to know about the duration of trademarks, including:

→ What is a trademark?

→ How long trademarks last

→ How long trademark protection lasts

→ Trademark renewals

→ Condensed summary

→ Frequently asked questions

I. About Trademarks

What Is A Trademark?

Trademarks are words, phrases, and logos that businesses use to identify their products and services. Trademark protection provides the owner with the exclusive right to use a particular mark in connection with the sale of goods or services.

The main purpose of trademarks is to prevent confusion in the marketplace about who is selling what product or service.

II. How Long Do Trademarks Last

How Long Do Trademarks Last?

Trademarks do not have expiration dates. Trademarks can last forever so long as they are put to use and renewed on time. A federal trademark lasts 10 years from the date of registration, with a potentially unlimited number of 10-year renewal terms. So, every 10 years, the owner of a federal trademark registration must renew it with the U.S. Patent and Trademark Office (USPTO).

Trademarks last as long as they are used in commerce to brand products or services. Trademarks do not have expiration dates and do not expire after a set period of time, unlike patents and copyrights. So, any trademark can last as long as it is used to represent a brand.

How long do trademarks last in the US?

In the United States, a trademark can last forever, so long as it is used in commerce and renewed on time every ten years. To renew a registered trademark, the owner must file the maintenance documents with the United States Patent Trademark Office (USPTO) and meet certain legal requirements.

How long do registered trademarks last?

Registered trademarks have initial terms of 10 years. So, a registered trademark lasts for 10 years from the date of registration. But a registered trademark can also be renewed for unlimited successive 10-year terms, so long as the owner meets the legal requirements for renewal and files all necessary documents on time. So, a registered trademark lasts for 10 years and can be renewed for additional 10-year terms.

How Long Is A Trademark Good For?

A trademark can be good for an indefinite length of time. Trademarks do not have expiration dates. A trademark can last indefinitely if it continues to be used to represent a brand and is properly maintained. So, to keep your trademark alive, you need to continue using it in commerce and renew it every 10 years with the US Patent and Trademark Office. Trademarks are good indefinitely if they are continually used to brand products and services and renewed with the USPTO.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

What Is The Term Of A Trademark?

The term of a federal trademark registration is 10 years. However, you can renew your trademark registration indefinitely as long as you (1) continue to use your mark in commerce and (2) file the required documents and evidence with the USPTO. On every tenth anniversary of the registration date, the owner has to submit to the US Patent and Trademark Office proof that the trademark is in use.

III. Trademark Renewals

How Do I Renew My Trademark?

To renew your trademark, you must file a Section 8 Declaration of Continued Use with the USPTO. This declaration must be filed between the ninth and tenth year after your mark was initially registered. Along with the Section 8 Declaration, you must submit evidence that you are using your trademark in commerce.

What Happens If I Don’t Renew My Trademark?

If you don’t renew your trademark, your registration will be canceled, and your trademark will become abandoned. An abandoned trademark cannot be enforced by its owner, and anyone else can use it. Additionally, if you ever decide you want to register your mark again in the future, you will have to start the process from scratch.

Need to renew your trademark?

How Often Do Trademarks Need To Be Renewed?

Trademarks need to be renewed every 10 years.

IV. Condensed Summary

Federally registered trademarks last for ten years, with potentially infinite additional 10-year renewal terms as long as you continue to use them to identify your products or services. So, in the US, a trademark can last indefinitely so long as it is used in commerce to identify and distinguish the source of goods or services. If a trademark is not used for an extended period, it may be considered “abandoned” by the owner and become available for others to use for their brands.

The US Patent and Trademark Office (USPTO) administers federal trademark registrations, and every trademark registration starts with a ten-year term. The trademark owner must renew the trademark registration every ten years to keep it in good standing.

So, a trademark registration will last for 10 years and must be renewed to keep the trademark active. A registered trademark will remain active so long as the owner continues to use it in ordinary commerce and files a renewal application every 10 years to keep the registration active.

Trademarks can last indefinitely as long as they are used in commerce. A trademark’s owner must continue using it to keep the registration alive.

V. Frequently Asked Questions

1. How Long Does Trademark Last?

A trademark can last indefinitely—but only if it is properly maintained. In order to keep your trademark alive, you need to continue using it in commerce and renew it every 10 years with the USPTO. If you stop using your trademark or fail to renew it, your trademark registration can be canceled. If a mark is abandoned, anyone else can use it without repercussions from the original owner. Therefore, it is important to keep track of your trademark and use it regularly in order to keep it alive. In order for a trademark to last indefinitely, its owner must continuously use it in commerce and properly maintain it.

2. Why Should I Register My Trademark?

Registered trademarks are the best kind of trademark because they come with important legal rights. Read our easy guide to why federal trademark registration is so powerful here. The U.S. Patent and Trademark Office registers federal trademarks. For a trademark to be registered, it must be distinctive and not likely to be confused with another trademark.

Take the Next Step and Legally

Own Your Trademark

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Trademark

Request a Free Strategy Call

SHARE THIS ARTICLE ON:

SHARE THIS ARTICLE:

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Can You Trademark Fashion Design?

September 6, 2022 by Michael Kondoudis

Fashion designs are not eligible for trademark protection. But that doesn’t mean that you can’t use trademarks to protect your fashion brand.

By Michael Kondoudis, Clothing Trademark Attorney

This is our quick guide to trademarking fashion designs.

> Can you trademark fashion designs

> Why fashion designs are not trademarked

> What a fashion brand can trademark

> What a fashion designer can trademark

If you need to know whether you can trademark your fashion or clothing design, this guide is for you

Can I Trademark a Fashion Design?

No, you cannot trademark fashion design because fashion designs are guides/instructions to make garments. Trademarks protect names, logos, and phrases used to identify the brands of garments. Thus, fashion designs are not eligible for trademark protection.

Why Can’t I Trademark Fashion Design?

Fashion designs are like assembly instructions for garments. They do not tell customers which clothing products come from your company. Also, fashion designs do not individualize or differentiate your garments from the competition. For these reasons, fashion designs are not eligible for trademark protection.

What Can a Fashion Brand Trademark?

A fashion brand can trademark those things that identify and differentiate its brand and clothing from the competition.

