If you are a brand developer looking to trademark a name, logo or slogan of your brand and consequently gain legal protection, this article is for you! A detailed overview of the process is provided below to help you understand the process and gain a trademark that is federally protected for your brand.
A trademark is defined as ‘a symbol, word, or words legally registered or established by use as representing a company or product’, for example, Nike’s ‘Just do it’ slogan or Louis Vuitton’s ‘L.V. The Truth’. The good news is that there are a number of trademark options for you and your business. Slogans, logos and names can all be trademarked providing that they are distinguishable from other brands and easily recognisable for the consumer. It is worth noting that the more creative a trademark is, the easier it will be to trademark. Uniqueness is a highly favourable quality.
It is critical to be aware that some names, slogans or brand designs cannot be trademarked. Key examples of these are a generic word or phrase that does not distinguish the product. For example, if a dairy company wanted to trademark the brand name ‘milk’ this would easily be rejected as it is both merely a description of the product and completely indistinguishable from other competing dairy companies.
It is critical to be aware that some names, slogans or brand designs cannot be trademarked. Key examples of these are a generic word or phrase that does not distinguish the product. For example, if a dairy company wanted to trademark the brand name ‘milk’ this would easily be rejected as it is both merely a description of the product and completely indistinguishable from other competing dairy companies.
Some successful and well known examples of trademarked brands are:
- U.S trademark- Microsoft (The word Microsoft)
- U.S trademark- Target (Target logo symbol)
- U.S trademark- Coca Cola (the Coke bottle)
- U.S trademark – Mcdonalds (the golden arches)
- U.S trademark- Apple (the Apple logo)
- U.S trademark- Twitter (the Twitter bird)
- U.S trademark- Red Bull (the two bull logo)
- U.S trademark- Starbucks (the Starbucks mermaid)
These cases are thoroughly useful and are recommended to be researched and read through to familiarise yourself with the process-. Even if you hire an attorney to aid you in the application of a trademark, a strong understanding of the process will favour you greatly so you understand the attorney’s approach in handling complex legal details the USPTO is not equipped to handle.
So should I hire a trademark attorney?
Hiring an attorney greatly increases your chance of a successful application and filing of your trademark. The process itself can be very complex and the USPTO itself states that hiring an attorney can shorten the process. Furthermore, the help of an attorney is incredibly valuable when policing your trademark after the filing is completed and the application approved in order to protect it from infringement from other companies.
When hiring an attorney for trademark law applications, it is important to note that if your trademark is in a foreign-domicile, but the trademark is for consumer viewing in the US, the applicant is required by law to have a US licensed attorney to protect you and your trademark. Alternatively, for trademark applications in the US, a US licensed attorney is not vital but strongly advised by the USPTO in order to help guide your brand through the application process.
The trademark process itself:
The trademark process is long and complex, taking around 8 to 10 months to complete with regular status checks needed from you, to be aware of any upcoming fees to be dealt with or infringement acquisitions from other companies.
1) The first step of the process is to decide whether your brand needs to be trademarked. As outlined above, trademarks should not be bland, generic or descriptive as they do not cause an association to the particular product the company is selling. Furthermore, a key quality of a brand design able to be trademarked is a distinguishable format that consumers will easily be able to associate with your brand. Some well-known examples of trademarks are ‘Youtube’ or the Nike tick that is present on all of their products. This trademark is well established, and consumers can quickly source any of their products back to the company. If your trademark is strong, then it would be wise to consider a federally recognised trademark application.
2) If your business has concluded that a trademark is the correct form of legal action, then a thorough search of the trademark database must be conducted to ensure the mark that your company is aiming to trademark is not already legally protected, or one very similar that may be accused of infringement. This is a timely and vital step; if a similar trademark is discovered to already be registered, the entire process would be a waste of company time and money. Next, the type of mark and the sector your mark applies for must be clarified. For example, Apple’s trademark sector is technology, and the trademark they are protecting is a stylised mark; the apple logo. Due to the complexity and timely nature of this stage, hiring a trademark attorney would be the logical decision for any company that is not an expert in trademark legalities.
3) The next step to consider is the preparation of the application. Once the database has been thoroughly checked, and the mark type and sector has been established (most preferably by an attorney) the brand may start to fill in the applications for a trademark. An application form must be completed, a JPG image of the logo attached and sent online to the USPTO with an application fee. In order to calculate your application fee, review USPTO’s guide chart here. It is vital that the applicant brand, or their attorney, monitors the application status at least once every six months through the TSDR system as a deadline missed equals an application abandoned by the USPTO. The TSDR is the Trademark Status and Document Retrieval and is essentially a database where you can search your application and view its status eg. has it been approved, has it been filed? The entire process can take between 8 to 10 months.
4) The next step of the application is to work with the USPTO examiner. After the filing requirements have been met (payments, JPG image and the relevant information disclosed) a serial number is assigned to the application, and it is forwarded to an examining attorney at the USPTO. This part of the process could take months due to the checks it has to be exposed to; these include fee payment checks and making sure the application abides by the laws and statutes of trademark law; find these in more detail here. If the application is refused the brand holder or attorney acting on their behalf will receive a letter explaining why. At this point, the attorney or brand holder has six months to respond with reforms or face abandonment of the application.
5) The fifth step of the application process is, arguably, one of the most crucial. The brand holder or attorney will receive a formal approval or denial of the application. If it is approved the logo, name or slogan will appear in the ‘Official Gazette.’ This is effectively a database of all the newly approved trademarks and is available for the viewing of other companies. If an issue arises, for example, an accusation of the infringement of another company’s trademark, the accusing company has 30 days to explain their reasoning and if their reasoning is sound the dispute goes through a small court tribunal. This is where a trademark attorney is critical as the legalities become complex and potentially costly if the brand holder is attempting to solve disputes without professional legal advice.
If the tribunal rules out an issue, then a ‘Notice of Allowance’ is sent to the attorney or brand holder. This outlines that the holder has six months to use it in commerce or request six months more in the form of an extension. Once again, if no action is taken, the application is abandoned.
Alternatively, if there was no issue a certificate of registration is sent to the Trademark owner and the same ‘Notice of Allowance’ rules apply.
6) Finally, the registration of the trademark must be maintained by the trademark holder or their attorney. Maintenance documents must be filed, the registration status must be monitored annually and finally, the owner is fully responsible for protecting their legal rights in regards to their trademark. For example an accusation of infringement or a company aiming to infringe your trademark is under the attorney or trademark holder’s policing, USPTO have no obligation to protect the trademark.
In conclusion, the trademark process is long and complex with the potential to enter into even more complex legalities in step 5 if a company finds an issue with the trademark. While this whole process may appear daunting – the solution is tangible. At Partners Law Group there is a team of very qualified IP lawyers with over ten years experience effectively working on IP issues, specifically trademark and patent applications who will help you with your trademark and patent queries.
Cover photo from You X Ventures found on Unsplash.