Trademark

What are some things a business owner should know when preparing to file a trademark application?

When preparing to file a trademark application, there are several things that a business owner should keep in mind:

Eligibility. Not all types of marks are eligible for trademark protection. There are generally five requirements to achieve trademark protection: Use in interstate commerce, Affixation, Distinctiveness, Non-functionality, and Not Prohibited.

First, the mark must be used in association with the sale of goods or services in interstate commerce. Thanks to the internet and e-commerce, the “interstate commerce” requirement is generally easy to fulfill.

Second, the mark must be affixed or attached to the sold goods or services. For example, think of a Nike swoosh on a pair of shoes or the name of your company attached to advertising materials.

Third, the mark must be distinctive and not merely descriptive. These are legal terms of art, but in simple terms, the mark must not simply describe what is being sold. For example, if I were to open a store selling computers and name it “The Computer Store,” this would not be eligible for trademark protection because it merely describes what is being sold. The only way to overcome this requirement is to achieve “secondary meaning,” which entails proof that customers associate the name with your brand.

Next, the mark must be non-functional. Non-functional is another term of art meaning that features essential to the product’s use or purpose may not serve as a mark. This requirement typically  deals  with  trade  dress,  which  includes  product  packaging,  product  design,  store layouts, and even the look and feel of your website. Functionality is a bit more complex. You cannot obtain trademark protection for features essential to a product’s function, such as a bottle shape that enhances grip. However, if the shape serves only an aesthetic purpose and adds visual appeal, it may be protectable. At Polymath Legal, we can help determine whether your trademark qualifies for protection, so you won’t have to worry about it.

Finally, and possibly most importantly, the mark must not be prohibited. Among other things, if a mark is deceptive, disparaging, or confusingly similar to another mark, it is prohibited.

Fees. The fee for a Base application is $350 per class. Forty-five classes cover all goods and services. For example, Class 41 is education and entertainment; Class 25 is clothing, and Class 21 is household and kitchen items. Depending on your business, you may register your trademark in different classes, which will incur an additional fee for each class. Our Opinion Letter will provide a recommendation for the class that best aligns with your products and services.

Timing. It can take several months (and even years, depending on the situation) for a trademark application to be processed, so it is essential to plan accordingly. Typically, an application that is simple enough can often register in about nine to thirteen months.

Infringement. Even if a work registers with the USPTO, it does not automatically mean it is not infringing on someone else’s trademark. This is why conducting a preliminary knockout search is vital to ensure that the trademark is original and does not violate someone else’s rights.

Maintenance. Mandatory maintenance must be done between the fifth and sixth years, and renewal must be applied between the ninth and tenth years and every ten years after that.

By keeping these key points in mind, business owners can ensure that their trademark application is complete and accurate and that they have taken the necessary steps to protect their valuable intellectual property.