If you are starting a fashion brand clothing, you’ll want to consider trademarking your fashion brand name, logo, and any slogan that you will use to identify your products. Trademarking your fashion brand name, logo, and slogan will prevent competitors from using them and give you exclusive rights to use them. Also, you will have the option to seek federal trademark registration for them as well.

What Can a Fashion Designer Trademark?

Fashion designers can trademark their names, their brand names, and their logos when they are used to brand clothing. You cannot trademark fashion designs, however, because designs are like assembly instructions for garments and instructions are not eligible for trademark protection.

In the fashion industry, designers frequently rely on their names as their brands, and that makes them eligible for trademark protection. Names, including designer names, can be trademarked when the public has come to see that designer’s name as the source of the fashion products.

Designer Names

Designers can trademark their names when they are used in branding. Trademarking a designer’s name allows the designer to control the use of their name and prevents others from profiting off of their hard work. By trademarking their name, designers can ensure that their products are easily recognizable, and consumers will know they are buying a product from a trusted source.

Trademarked designer names include BOSS, DIOR, VERSACE, and VERA WANG.

Designer Logos

Trademarked designer logos include the HILFIGER flag, the DOLCE & GABBANA “G&B” and CHANNEL “double C’s.”

Designer Brand and Company Names

Examples of trademarked brand names include FENDI, LACOSTE, and PRADA

So, if you want to avoid legal issues down the road, it is best to trademark your clothing line’s brand name and logo. Read our quick guide to all of the reasons to register a trademark.

TAKE THE NEXT STEP

Ready to LEGALLY Own Your Trademark?

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

How to Trademark a Name for Free: An EASY Guide

August 27, 2022 by Michael Kondoudis

You can trademark a name for free with a “common law” trademark and establishing a common law trademark doesn’t require any forms or fees. However, you cannot register a trademark for a name for free.

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademarking a name for free.

You may have heard that you can trademark your name for free. Is this true? The answer is both yes and no.

It is possible to get some trademark rights just by using a trademark. But, those rights are limited and pale in comparison to trademarks registered with the U.S. Patent and Trademark Office.

In this post, I’ll explain exactly how to trademark a name for free, and this information applies to logos and phrases as well.

So, if you want to learn how to trademark a name for free, this guide is for you.

Let’s get started!

CONTENTS

Part I. Trademarking for free

Part II. All about common law trademarks

Part III. How to get common law trademark rights

Part IV. All about registered trademarks

Part V. How to register a trademark for free

I. TRADEMARKING FOR FREE

How to Trademark a Name for Free

You can trademark a name for free by getting a common law trademark. A common law trademark can be a great way to protect your name without incurring the cost of registration.

Can You Trademark a Name for Free?

Yes, you can trademark a name for free by establishing a “common law” trademark through use of the name in commerce. This means using the name to brand your company, business, product, or service. You cannot register the name for free, however, because the U.S. Patent and Trademark Office charges a filing fee for every new trademark application. So, there is always a fee to register a name.

RELATED: How to Register a Band Name

How to Trademark a Phrase for Free

There is a way to trademark a phrase for free by establishing a common law trademark. A common law trademark can be a great way to protect your phrase without having to pay for registration.

Can You Trademark a Phrase for Free?

Yes, you can trademark a phrase for free by establishing a “common law trademark” simply by using your phrase in commerce. This means using the phrase to brand your business, products, or services.

Is There Such a Thing as Free Trademark?

Yes, you can establish a common law trademark for free. A trademark registration is never free, however. The U.S. Patent and Trademark Office charges a “filing fee” for every application.

II. COMMON LAW TRADEMARKS

What is a Common Law Trademark?

A common law trademark is not registered with the USPTO but is instead established through use in commerce and taking steps to prevent others from using it.

Common law trademarks are not registered with the government but are still protected under the law.

Common law trademarks are established through use in commerce. They are based on use, through actual use in commerce rather than through registration.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

The Benefits of a “Free” Common Law Trademarks

There are several benefits to common law trademarks.

First, common law trademarks are easier to obtain than federal trademarks. There are far fewer requirements. Common law trademark rights come from use in commerce.

Second, common law trademarks are much less expensive than registered federal trademarks. It is cheaper to establish a common law trademark than to register one with the U.S. Patent and Trademark Office (USPTO).

Third, common law trademark rights can be established in less time than registered trademarks. All that is required is use in commerce.

The Limitations of a “Free” Common Law Trademark

Common law trademarks can provide valuable protection for businesses, but they have limitations. The two most important limitations are geographic and enforcement.

First, common law trademark rights are limited to the geographic area where a mark is used. They are not national, unlike registered trademarks. That means that other businesses outside of your local region could use your name or slogan, and you would be unable to stop them. So, if you plan to expand your business into multiple markets, you should consider registering your trademark with the USPTO.

Second, enforcing common law rights is far more complex and expensive. For example, a trademark owner must prove ownership, validity, and regions of use. In contrast, with registered federal trademarks, these elements of infringement are legally presumed, so enforcement is easier and less expensive. Also, it is presumed that a registered federal trademark is recognized as representing a brand.

The surest way to LEGALLY own your trademark is to register it with the U.S. Patent and Trademark Office. Federally registered trademarks are stronger than common law trademarks. Read about the advantages of trademark registration here.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

III. HOW TO GET A COMMON LAW TRADEMARK

How to Establish a Common Law Trademark

To establish a common law trademark, you will need to do two things:

1. Use the mark in commerce; and

2. Demonstrate that it has “secondary meaning,” which is to say that it has become associated with your brand in the minds of consumers.

Use in commerce

You have to use the mark in a way that identifies it as being associated with your goods or services. For example, you could use the mark on packaging, labels, signage, or advertisements.

Secondary meaning

This can be shown by promoting the mark through advertising and marketing and ensuring that it is used consistently across all your business’s communications. This can be done by showing that the mark has been in continuous use for a period of time or that it has become well-known among consumers.

Once you have established a common law trademark, you can enforce it against infringements in certain situations. However, note that common law trademarks do have some limitations.

IV. ABOUT REGISTERED TRADEMARKS

What is a Registered Trademark?

A Federal trademark is an enhanced trademark certified by the U.S. government. It’s an enhanced trademark because it comes with exclusivity and nationwide legal rights, preventing anyone else from registering anything similar for your industry.

The United States Patent and Trademark Office (or “USPTO”) is the Federal agency that registers trademarks.

