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...

How Strong is Your Trademark?

The most important thing when deciding your "branding" for your business is to make sure that you pick words and logo that identify and protect your brand. Your intellectual property is some of the most valuable assets you have, particularly if you're just starting out.

If you're just starting out, you should pick a mark that is as strong as possible to build your brand around.

So, how do you know what makes a strong mark?

Because I'm going to tell you, that's how....

There are five classifications of marks (four of which can be registered with the USPTO). (Actually, Famous marks are given extra protection, but let's assume that if you're starting out, you don't have one of those.)

They are (in order of strength):

Fanciful - A fanciful mark is one that is a made up word or set of words that have no dictionary definition. Examples would include: Xerox, Google, Ebay.

Arbitrary - Arbitrary marks are ones where the words themselves have dictionary definitions, but no actual relation to the class of goods and services being protected. Examples: Shell for gasoline, Apple for computers, Tide for laundry detergent.

Suggestive - Suggestive marks are marks that have some relation to a feature or quality of the goods and services being offered but are not directly descriptive of the good or service. A suggestive mark would require you to do some thinking to see the relationship, otherwise it would fall into the descriptive category. Examples: Sunmaid for raisins, Coppertone for suntan lotion, Jaguar or Mustang for cars, Playboy for a men's magazine.

Descriptive - Descriptive marks are exactly what you'd think they are. They describe the service or product being offered. They are often not permitted registration on the Principal Register but instead have to be included on the Supplemental Register (once it has been used in commerce for 5 years, it can be moved to the Principal Register). Often marks that include a first name or surname fall into this category. Other examples include: Vision Center for an eyeglass store, Jiffy Lube for a 15 minute oil change spot, Bob's Ice Cream Shoppe for an ice cream store.

Generic - Generic marks are, well, generic terms for the product or service being offered. Examples: Apple if you're selling apples, Soap if you're selling soap. Adding a descriptor will, however, change the classification to Descriptive.

Interestingly enough, companies fight very hard to keep their marks from becoming generic. If your mark becomes a household description of a class of products or services, you weaken the strength of even the strongest types of marks.

Examples of somemarks who spend a lot of time and money fighting to keep from becoming generic include: Scotch tape, Band Aids, Xerox, Google and Kleenex.

Picking a strong mark and keeping it strong are essential to the value of your intellectual property and, in turn, your brand and your business.

If you have more questions about how to create a strong mark and how to protect that mark once you have it, I'm always happy to discuss it. You can either ask me on Twitter (http://www.twitter.com/DeenaEsq) or fill out the contact form on my website (http://www.ebusinesslawgroup.com)

Do I HAVE to register my trademark?

It has come to my attention that seemingly a lot of trademark lawyers have been telling their clients that they "have" to register their trademark to protect it. Of course, federal registration is certainly helpful in protecting your mark.

But is is necessary?

The answer may surprise you, but it's not necessary to register your trademark with the United States Patent and Trademark Office (USPTO) to protect your mark against infringement.

Under U.S. law, you gain trademark protection once you have used the mark "in commerce". This is often referred to as a common law trademark. You can use the "TM" indication (or "SM" for a service mark) after your mark at any time after beginning to use it in commerce (though you can only use the ® mark once you have a registered mark with the USPTO).

So, why do people register their marks with the USPTO then?

Well, for one, common law trademarks have some very serious limitations.

First, common law trademarks are only good in the geographic area in which they've been used. So, if you have a chain of drugstores in New Jersey called "Moose Drugs", you'd only be protected in the market that you're working in.

If someone in Oregon opened a "Moose Drugs" in Oregon (assuming they had no knowledge of your chain of stores), that's fine. The only time that there'd be a problem is if the Oregon "Moose Drugs" went nationwide. They'd be prevented from entering the New Jersey market by your prior use of the mark, but that's all.

On the other hand, federal trademarks registered with the USPTO are protected nationally.

Second, common law trademarks are very hard to search for. There is no general databse of them (as there is for a federal or even a registered state mark). This means that it is far more likely that someone will unknowingly violate your mark. And chasing people off of your mark can get very expensive.

Because federal trademarks are contained in the federal database, innocent infringers are far less likely and there are, with any luck, far less people to sue to protect your mark.

Finally, there are rights that are available for federally registered trademarks that aren't available to common law marks. Other than the rights that I've mentioned above, these include:

* The right to trial in a federal court (which enables you to reach infringers in other states);

* The right to recover profits, costs, attorneys' fees and damages from infringement;

* In some cases, the right to recover treble (triple) damages;

* Prima facie proof that your mark is a valid mark and is not "confusingly similar" other marks;

* The right to have U.S. Customs block entry of any goods bearing an infringing mark; and

* After five years of registration, you gain an "incontestable" status on your mark, which eliminates almost any argument that you do not have exclusive rights to use the mark.

That's certainly worth the price of admission.

So, what do I advise my clients?

I advise them to register for a federal trademark if they can afford to do so (since I do flat fee registrations, it doesn't end up being particularly expensive).

But I let them know that it's not the end of the world if they don't. Because it's not.

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Any opinions are offered without knowledge of the specific law of your jurisdiction. No advice given here should be reasonably relied upon by you or any third party without consulting an attorney who is aware of all of the facts and law surrounding your situation. Any advice given here is not intended to create an attorney-client relationship in any way.