How to Get a Trademark
What’s a company without a trademark? It’s like having a name without a face. Trademarks are symbols that are used to identify and relate to a certain product or company. This is one effective way to set you apart from the rest of the businesses out there. Trademark registration can also be a form of strategic advertising if so used with the proper technique.
A registered trademark would give you exclusive rights to the mark you declared represents your goods and/or services.
What is a trademark?
You would often the symbols TM or ® after a name or logo, this simply means trademark registered. Aside from visual representations, there are other intellectual properties that fall under the concept of a trademark. These include:
As numerous ideas and concepts progress, there are ‘unconventional’ trademarks which may also include:
To give you a more concrete idea of what a trademark is, examples of which are the three-foil logo of Adidas and the LV monogram of Louis Vuitton. Even the turquoise colors of Heinz Baked Beans cans can only be exclusively used by H. J. Heinz Company. The shapes of Coca-cola bottles and even the brown color of its soda is a trademark that would set it apart from other similar soda products like Pepsi.
Why do you need a trademark registration?
A trademark registration would protect your business identity. It is a generally a public notice to declare your ownership of a specific mark that significantly stands for your company. A trademark registration is also a legal assumption that you are indeed the owner of the mark upon which full exclusive rights are be granted to you. You have the ability to take legal actions towards unauthorized use of your trademark. A registered trademark has a nationwide acceptance and thus registration with other countries would be easier. You can also use your trademark registration and present it to customs service to avoid infringement of foreign goods.
How to apply for a trademark registration
1. Trademark search
The first thing that you need to do to get your trademark registered is to go through the tedious trademark search. This may be the trickiest part of the process. Even before registering your trademark, you should know if it’s in any way similar to other trademarks. Otherwise, you would only be wasting your time since your application would be denied in the long run.
To check the existence of a particular trademark, you need to go to the United States Patent and Trademark Office (USPTO). If you cannot physically drop by their office, you can use the Trademark Electronic Search System(Tess), the official trademark search program of USPTO. The TESS is not actually foolproof, it may not show results of unregistered trademarks that may be protected by common law, as they would only have a database of registered trademarks. TESS may also be backed by a few weeks and would not show results for newly registered trademarks.
As an alternative, you can rely on other commercial services to help you with your trademark search. You can commission an online trademark search service or pay for a subscription for an online trademark database.
2. Where to get an application form
You can directly go to the USPTO physical office to file your application or use the Trademark Electronic Application System’s (TEAS) online application form. The TEAS feature online help and has a validation function. The online registration is available for everyone 24/7, with exceptions on 11pm Saturday â€“ 6am Sunday. Applicants would also receive instant notification and confirmation of their submission along with a serial number and a complete summary of their application.
In case you have no means to get internet access, another alternative is to drop by the Patent and Trademark Depository Library (PTDL), or you can also drop by your local library to access the USPTO website.
You can also call (800) 786-9199 to request for a hand copy of the application form to be mailed or hand-delivered to you. Upon filling out the form, send a copy to Commissioner for Trademarks at P.O. Box 1451 Alexandria, VA 22313-1451. Faxed application forms are unacceptable.
3. Filling out your application form
Here are the basic things that should be included in your application form:
â— applicant’s name â€“ a person, a company or a legal entity’s name who claims the ownership of the mark.
â— applicant’s address- registered address where USPTO can send their communication
â— the mark’s drawing â€“ a clear and comprehensible drawing of the mark. A mark’s drawing is further categorized into the following:
a. standard character â€“ combination of letters, numerals, punctuation, diacritical marks and/ or words without a particular font size, style or color. Examples of standard character trademarks include brand names and company slogans.
b. stylized/ special form- a standard character that includes a particular color or design element in addition to a standard character. Special forms may include logos and other images. Your drawing should be no bigger than 8 cm. by 8 cm.
c. colored drawing- if you wish to trademark a color along with a special form, you need to submit a claim that you are to use a particular color for your trademark. You should also write a statement that describes the color you want and where it would particularly be located in your trademark.
â— list of goods and services- you should clearly state the particular goods or service that you are identifying your trademark with.
â— basis of filing- the filing of trademark registration may be based on current commercial usage. This is when the mark is already in use to identify the goods and/or services you mentioned above. Another basis is for intent to use. Here, you should state a valid objective in using the mark to represent your goods and/or services.
When filling under ‘goods’ the trademark should appear on the products you sell, its containers or the displays that are linked to the goods. For ‘services’, trademarks should be used for advertising purposes, service and sales.
â— specimen- a tangible example of how the trademark is used or should be used to represent your goods and/or services. For example, you need to send an example of your trademark printed in a milk carton if you are selling ready-to-drink milk products. If you were to use the trademark for a travel agency, brochures, calling cards and other advertising materials would be needed.
â— signature- the person who should sign the application form for trademark registration should be the applicants themselves or the ones who are authorized to verify the application in their behalf. In some cases, attorney who legally represents the applicant can also sign the application.
As for online application, you can enter a symbol/s (a combination of letters, numbers, space, or special characters) that represents your signature. They should be enclosed with the forward slash. Example: /ian perez/
4. Trademark registration review
After passing your application for trademark registration, USPTO will review your case along with other examining lawyers. They would check if you completed the application form comprehensively and in a good manner.
The examining officers would particularly check on these things:
â— possible conflicting marks with other existing trademarks
â— a thorough evaluation of your application form
â— mark’s drawing
After the assessment, the examining attorney should state definite reasons why he denied or approved your trademark registration application. If there were a need for some corrections in your application, USPTO would try to get in touch with you at any of the contact details you mentioned in your application form. A response from you is urgently needed, if not, they would declare you application abandoned if you did not reply within the 6-month timeframe.
Understanding trademark infringement
Once you already have your trademark registered, you would own the rights of the said mark and you can sue other companies that use your trademark without proper consent. This is also the known as trademark infringement.
The use of the same trademarks can most likely cause consumer confusion. If for instance a buyer who wanted to buy a pair of Nike shoes may be thinking he is buying the original pair even if the Swoosh trademark is printed the other way around. Hormel Foods Corporation, trademark registrant of SPAM, has even been suing a lot of companies that have the word ‘spam’ as part of their company name or printed in consumer products even if it generally refers to ‘spam’ as in the computer-technical term for ‘unsolicited mail’.
There are a lot of factors as basis for trademark infringement. Some key arguments are the following:
— intent of the defendant
— resemblance of the two marks
— power of the mark over the market
— similarity of the goods endorsed
— actual evidence of consumer confusion
— the amount of caution a consumer can possibly do
— physical proximity of the two products in terms of retail sales
— the likeness of the marketing medium used