What Are The Benefits of a Registered Trademark?

Federal trademark registration is the ultimate protection for any brand. There is no higher level. That makes a Federal trademark the best insurance against having to rebrand.

Here are just some of the reasons why:

A registered federal trademark is an official confirmation that you own your trademark.
A registered federal trademark comes with the immediate, exclusive, and nationwide right to use your mark.
A registered federal trademark will prevent anyone else from registering it (or anything similar) in your industry.
A registered federal trademark gives you enhanced protection for domain names and social media platforms and access to Amazon’s brand registry.
A registered federal trademark gives you the legal right to use the ® symbol.

Read about ALL of the legal and financial benefits of trademark registration here.

V. HOW TO REGISTER A TRADEMARK FOR FREE

How to Register a Trademark for Free

You cannot register a trademark for free because every application filed with the U.S. Patent and Trademark Office (“USPTO”) must be accompanied by a non-refundable filing fee. This fee is mandatory and is non-refundable. The USPTO filing fee is $250 or $350 per class of goods or services. Therefore, while it is possible to register a trademark without hiring a lawyer, it can never be free.

Can You Register a Trademark for Free?

No, you cannot register a trademark for free because the U.S. Patent and Trademark Office (“USPTO”) charges a filing fee for every application it receives.

Is There Such a Thing as Free Trademark Registration?

No. To register a trademark, you must pay a non-refundable government filing fee to the United States Patent and Trademark Office (“USPTO”). So, free trademark at the federal level is not an option.

We Make Trademarks Easy!

How Much Does Trademark Registration Cost?

Currently, the U.S. Patent and Trademark Office charges a filing fee for every application. The current filing fee is at least $250 per application, and often more when many products or services are listed in the application.

The average cost is between $275 and $400 to file a trademark application with the USPTO. However, the actual cost will depend on several factors, including the complexity of the application. Ultimately, the cost of trademark registration will vary depending on the specifics of your situation.

VI. SUMMARY

In the United States, you can establish “common law” trademark rights in a name just by using it to brand your company, products, and/or services. Common law trademark rights are limited and difficult to enforce, however.

The best way to protect a name is to register it with the U.S. Patent and Trademark Office (USPTO). Trademark registration is the way to make sure that no one else registers your mark and takes it from you.

Common Law Trademarks: Limited Protection

One way to trademark a name for free is by obtaining a common law trademark. This type of protection is established through commerce use and taking important steps to prevent others from using your name. Unlike Federal trademarks, common law trademarks do not require any forms or fees, making it ideal for small businesses on a budget.

However, there are some limitations when it comes to common law trademarks. Two of the most significant challenges are:

Geographic limitations: A common law trademark is usually limited to the geographical area where your business operates. This can be a disadvantage if you plan to expand your business and reach new customers across the country.

Enforcement challenges: Enforcing a common law trademark might be more difficult than a registered one. Without a record of your distinct mark in the government database, disputes could become convoluted and time-consuming.

These are significant drawbacks.

Federal Trademarks: Stronger Protection But With Costs

For businesses seeking nationwide protection and legal exclusivity, a Federal trademark may be the better option. Obtaining a Federal trademark involves registering your name or phrase with the U.S. Patent and Trademark Office (USPTO). This enhanced level of protection offers several advantages:

Nationwide legal rights: A federal trademark gives you exclusive rights across the entire country, regardless of the geographical location of your business.

Easier enforcement: With a Federal trademark, disputes are generally more straightforward to manage, as there is an official record of your ownership.

However, when it comes to the cost, there’s one essential fact to note: there is no way to register a Federal trademark for free. Every application filed with the USPTO must be accompanied by a non-refundable filing fee, which ranges from $250 to $350 per class of goods or services.

The process of registering a trademark includes filing an application with the USPTO and the USPTO charges a filing fee for every new trademark application. The application fee is currently $250 per class of goods or services that you list in your application. So, there is no such thing as a free trademark registration.

VII. FREQUENTLY ASKED QUESTIONS

1. Can I trademark a name for free?

No, you cannot register a trademark for free, but you can establish a common law trademark for free by using the name to brand your products. Common law trademarks are free and do not require any paperwork or forms. There is no way to register a name trademark for free because you will always have to pay at least a small fee that covers the costs of examining and processing your trademark application. There is no way to get a federal trademark for free.

2. Can I trademark a phrase for free?

No, you can’t register a phrase for free, but you can establish a common law trademark for free by using the phrase to brand your products. Common law trademarks are free and do not require any paperwork or forms. There is no way to register a phrase trademark for free because you will always have to pay at least a small fee that covers the costs of examining and processing your trademark application. There is no way to get a federal trademark for free.

3. What is the least expensive way to trademark a name?

The cost to trademark a name is between from $250 to $350 per trademark class. This is the cost to submit your trademark application to the USPTO. The easiest way to submit an application to register your trademark is online, through the USPTO’s Trademark Electronic Application System (TEAS).

4. What is the least expensive way to trademark a phrase?

The cost to trademark a phrase is between from $250 to $350 per trademark class. This is the cost to submit your trademark application to the USPTO. The easiest way to submit an application to register your trademark is online, through the USPTO’s Trademark Electronic Application System (TEAS). Learn about how to qualify for the lowest filing fee in our guide to TEAS.

5. What is the cheapest way to trademark?

There is a free option to get a trademark for your name, logo, or phrase. The way to get a free trademark is to establish common law trademark rights by using your mark to brand your business, products, or services. Common law trademark rights have limitations, but they can offer some protection for names, logos, and phrases.

6. Can you trademark things for free?

Yes, you can establish common law trademarks and no cost. However, you cannot register a trademark for free. The U.S. Patent and Trademark Office always charges a filing fee.

Take the Next Step and Legally

Own Your Trademark

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Trademark

Request a Free Strategy Call

SHARE THIS ARTICLE ON:

SHARE THIS ARTICLE:

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Suggestive Trademarks – AN EASY GUIDE with Examples

August 25, 2022 by Michael Kondoudis

Suggestive trademarks hint at aspects of products and services but do not describe them. They “require imagination, thought, or perception” to connect the mark to the goods or services.

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to suggestive trademarks.

Suggestive trademarks are an important part of branding for many businesses. By choosing the right suggestive trademark and taking steps to protect it, you can ensure that your business has the exclusive right to use it.

