Are All Trademarks Created Equal?

You've worked very hard to develop your brand and your branding for your business. It's hard work. We all know that.

You know that you want to file for a trademark to protect your investment in time, energy and money in developing your brand. And you're completely right.

You should file for a trademark.

But not all trademarks are equal in the protection that they offer your marks.

Ok, don't hyperventilate... I'm going to explain.

You can file to protect different things in several different ways....

You can file to protect the words themselves, which is called a "character mark". So, if your company is called "Tiny Toes", you can file to protect those words from anyone else using them in the same class as you use them in. You can also register a trademark for your tagline or any other words that you use to designate your "brand".

But what if you have your words are in a pretty font or you have a logo (with or without your company name" and you want to protect the words using that font. Then you'd be filing what is referred to as a "specialized form mark". It protects the items in the picture that you file as they appear in the picture. So, if you have words in the logo that you file, they're protected. Sort of.

If the words appear without the picture, stylization or design that you've registered, they don't have protection on their own. This is VERY important to remember.

I can't tell you the number of times that I have clients ask me if they should file their logo or their words. The official answer is that for the best protection, you should file both as separate marks. One will protect your logo. One will protect the words.

I know, I know. Not everyone can afford to do that....

Since most of my clients are entrepreneurs who are just starting out, they don't have a lot of money to spend either. I get asked all the time which is the more important mark to file.

So, what's the answer? I generally tell them that they should start out filing their brand name first and filing the logo later on when they have more cash to spend.

Hope that helps you to decide how to best protect your brand.

My Trademark was Granted. I'm done, right?

You go through the entire arduous trademark process, you've been granted the trademark and you've received your pretty little certificate in the mail. You're all done but the framing, right?

Yes and no.

For now, you've got nothing to do but to enjoy being a trademark holder. You need to defend your mark to keep it strong, but assuming that no one tries to infringe your mark, you're golden.

So what the heck am I talking about?

I'm talking about the requirements of Sections 8, 9 and 15 of the Trademark Act.

Wait a second! I know you don't know what I'm talking about. I'm about to explain... Sheesh!

Section 8 requires that you file a §8 Declaration of Continued Use or a §8 Declaration of Excusable Nonuse between your fifth and sixth anniversary of usage (and between your ninth and tenth year, but I'll discuss that later on). It currently costs $100.00 per class. If you fail to file, your mark will be cancelled.

For those of you who have just had a heart attack because your sixth anniversary has passed and you haven't filed, please relax. The USPTO allows a six month grace period (for an extra $100.00 per class).

A §8 Declaration must include:
- The registration number;
- The name and address of the current owner;
- The fee for filing the Declaration;
- If the mark is in use: a statement that the registered mark is in use in commerce; a list of the goods/services recited in the registration on or in connection with which the mark is in use; and one specimen per class of goods/services. Examples of acceptable specimens are tags/labels for goods, and advertisements for services.
- If the owner resides outside the United States, the designation of a domestic representative; and
- A signed and dated affidavit or declaration under 37 C.F.R. §2.20

Ok, so you've got that, right?

Here's something you may not know. Trademark registrations are only good for ten years.

So, between every ninth and tenth anniversary of registration, you need to file a Section 9 renewal application and a Section 8 Declaration of Continued Use. It currently costs $500.00 per class to file both of these documents.

A §9 Renewal Application must include:

- A request to renew the registration signed by the registrant or the registrant's representative;
- The registration number, mark and date of registration.
- A name and address for correspondence.
- The filing fee; and
- If the registrant resides outside the United States, the designation of a domestic representative.

The USPTO also has a grace period of six months beyond the tenth anniversary, but it'll cost you an additional $100.00 per class.

So, failure to keep up with those will cost you your trademark registration. Do them. Don't forget.

There is one other section worth mentioning. It's §15. A §15 Declaration of Incontestability is completely optional (though I certainly suggest filing it). It costs $200.00 per class and you file it at the same time as your first §8 filing (between the fifth and sixth anniversary of the initial registration of your mark), so together it would be $300.00 per class.

So, what is it? The USPTO explains it best:

"An 'incontestable' registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). 15 U.S.C. §1065."

The §15 Declaration must include:

- The registration number and the date of registration;
- The fee for each class of goods/services in the registration to which the Declaration pertains;
- A statement that:
(a) the mark has been in continuous use in commerce for a period of five years subsequent to the date of registration, or the date of publication under 15 U.S.C. §1062(c), on or in connection with the goods/services recited in the registration and is still in use in commerce;
(b) there has been no final decision adverse to the owner's claim of ownership of the mark for the goods/services, or to the owner's right to register the mark or to keep the same on the register; and
(c) there is no proceeding involving the claimed rights pending in the USPTO or in a court of law and not finally disposed of; and
- A signed and dated affidavit or declaration under 37 C.F.R. §2.20.

You can find the §8, §9 and §15 forms for filing here. Some that can be registered together are listed together. Make sure you're reading the directions and filling out the right forms....

Don't lose your mark by mistake. Make sure you keep up with your trademark filings...