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Trademarks dissected...What it means to get a TM?












This post summarizes the key points of what it means to get a trademark. I explain what a trademark is, some of the key points in the filing process, and the fact that this process without an attorney is very difficult. It may seem like a boring topic to look at but if you want to learn more about protecting your logo/brand and the hours working on your startup, read on! 

According to the uspto.gov, "a trademark is generally a word, phrase, slogan, symbol, or design, or combination thereof, that identifies the source of your goods and services and distinguishes them from the goods and services of another party.  That is, a trademark lets consumers know that the goods or services come only from you and not from someone else". Essentially the trademark allows you to keep what brand you have created and if anyone tried to copy that to use as a good or service you would have legal obligation to go after them. It also gives the consumer an opportunity to see you as official and know that they are getting information only from you and your own brand. 

What is very interesting is the process of how one can apply for a trademark. With the intention of legalme.app we are exploring different ways to update the process for getting a trademark with a certified attorney. On the USPTO.gov quote says, "we strongly encourage you to hire legal representation who specializes in trademark law to guide you through the process. What if there was a better way? What if we could take out some of the steps for you and streamline the process? 

After sifting through the 29 page "Basic Facts About Trademarks" guide presented from the USPTO.gov I found out the overall process is about 14 steps from start to finish. These steps are mostly done by going back and forth between a hired trademark attorney and the USPTO.gov. 

Some highlights that entrepreneurs that might be critical to sort out before you begin the process: 

  • A domain name and a trademark differ. A trademark identifies goods or services as being from a particular source. Use of a domain name only as part of a web address does not qualify as source-indicating trademark use, though other prominent use apart from the web address may qualify as trademark use.
  • Generally, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic. The category your mark falls into will significantly impact both its registrability and your ability to enforce your rights in the mark. 
  • The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks, because they are inherently distinctive. Fanciful marks are invented words with no dictionary or other known meaning.
  • Arbitrary marks are actual words with a known meaning that have no association/relationship with the goods protected. Fanciful and arbitrary marks are registrable and, indeed, are more likely to get registered than are descriptive marks. Moreover, because these types of marks are creative and unusual, it is less likely that others are using them.
  • Be aware that any searches you conduct on TESS are limited to the USPTO’s database of federal trademark applications and registrations and do not include the marks of other parties who may have trademark rights but no federal registration. These rights, known as “common law” rights, are based solely on use of the mark in commerce within a particular geographic area. Common law rights may be stronger than those based on a registration, if the common law use is earlier than the use that supports the registration.
  • You should also search state trademark databases and business name databases. Because searching is very complex, you should seriously consider hiring a trademark attorney to assist you with a “full” or “comprehensive” trademark search, as discussed below.
  • The non-refundable application, it is very important for you to determine whether your proposed mark is likely to cause confusion with another mark. This determination can be made only after doing a thorough trademark search. 

With these highlights I have found the process to get a trademark done is simply, not simple. It involves back and forth between attorney, the USPTO.gov and the client. With that said the main impact I could see here would be the process to research for a trademark and where the entrepreneur could see beforehand whether or not it would be viable to follow through with a trademark application. What we want to provide for the entrepreneur is the projected cost, research on TEAS (USPTO.gov database to see what trademarks exist) and the internet, and then connect you to a lawyer who has all the information in front of him ready to do the specific paperwork. With this established trust between lawyers and our company we can work seamlessly together and get more done for the hungry entrepreneur who wants it done now.   



RESOURCES: 








Cheers, 

LegalMe.app (coming soon) 






Comments

  1. UnknownApril 29, 2021 at 3:34 AM

    I am reading your post from the beginning, it was so interesting to read & I feel thanks to you for posting such a good blog, keep updates regularly.
    Trademark Agency Singapore

    ReplyDelete

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