In this easy guide, we explain suggestive trademarks, give some tips on choosing the right suggestive trademark for your business, and show you how to protect your suggestive trademark.

We’ll also answer frequently asked questions about suggestive trademarks along the way.

Let’s get started!

CONTENTS

→ What a suggestive trademark is

→ Whether suggestive trademarks can be registered

→ Examples of suggestive trademarks

→ Advantages of suggestive trademarks

→ Common pitfalls of suggestive trademarks

→ How to pick a suggestive trademark

→ Ways to protect your suggestive trademark

→ The benefits of registering suggestive trademarks

→ Condensed Summary

1. Suggestive Trademarks

What is a Suggestive Trademark?

A suggestive trademark is a distinctive mark that alludes, implies, or hints at some quality of a product or service, but does not actually state or describe the product or service outright. Suggestive trademarks have some association to a product or service, but the association is not immediately clear because they do not say it outright. Consequently, customers must use their imagination to connect the mark with the product.

A suggestive trademark is a type of mark that suggests a characteristic or quality of a product, service, or business. Suggestive trademarks require thought and imagination to connect the mark to a product, service, or business. Suggestive trademarks never directly or immediately describe or communicate features, qualities, or aspects of a product, service, or business. As a result, people have to use thought and imagination to connect a suggestive trademark to a product, service, or business.

Suggestive trademarks use terms or designs that hint or allude to specific qualities and/or features of the products or services they brand but do not state them outright. They are connected to the products and services they brand, but the connection is not immediately apparent.

What Makes a Suggestive Trademark Distinctive?

The test for whether a trademark is suggestive is:

Does the mark hint or allude to a quality, characteristic, or property of the product, service, or business that it brands so that thought or imagination is required to make the connection?

If the mark directly or immediately conveys a quality, characteristic, or property, it is not a suggestive trademark.

How Do Suggestive Trademarks Differ From Other Types of Trademarks?

Suggestive trademarks require imagination or a ‘mental step’ to link them to products and services. While suggestive trademarks allude or hint at aspects of products or services, other types of trademarks are either wholly unrelated to the product or service (e.g., Apple®) or outright describe the product or service (e.g., British Airways®).

Can Suggestive Trademarks Be Registered?

Yes, suggestive marks can be registered. Suggestive marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register suggestive trademarks. The USPTO considers suggestive marks to be entitled to moderately strong legal protection because they are inherently distinctive.

Do suggestive trademarks need secondary meaning?

No, suggestive trademarks do not need secondary meaning because they are inherently distinctive, which means that they can be registered and protected without proof that customers identify with a certain company through use over time.

Suggestive trademarks are considered distinctive enough to function as trademarks through proper use alone.

Suggestive marks are registrable without a showing of acquired distinctiveness, assuming all other conditions for registration are satisfied.

2. Examples of Suggestive Trademarks

Suggestive Trademark Examples

Suggestive trademarks hint at the nature of products or services without directly describing them and require some imagination to associate them with the underlying products or services.

The following are examples of suggestive trademarks:

TRAVELODGE: is suggestive of hotel services because holiday alludes to times when travel is common

RAIN-X: is suggestive of car wax because the name alludes to prohibiting rain spots

TESLA: is suggestive of electric vehicles because Nicholas Tesla was a renowned scientist in the field of electricity

NIKE: is suggestive for running shoes because Nike was the Roman god of athletics, which alludes to sports and sports gear.

WALMART: is suggestive for retail stores because the name implies a “mart”

THE NORTH FACE: suggests outdoor gear because the north face alludes to mountains, hiking and the like

Consumers who encounter these trademarks in the marketplace need to use their imagination to link them to products or services because the association is not immediately apparent.

The Ten Best Examples of Suggestive Trademarks

These are the ten best examples of suggestive trademarks:

1. RAIN DANCE: is suggestive for car wax because it implies that rain will dance of the finish

2. COPPERTONE: is suggestive for suntan lotion because the color copper brings to mind skin tanning in the sun.

3. CITIBANK: is suggestive for financial services because the terms “citi” and “bank” hint at banking services in cities.

4. NETFLIX: is suggestive of online streaming services because the terms “net” and “flix” imply the Internet and movies.

5. MICROSOFT: is suggestive for software and computers because the terms “micro” and “soft” hint at microchips and software

6. GREYHOUND: is suggestive of travel services because greyhounds are racing dogs, which suggests fast travel.

7. JAGUAR: is suggestive for automobiles because jaguars are exotic and swift, which alludes to exotic sports cars

8. AIRBUS: is suggestive of air travel because it conjures the image of a flying bus

9. KITCHENAID: is suggestive of kitchen appliances that help in the kitchen

10. PINTEREST: is suggestive of an image sharing service because the name alludes to “pinned images of interest”

Do you need help with your trademark?

The Advantages of Suggestive Trademarks

Suggestive names draw on the power of metaphor and analogy to create positive associations in customers’ minds. Many marketing professionals prefer them because they plant seeds in consumers’ minds as to the nature of branded products and services. So, they support efforts to promote brand identity.

There are some of the many benefits suggestive trademarks:

1. Suggestive trademarks are entitled to legal protection, which makes them easier to protect against infringement.

2. Suggestive trademarks are inherently distinctive and eligible for registration at the U.S. Patent and Trademark Office.

3. Suggestive trademarks are powerful marketing tools because they can allude to aspirational aspects of a brand identity.

4. Suggestive trademarks invite consumers to use their imagination to connect them to products and services, which strengthens brand identities

What are Some Common Pitfalls With Suggestive Trademarks?

There are a few common pitfalls that businesses make with suggestive trademarks. First, they may choose a trademark that is too similar to another one. This could lead to a likelihood of confusion and could invalidate their trademark. Second, they may not register their suggestive trademark with the U.S. Patent and Trademark Office. Without registration, they are not fully protecting their trademark.

3. Picking Suggestive Trademarks

How to Pick a Suggestive Trademark for Your Business

Picking the right suggestive trademark for your business is essential. There are a few key factors to consider when choosing a suggestive trademark. First, you want to make sure that the trademark is inherently distinctive. This means that it should not be descriptive of your product or service but should instead suggest something about it. Second, you want to ensure that the trademark is not too similar to another. This could result in a likelihood of confusion and could lead to your trademark being invalidated. Finally, you want to make sure that the trademark is capable of being registered with the U.S. Patent and Trademark Office. If it is not, you may be unable to protect it.

