How to Trademark a Brand
Brand Trademark – How to Trademark a Brand is part of our How to Trademark series.
A brand name is often the core value in a business. So filing a trademark application to protect it is essential. The basic steps to trademark a brand are outlined below. The best place to start is with a trademark search.
How to Trademark a Brand Name
A U.S. Trademark Registration has a greater scope of rights than state registrations. First, registering a brand with the U.S. Trademark Office establishes trademark priority over any other applications for the same trademark by a later user. Thus, even if you are just starting out and have not advertised or sold any products in Florida, your U.S. trademark will entitle you to default rights in Florida compared to someone else that might start doing business there.
You will also have the right to enforce your U.S. trademark registration throughout the U.S. against any subsequent user. Again, this enforcement ability includes markets where you have not yet entered.
U.S. trademark law allows registration of any brand identifier, including words, slogans, design logos, product packaging, product color, product shape, jingles, and scents. These brand identifiers are examined for registrability on equal footing insofar as they must serve to designate the source of goods (rather than acting as mere ornamentation) and must not be confusingly similar to any other brand identifier in use.
To secure these rights, the U.S. Trademark Office performs a rigorous search and examination of each application.
The basic steps to trademark a brand name are:
1. Do a Trademark Search
We do a trademark search for $300.
A trademark search can be a powerful tool to identify potential obstacles to using and registering a brand. A valid trademark registration cannot be obtained if the trademark is confusingly similar to another trademark that was previously registered or used in the U.S.
This means that a prior user of a brand can prevent you from registering a confusingly similar trademark or service mark. Worse yet, a prior applicant, or even just a prior user under common law, may have the right to stop you from using the trademark by sending a cease and desist letter or filing a trademark infringement lawsuit.
Conducting a trademark search before adopting or applying to register a brand can identify senior users. The scope of the search results is determined by the information sources searched. U.S. trademark applications and registrations are available at the U.S. Trademark Office’s website and are publicly searchable. Trademark searches using state and federal databases are relatively inexpensive but can miss common law uses.
There is no central database for common law trademark users. Search agencies attempt to catalog unregistered uses that may, nonetheless, have enforceable common law trademark rights.
2. Prepare the Application
Our flat fee to file a trademark application is $850.
When preparing an application, you will first identify the applicant for the trademark. The applicant is usually the user (or potential user) of the trademark. If the applicant listed on the application does not match the user of the trademark, you may need to explain the disparity.
A trademark application may be filed as a use application or an intent-to-use application. An intent-to-use application is for a trademark that has not yet entered use but for which you have a bona fide intent to use. An intent-to-use application is a way to establish priority in a trademark that you plan to use in the future.
A use application is for a trademark that is already in use. A use application must include a specimen of use and identify the dates of first use anywhere and first use in interstate commerce. Although you have some leeway in underestimating how long you have used the mark, your trademark registration may be invalid if you deliberately overestimate how long you have used the trademark.
The application must include a drawing of the mark. For non-visual marks, such as a scent or sound, a drawing is not required but a detailed description of the mark is required. The application includes a declaration made under penalty of perjury that must be signed by the applicant or an attorney on the applicant’s behalf. If the declaration is signed and the application contains material misrepresentations, any registration issuing from the application may be invalid. Finally, the application is filed with a government filing fee which is usually $250 per class of goods and services.
3. Prosecute the Application
After the application is filed, it is examined by the U.S. Trademark Office. An examining attorney will conduct a trademark search and determine whether the brand meets the requirements for registration. If the examining attorney is satisfied that the trademark is registrable, the application is allowed and a notice of publication issues. If not, the application is rejected.
There are many grounds for refusing a trademark application. The most common are confusing similarity to a prior registration and lack of distinctiveness.
In measuring the likelihood of confusion, the examining attorney considers the similarity of both the trademarks and the goods or services. Likelihood of confusion is a concept that is deceptively complex and nuanced. However, a rejection is likely if the trademarks are confusingly similar and the goods and services are similar or related.
The look (or spelling), sound, and meaning of the trademarks are compared to determine similarity. Thus, a misspelling will often be insufficient to distinguish trademarks if the sounds and meanings are the same.
The goods and services are related if they are likely to encounter the same consumers in the same channels of trade. This is intended to protect a business’s ability to expand its brand into related products or services and prevent consumers from being confused about the affiliation or sponsorship of related products or services.
Lack of distinctiveness is a problem if the trademark is generic or descriptive. Generic words cannot function as trademarks and are not registrable. Descriptive marks can be registered upon a showing of acquired distinctiveness. Alternatively, applications for descriptive trademarks can be amended for registration on the supplemental register.
In every case, an applicant is allowed the opportunity to respond to any refusal to register with arguments or evidence. If the examining attorney is unpersuaded by the response, a final rejection may be issued.
If the examining attorney issues a final rejection, the applicant can appeal. An appeal is a review of the examining attorney’s decision by the Trademark Trial and Appeal Board (TTAB). The TTAB can sustain the examining attorney’s rejection or reverse it, sending it back to the examining attorney for allowance.
After allowance, the trademark is published for opposition. Any person or business that believes it will be harmed by registration of the trademark can oppose it. If the application is opposed, a trial, called an opposition, will be conducted between the applicant and opposer.
If no notice of opposition is filed, the trademark is registered. However, if the application was filed as an intent-to-use application, registration will not occur until an amendment to allege use is filed along with a specimen showing use.
How to Trademark a Brand Under the Common Law
Common law trademark rights are secured by use. More specifically, no application is required to obtain common law trademark rights. Rather, use alone is enough for you to gain common law trademark rights in your brand.
To obtain trademark or service mark rights under the common law, your brand must still be capable of acting as an identifier of source. This means that common law trademark rights are not available for trademarks that are either generic or have become generic. Generic marks describe a class of goods or services. “Coin-op Laundry” is an example of a generic service mark while “Laundromat” is an example of a brand that was once a service mark but has become generic through misuse.
Any brand that is distinctive can acquire common law trademark rights. “Distinctiveness” means that the brand identifies a single user in the minds of consumers. Suggestive, arbitrary, and fanciful brands are inherently distinctive while descriptive brands must acquire distinctiveness through continuous and exclusive use.
While common law rights allow you to exclude any subsequent user of a confusingly similar brand, common law rights are limited to the geographic area where you used the brand. This means that you cannot stop someone from deliberately or inadvertently using your brand in a market you have not entered.
How to Trademark a Brand in Your State
State trademark registration systems were created in the mid-1800s to overcome some of the limitations of common law trademark rights. The primary benefit of a state trademark registration over common law trademark rights is that state trademark rights are enforceable throughout the state, even if you have only used the brand locally.
This is viewed as a reward to the registrant for going through the effort to obtain a state trademark registration. Moreover, the state register of trademarks is publicly available, so it provides notice to any subsequent users of the brand.
In most jurisdictions, the Secretary of State’s office defines the procedures and forms for registering state trademarks and service marks. For example, the California Secretary of State accepts state trademark applications via its online portal, in person at its Sacramento office, or through the mail.
Most states do not examine state trademark applications other than to make sure the forms are filled out completely and to search for prior registrations that are identical to the trademark and goods or services applied for. This means that the application process in most states is less rigorous than the U.S. Trademark Office’s application process and, thus, state trademark registrations are usually easier to obtain. That said we almost never recommend filing a state trademark application. This is due to the fact that the right acquired pale in comparison to a federal trademark registration.
For assistance if filing a trademark application for a brand, please contact us today.