Hierarchy of Trademarks

The sole functions of a trademark are to identify the source of a product or a service and to distinguish them from the competition. A distinctive trademark performs this function. A distinctive trademark is strong.

It turns out that some marks have a natural tendency to be distinctive. Courts and the U.S. Patent and Trademark Office (USPTO) judge this tendency using the following hierarchy of trademarks:

Fanciful: (most distinctive) a term without a dictionary meaning that is invented for the sole purpose of branding a product or service. They are the strongest trademarks and are entitled to the most protection by courts and the USPTO.

Arbitrary: (highly distinctive) a term with a dictionary meaning that is not related to the product or service with which it is used. They are strong trademarks and entitled to broad protection by courts and the USPTO.

Suggestive: (distinctive) a term that alludes to something about the product or service with which it is used and requires some imagination, thought, or perception to make that connection. They are trademarks and are entitled to protection by courts and the USPTO.

Descriptive: (potentially distinctive) a term that directly conveys something about the product or service they brand. Descriptive marks are only entitled to protection if the owner can show that consumers recognize them as a brand after some period of exclusive use.

Generic: (never distinctive) the common name for a category of product – cannot be trademarked.

As a general rule, distinctive trademarks are preferable because they tend to be stronger and easier to register and protect.

What Are the Five Categories of Trademarks?

These five categories are:

- Arbitrary trademarks
- Fanciful trademarks
- Suggestive trademarks
- Descriptive trademarks
- Generic trademarks

4. Protecting Suggestive Trademarks

Are Suggestive Marks Protected?

Yes, suggestive marks are protected. Federal courts have found that suggestive marks are entitled to protection under Trademark Law.

How to Make Sure Your Suggestive Trademark is Protected

There are a few steps that you can take to make sure that your suggestive trademark is protected. First, you should register it with the U.S. Patent and Trademark Office. This will give you the complete protection that you are entitled to under trademark law. Second, you should use your trademark in commerce. This will help put the public on notice of your trademark ownership. Finally, you should monitor for unauthorized use of your trademark. If you see someone using it without your permission, you can take steps to stop them.

Can you register a suggestive trademark?

Yes, you can register a suggestive trademark with the USPTO.

To be eligible for registration, a suggestive trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services.

Register a suggestive trademark

Suggestive marks are generally registrable. They belong to the category of strong trademarks known as inherently distinctive marks. Assuming all other conditions for registration are satisfied, an inherently distinctive mark is registrable on the Principal Register without a showing of acquired distinctiveness.

The Benefits of Registering a Suggestive Trademark

There are several benefits to registering a suggestive trademark. First, it allows you to protect your trademark fully. Second, it gives you the exclusive right to use your trademark. This means that no one else can use it without your permission. Third, it will prevent a competitor from registering the trademark and taking it from you. Fourth, it ensures that your trademark does not infringe anyone else’s trademark. Fifth, it puts the public on notice of your trademark ownership, which helps deter others from trying to use it.

Read about all of the advantages that come with federal trademark registration here.

Tips to Register a Suggestive Trademark

If you’re a small business owner who is looking to trademark your suggestive trademarks, you’ll need to make sure that consumers will be able to easily associate them with the underlying goods or services.

Here are four things to keep in mind when filing for a suggestive trademark:

1. Make sure the mark is suggestive, not descriptive.

2. Make sure there’s a separation between the mark and the goods or services it represents.

3. Don’t use any confusingly similar marks yourself.

4. Be prepared for a longer wait time than with other types of trademarks.

Do you need help with your trademark?

How Can a Business Make the Most of Its Suggestive Trademark?

To make the most of a suggestive trademark, a business should consider registering it with the USPTO. Registering a suggestive trademark gives a business the exclusive right to use the mark in connection with its products or services. It also serves as notice to the public that the mark is owned by the business and helps to deter others from using it. Furthermore, registering a suggestive trademark can make it easier for businesses to enforce their rights if someone does attempt to use the mark without permission. Registering a suggestive trademark is important for businesses looking to protect this valuable asset.

They should also use the mark consistently and avoid using it in a way that might dilute its power.

With care and attention, a suggestive trademark can be an invaluable asset for any business.

5. Condensed Summary

Suggestive trademarks are marks that have some association with a product or service, but the connection is not immediately apparent. They require imagination, thought, or perception to connect the mark to the nature of the goods or services that the mark brands. There is no specific definition for what constitutes a suggestive mark. However, the mark is most likely suggestive when consumers need to use their imaginations to make a mental connection between a trademark and a product or service.

Ultimately, the US Patent and Trademark Office (USPTO) decides whether a particular trademark is suggestive. The USPTO uses various factors to make its determination, including how well-known the mark is and how much imagination is needed to make the relevant connection between trademark and product.

Suggestive trademarks can be registered with the USPTO. They are protectable under trademark law and are eligible for federal trademark registration.

The USPTO will not register trademarks that are simply descriptive of a product or service. However, suggestive trademarks, because they allude to features of a product or service, are considered inherently distinctive and thus registrable.

6. Frequently Asked Questions

1. Can you register a suggestive trademark?

Yes, you can register a suggestive trademark with the USPTO. To be eligible for registration, a suggestive trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services.

2. Are suggestive marks protected?

Yes, suggestive marks are protected. Suggestive marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register suggestive trademarks. Also, federal courts have found that suggestive marks are entitled to moderately strong legal protection because they are inherently distinctive.

3. What are some examples of suggestive trademarks for products?

Suggestive trademarks require some imagination to associate them with the underlying products. The following are examples of suggestive trademarks for products:

COPPERTONE: is suggestive for suntan lotion because the color copper conjures the color of skin tanning in the sun.

JAGUAR: is suggestive for automobiles because jaguars are exotic and swift, which alludes to exotic sports cars

MICROSOFT: is suggestive for software and computers because the terms “micro” and “soft” hint at microchips and software

4. Is Microsoft a suggestive trademark?

Yes, MICROSOFT is a suggestive trademark because it alludes to the company’s products and services without describing them. Micro implies small electronics and soft alludes to software.

5. What are some examples of suggestive trademarks for services?

Suggestive trademarks require some imagination to associate them with the underlying services. The following are examples of suggestive trademarks for service:

CITIBANK: is suggestive of financial services because the terms “citi” and “bank” hint at banking services in cities.

GREYHOUND: is suggestive of travel services because greyhounds are fast, which suggests fast travel.

NETFLIX: is suggestive of online streaming services because the terms “net” and “flix” imply the Internet and movies.

6. Are Suggestive Trademarks Inherently Distinctive?

Yes, suggestive trademarks are considered inherently distinctive. This means that is not necessary to show that distinctiveness has been acquired.

TAKE THE NEXT STEP

Ready to LEGALLY own your trademark?

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Simple Trademark Rules: AN EASY GUIDE

August 24, 2022 by Michael Kondoudis

If you want to keep your trademark, you need to know the trademark rules.

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademark rules.

A trademark is a sign that distinguishes your goods or services from those of other businesses. It can be a word, phrase, logo, or even distinctive packaging. Trademarks are essential to any business because they help consumers identify your company and products. As a business owner, it’s important to understand the rules surrounding trademarks so that you can protect your brand.

So, if you’re ready to learn how to use a trademark properly, this guide is for you.

Let’s get started!

Contents

> About Trademark Rules

> The First 10 Trademark Rules

> The Next 10 Trademark Rules

> Overview of Trademarks

> Frequently Asked Questions

1. About Trademark Rules

What Are Trademark Rules?

Trademarks are words, logos, and phrases that identify a product, service, or company. Trademark rules dictate how to use them. Trademark rules are the guidelines that dictate how trademarks can be used, registered, and protected.

Trademark rules ensure that businesses can identify their products and services to consumers. Trademark rules also prevent consumer confusion. Following trademark rules helps to protect consumers and the owners of registered trademarks.

Trademark rules come from federal and state governments and help ensure that trademarks are properly used to identify specific products and services.

What Happens if I Don’t Follow Trademark Rules?

You risk losing control over your brand if you don’t follow trademark rules. Others may be able to use your trademarks without your permission, leading to confusion among consumers. Additionally, you may be sued for trademark infringement. Infringement lawsuits can be very costly, and if you are found liable, you may be required to pay damages to the trademark’s rightful owner.

You Could Be Sued for Infringement

If you don’t follow the rules, you could be sued for infringement. This is when someone believes that their trademark rights have been violated. An infringement suit could force you to change your name or pay damages. It’s expensive and time-consuming, so it’s best to avoid it if you can. If you infringe a registered trademark, you could be ordered to pay damages, have your website shut down, and even be banned from using the infringing mark in the future.

You Could Lose Your Trademark Rights

If you don’t use your trademark correctly, you could lose your rights to it. You could also end up weakening your trademark. For example, if you allow others to use your mark without permission, they may be able to argue that it’s not yours anymore. This is called “genericide.” It happens when a brand name becomes so popular that it’s used as a generic term for the product or service, like Kleenex or Band-Aid. In fact, there have been several high-profile cases of businesses losing their trademarks because they were used incorrectly.

You Could Be Forced to Stop Using Your Trademark Altogether

If someone challenges your trademark and wins, you could be forced to stop using it altogether. This is rare, but it does happen. So if you’re considering using someone else’s trademark, do your research first. Otherwise, you could end up on the receiving end of a cease and desist letter—or worse.

Why Are Trademark Rules Important?

Properly used trademarks keep their value and stay enforceable. Incorrectly used trademarks lose their value and can even result in the loss of all legal protection.

Consider the names escalator, cellophane, and aspirin. They were once Federally registered trademarks – now they’re not. What happened?

The short answer is that they were misused, stopped being distinctive, and became generic. Trademarks become generic when consumers stop seeing them not as a brand but as a type/category of product. When a mark becomes generic, it loses its protection under the law.

So, how did escalator, cellophane, and aspirin become generic? Their owners misused and/or permitted the misuse of these once valuable trademarks in their advertising. Many trademarks have been lost this way.

If you want to keep your hard-earned trademark rights, you need to follow the trademark rules.

2. The First 10 Trademark Rules

Ten Trademark Rules

1. Always use your whole mark

2. Make sure your mark stands out

3. Use a trademark symbol

4. Avoid descriptive words, terms, and phrases

5. Use your trademark as an adjective

6. Business and domain names do not protect trademarks

7. Avoid commonly used words, terms, and phrases

8. You can file a trademark before you start using it

9. Federal trademark registration is the best way to protect your mark

10. The ® symbol is reserved for registered trademarks only

Bonus Rule: Working with a trademark lawyer increases your chances of registration by about 50%

If you follow these trademark rules, your trademark will keep its value and protect your brand.

1. Always Use Your Whole Mark

Use your complete trademark in its entirety and avoid any temptation to vary it. If your mark contains more than one linguistic or graphic component, use all of them. For example:

come see us at the TOY EMPORIUM

would be correct, while “see us at the Emporium” would be incorrect. Dissecting your trademark by using less than all of it and/or using variations of your mark both risk diminishing its distinctive quality in the minds of consumers.

Don’t experiment with variations of your trademark – especially logos!

2. Make Sure Your Marks Stand Out

Trademarks should always be used in ways that distinguish/set them off from surrounding text. This can be accomplished in any number of ways, including:

large type (BAND-AID bandages);
distinctive font/lettering (Disney); and
use of the word “brand” (Scotch brand transparent tape).

The use of the word “brand” after a mark is especially helpful to combat generic tendencies. Repeated reference to scotch tape as Scotch brand cellophane tape, for example, helps to remind consumers that “Scotch” is a brand name of a tape from a particular source.

Consistency is key

References to your mark must be consistent, i.e., the mark should be represented the same way each time. For example, if a mark is represented by a distinctive font, you should consistently use that same distinctive font when referencing that mark. This has the desired effect of emphasizing that the term is indeed a trademark, not merely another word in the text.

Set your mark off from surrounding text, and you’ll promote its distinctiveness.

3. Use a Trademark Symbol

A trademark symbol should follow each use of a trademark. At the very least, this notice should be used at least once in text and preferably with the trademark’s first or most prominent appearance.

Providing public notice of trademark rights is important for registered and unregistered marks alike.

For unregistered marks, it is proper to use TM or SM. The TM symbol identifies an unregistered trademark. The SM symbol identifies an unregistered service mark (a mark used in connection with a company’s services rather than goods). For example:

CRANAPPLE^TM cranberry apple drink

The symbol does not mean a trademark application has been filed or a registration has been issued. This means that the TM symbol may be used from the outset. Again, TM simply means that the term is claimed as a trademark.

Read our complete easy guide to trademark symbols here.

Do you need help with your trademark?

4. Avoid Descriptive Words, Terms, and Phrases

Many businesses mistakenly believe that names, logos, and phrases that describe their products are good choices for trademarks. This is not the case. Trademarks that convey a product’s or service’s characteristics, qualities, or purpose are considered weak marks. Weak marks are difficult to register with the U.S. Patent and Trademark Office and offer few protections.

Top reasons to avoid terms

Difficult to register
More expensive to register
Not catchy or memorable/ Customers may not remember your brand
Tougher to stand out
Don’t communicate anything about your brand
Weak trademarks

5. Use Your Trademark as an Adjective

Trademarks are adjectives. They should be used only as adjectives.

Adjectives explained

For the non-grammarians reading this guide, adjectives are words that modify nouns. Consider:

a “hot” day
a “wise” grandmother
a “red” car
a “powerful” drug

The words hot, wise, red, and powerful are adjectives that modify the nouns day, grandmother, car, and drug, respectively.

The simple trick to ensure the use of any trademark as an adjective

Unless you are a grammarian, the easiest way to guarantee that your mark is used as an adjective is to place the generic name of your product after your mark. Consider these examples:

a SCHWINN bicycle
STARBUCKS coffee
CHEERIOS cereal

The generic words bicycle, coffee, and cereal are nouns modified by the various trademarks.

Also, consistent reference to the generic term “teaches” consumers that your trademark is not the common name for a kind of goods from many different companies.

Don’t use your mark as a noun or verb.

7. Business and Domain Names Do Not Protect Trademarks

Trademarks are occasionally confused with registered business names and domain names. They are very different. Understanding the differences can save you time, money, and headache.

Registered business names vs. trademarks

A registered business name is just that… a name under which you do business. Registration is with a State agency and only authorizes you to use the name for business operations. That authorization is according to the statutes of the State.

Domain names vs. trademarks

A domain name is part of an address that identifies and locates computers on the Internet. For example, in the web address “http://www.uspto.gov,” the domain name is “uspto.gov.” Domain names are registered through non-governmental registrars. Technically, it is a possessory right to the address alone.

The most important right conferred by a trademark is exclusive use in marketing. That is what makes a trademark an effective identifier of the source of a product. Business names and domain names are essential, but they DO NOT confer any rights to use names, words, or logos.6

7. Avoid Commonly Used Words, Terms, and Phrases

Avoid using terms that are widely used in your industry. They are weak trademarks because consumers won’t recognize them as a brand. Also, common words can be hard to register with the U.S. Patent and Trademark Office

Top reasons to avoid common terms

May have to disclaim exclusive rights to them
Weak trademarks
Hard to enforce against infringers

8. You Can File a Trademark Application Before You Use It

The U.S. Patent and Trademark Office accepts trademark applications based on “intent” to use a trademark. This means you can start the trademarking process before selling products or services. You DO NOT need to wait. All that is required is that you have an actual intent and use the trademark for the products and services listed in the application.

Remember: The sooner you start the trademarking process, the sooner you can legally own your trademark.

9. Federal Trademark Registration is the Best Way to Protect Your Mark

The United States trademark system protects trademarks at three levels – Federal, State, and common law. The differences between these levels of protection are significant.

Common law rights exist from the moment a trademark is used and do not require registration with any governmental agency. They are minimal because they.

extend only as far as the region where the trademark is actually used
do not extend to the Internet
are easily trumped by registered trademarks.

State trademark registration confers rights that extend throughout a single State. But, like common law rights, they are limited, especially since they are only to a State’s borders.

Federal trademark registration provides protection throughout the entire country and its territories and possessions. It confers nationwide rights and important legal presumptions like ownership and validity.

Federal registration is almost always best

10. The ® Trademark Symbol is Reserved for Registered Trademarks Only

If the trademark is registered, it is proper (and important) to use any one of these notices:

The letter R enclosed within a circle;
The phrase “Reg. U.S. Pat. & Tm. Off.”; and
Registered in U.S. Patent and Trademark Office.

Still, use with statutory notice is not mandatory. But, notice helps set off a trademark and gives notice that precludes an innocent infringer defense.

Remember – no one can reasonably feign ignorance of your mark when the ® symbol follows it!

A word of caution

A statutory notice should only be used after the USPTO issues your registration. Technically, intentional improper marking is a violation of Fe

Use your trademark with the correct symbol!

Working With a Trademark Attorney Increases Your Chances for Registration by about 50%

According to the Wall Street Journal, Federal trademark applications filed by a trademark attorney are 50% more likely to be approved than those filed by applicants on their own. Plus, you’ll be more likely to secure more protection and avoid overpaying the Official fees.

3. The Next 10 Trademark Rules

Ten More Trademark Rules

11. You can start using your trademark before you register it

12. You can register your trademark at the federal level

13. You can use someone else’s trademark under certain circumstances

14. You need to use your trademark in commerce

15. Your trademark must be distinctive

16. Your trademark can’t be too similar to anyone else’s

17. There are many different types of trademark applications

18. Trademarks and copyrights are very different

19. Trademark registrations must be renewed every 10 years

20. There are five types of trademarks

If you follow these trademark rules, your trademark will keep its value and protect your brand.

11. You can start using your trademark before you register it

You can start using your trademark as soon as you start selling your goods or services. However, registering your trademark gives you additional legal protections. For example, if someone else tries to register a similar trademark, you may be able to prevent them from doing so. You can also sue for damages if someone uses your registered trademark without permission.

Do you need help with your trademark?

12. You can register your trademark at the federal level

The United States Patent and Trademark Office (USPTO) registers trademarks at the federal level. Federal registration offers significant legal protections. For example, you can sue for damages in federal court if you have a federally registered trademark.

To combat infringement, companies should consider registering their marks with the USPTO. The registration process provides certain legal benefits and puts would-be infringers on notice that the mark is already taken. Once registered, a company can enforce its rights in federal court where it may be entitled to collect damages for infringement.

13. The use of someone else’s trademark is allowed under certain circumstances

There are some circumstances under which you can use someone else’s trademark without their permission. This is called “fair use.” Fair use allows for the use of another company’s trademark for purposes such as criticism, commentary, news reporting, teaching, or research. If you’re not sure whether your intended use qualifies as fair use, you should consult with an attorney.

14. You need to use your trademark in commerce

In order to register a trademark, you need to be using it in connection with the sale of goods or services. Simply having a great name or logo isn’t enough—you need to put it to use in order to get trademark protection.

In order to be eligible for federal protection, a trademark must be used in interstate commerce—that is, it must be used in connection with goods or services that are sold across state lines. However, many states also protect trademarks that are used only within the state’s borders.

15. Your trademark must be distinctive

In order for a trademark to be registered, it must be distinctive enough to distinguish your goods or services from those of others in the marketplace. This means that generic terms (like “shoes” or “batteries”) can’t be registered as trademarks.

16. Your trademark can’t be too similar to anyone else’s

Obviously, you can’t have a trademark that’s identical to one that’s already taken. But even a slightly similar trademark can cause problems down the road. That’s why it’s so important to do your research before settling on a name or logo for your business.

17. There are many different types of trademark applications

There are many different types of trademark applications, but the two most common types are (1) use in commerce applications and (2) intent to use applications. Use in commerce applications are filed when the applicant is already using the mark in commerce on the products and/or services listed in the application. Intent to use applications are filed when the applicant has a bona fide intention to use the mark in commerce on the products and/or services listed in the application but has not yet begun using the mark.

18. Trademarks and copyrights are very different

The biggest difference between trademarks and copyrights is that copyrights protect original expression while trademarks protect words, phrases, symbols, or designs that identify and distinguish goods and services. Unlike copyrights, trademark rights can last indefinitely if the owner continues to use the mark.

Another key difference is that copyright infringement occurs when someone copies protected expression while trademark infringement occurs when someone uses a confusingly similar mark on competing goods or services. Because of this confusion, consumers may mistakenly believe that two separate companies or brands are connected when they are not. This can cause irreparable damage to a company’s reputation and goodwill.

19. Trademark registrations must be renewed every 10 years

Another important rule for maintaining a trademark registration is that the registration itself needs to be renewed every 10 years. This process is relatively simple and can be done online through the USPTO’s website. The only requirements are that the owner still intends to use the mark in commerce and that there have been no changes to the mark since it was last registered. If either of these conditions is not met, then the registration may be cancelled.

20. There are five types of trademarks

There are different types of trademarks which include word marks, figurative marks, color marks, sound marks, and smell marks.

Wordmarks: A wordmark is a type of trademark that consists of one or more words used to identify a product or service. The words can be in any language and can be presented in any font style as long as they are distinguishable from other words in the same language. Names, phrases, and slogans are word marks.

Figurative Marks: A figurative mark is a type of trademark that uses images or graphics to identify a product or service. This could include any image that represents the company such as their logo.

Color Marks: A color mark is a type of trademark that uses one or more colors to distinguish a product or service from others. The colors must be used in a particular way and must be shown in the application for registration with the USPTO.

Smell Marks: A smell mark is a type of trademark that uses a particular scent to identify a product or service from others. The scent must be distinctive and must be shown in the application for registration with the USPTO.

Sound Marks: A sound mark is a type of trademark that uses particular sounds to identify a product or service from others. The sound must be distinctive and must be shown in the application for registration with the USPTO. Jingles and tones are sound marks.

4. Overview of Trademark Law

Overview of Trademark Law

The main law that governs trademarks in the United States is the Lanham Act. If you use a name or logo for your business, you automatically have “common law” trademark rights. These rights are enforceable in state courts. Marks that are registered with the U.S. Patent and Trademark Office are given more protection than unregistered marks in federal courts.

Distinctiveness

A trademark must be distinctive in order to serve as a mark — that is, it must be able to identify the source of a specific product. The four categories established by U.S. courts for determining whether a mark is distinctive are: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, and (4) generic.

Four Categories

Different categories of trademarks have different levels of legal protection. The amount of protection a trademark gets depends on which category it falls in (i.e., how distinctive it is)

Arbitrary + Fanciful trademarks

An arbitrary or fanciful trademark is a mark that does not have a logical relationship to the underlying product or service. For example, the words “Exxon,” “Kodak,” and “Apple” do not have a relationship to their underlying products. Also, for example, Apple’s Apple Logo does not have a relationship to computers. Arbitrary or fanciful marks are easily recognized and inherently distinctive. These types of marks are highly protected by law.

Suggestive trademarks

A suggestive mark is a mark that evokes or alludes a feature of the underlying product or service but does not come out an describe it. For example, the word “Jaguar” is suggestive of a fast car but does not specifically describe it. Instead, some exercise of thought or imagination is needed to associate the word with the underlying product. Like arbitrary or fanciful marks, suggestive marks are given a high level of protection because they are inherently distinctive.

Descriptive trademarks

A descriptive mark is a mark that directly tells buyers something about a product or service (e.g., its color, function, or ingredients). For example, “Vision Center,” “British Airways,” and “Cartoon Network” each describe an aspect of the underlying product or service. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have “acquired distinctiveness,” which comes from years of exclusive use.

Generic trademarks

A generic mark is a mark that describes an entire category or type of product or service. For example. “Lawn Care,” “Milk,” and “Computer” are generic terms for entire categories of products or services. Generic marks are not protected under trademark law, and a business that sells products or services under these names would have no exclusive right to use that term.

5. Frequently Asked Questions

What are the top Trademark Rules?

These are the top 10 trademark rules:

1. Always use your whole mark

2. Make sure your mark stands out

3. Use a trademark symbol

4. Avoid descriptive words, terms, and phrases

5. Use your trademark as an adjective

6. Business and domain names do not protect trademarks

7. Avoid commonly used words, terms, and phrases

8. You can file a trademark before you start using it

9. Federal trademark registration is the best way to protect your mark

10. The ® symbol is reserved for registered trademarks only

Bonus Rule: Working with a trademark lawyer increases your chances of registration by about 50%

If you follow these trademark rules, your trademark will keep its value and protect your brand.

TAKE THE NEXT STEP

Ready to Legally Own Your Trademark?

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).