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Toledo, Ohio Businesses Use Cohn Legal for Trademark Services
Cohn Legal is a boutique legal firm that is focused on providing superior counsel to startups and entrepreneurs in Toledo, Ohio, across the United States and around the world. Think of us as your legal consigliere for all things related to trademarks, copyrights, and intellectual property.
Top Questions Toledo Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Toledo, Ohio, Can I Still Obtain a Federal Trademark?
This is an excellent question. Ultimately, to obtain a federal trademark, it must be used in “interstate-commerce” meaning that your services must be provided in at least two States. If you are presently only providing your services in Toledo, Ohio, we can simply file an Intent to Use application; The intent-to-use application allows the applicant to reserve the right to use the trademark once it is ready to be used in inter-state-commerce.
What is a trademark?
A trademark is a form of intellectual property that provides legal protection to any word, phrase, symbol, design, or combination thereof that distinguishes the source of goods or services of one party from those of others. Essentially, a trademark serves as a brand identifier, helping consumers to identify and differentiate products or services in the marketplace. By registering a trademark, individuals or businesses obtain exclusive rights to use that mark in connection with specific goods or services within the geographical area covered by the registration.
The main purpose of a trademark is to prevent consumer confusion and safeguard the reputation and goodwill of a brand. When a mark becomes associated with quality, reliability, or positive experiences, it creates brand recognition and loyalty among customers.
In legal terms, a trademark offers its owner the right to exclude others from using a similar mark that could potentially cause confusion among consumers. Trademarks play a crucial role in building brand equity and ensuring that consumers can make informed decisions about the products or services they are purchasing.
To qualify for trademark protection, a mark must be distinctive, meaning it should be unique and not merely descriptive of the goods or services it represents. Generic terms that describe the product or service cannot be registered as trademarks.
Registering a trademark is not mandatory, but it provides significant advantages and protections. Unregistered marks may still have some limited common law protections, but these are generally more limited in scope and may vary from one jurisdiction to another.
Overall, a trademark is a valuable asset for businesses, as it helps create brand identity, prevents others from using similar marks, and adds value to the products or services associated with it. If someone infringes on a registered trademark, the owner can take legal action to enforce their rights and seek damages or injunctions against the infringing party.
Is there a difference between a trademark and service mark?
Yes, there is a difference between a trademark and a service mark, although the terms are often used interchangeably. Trademarks are used to identify and distinguish goods (physical products) offered in commerce, such as electronics, clothing, or food products. On the other hand, service marks are used to identify and distinguish services provided by a business, such as legal services, consulting, or restaurant services.
To clarify, the term “trademark” is typically used when referring to marks associated with products, while “service mark” is used when referring to marks associated with services. However, from a legal standpoint, the protections and registration processes for trademarks and service marks are virtually identical.
The United States Patent and Trademark Office (USPTO) recognizes both trademarks and service marks under the broader category of “marks.” The process of registering a service mark is similar to that of registering a trademark. Both trademarks and service marks provide their owners with the exclusive right to use the mark in connection with specific goods or services.
It’s essential for businesses to identify whether they need trademark protection for their products or service mark protection for the services they offer. Often, businesses that provide both products and services may need to secure both trademark and service mark registrations to fully protect their brand identity.
Overall, while there is a distinction between trademarks and service marks in their use and application, their fundamental purpose is the same: to identify and distinguish the source of goods and services and protect the brand’s reputation in the marketplace.
What’s the difference between the ® and TM symbols?
The ® symbol and the TM symbol serve different purposes and indicate different trademark status:
- TM Symbol: The TM symbol is used to indicate that a word, phrase, logo, or other mark is being used as a trademark, but it is not registered with the relevant trademark authority. It is commonly used to put the public on notice that the owner considers the mark to be their trademark and that they assert certain rights over it. Using the TM symbol does not provide the same level of legal protection as a registered trademark, but it can still offer some level of protection under common law.
- ® Symbol: The ® symbol, on the other hand, is used to indicate that a trademark has been registered with the appropriate government trademark office. In the United States, this would be the United States Patent and Trademark Office (USPTO). Once a trademark is successfully registered, the owner gains additional legal protections and benefits. These may include the presumption of ownership and the exclusive right to use the mark nationwide for the goods or services specified in the registration. Unauthorized use of a registered trademark may lead to significant legal consequences, such as damages and injunctive relief.
Using the ® symbol without obtaining proper registration is illegal and could result in penalties. It’s essential for trademark owners to apply the correct symbol to their mark to ensure proper notice to the public and avoid potential legal issues.
Registering a trademark involves filing an application with the relevant trademark authority, which typically includes a review process to determine if the mark meets the necessary requirements for registration. Once registered, the trademark owner can use the ® symbol to indicate the mark’s registered status.
In summary, the TM symbol indicates that a mark is being used as an unregistered trademark, while the ® symbol indicates that a mark has been successfully registered with the appropriate trademark office and enjoys the full legal protections that come with registration.
How can I determine if a trademark is available?
Before adopting and using a trademark, it’s essential to conduct a comprehensive search to determine if the mark is available for use and registration. This search is crucial to avoid potential legal conflicts and infringement issues down the road. Here are some steps to help you determine the availability of a trademark:
- Preliminary Search: Start with a preliminary search on search engines and social media platforms to check if the mark is already in use by others. While this step is not exhaustive, it can give you some initial insights.
- USPTO Trademark Database: Conduct a search in the United States Patent and Trademark Office (USPTO) database to check if there are any registered trademarks or pending applications that are similar to your proposed mark. The USPTO’s online search system, TESS (Trademark Electronic Search System), allows you to search for existing marks using keywords and classifications.
- Common Law Search: Keep in mind that trademark rights can also be established through common law use, even without formal registration. Therefore, it’s important to search for unregistered but potentially conflicting marks that may have acquired common law rights.
- Professional Trademark Search: Consider hiring a professional trademark attorney or a specialized search firm to conduct a more comprehensive and detailed search. These professionals have access to specialized databases and can perform in-depth searches, increasing the likelihood of identifying potential conflicts.
- Trademark Clearance Search Report: If you engage a professional to conduct the search, they will provide you with a trademark clearance search report. This report will outline existing trademarks that may be similar to yours and provide an assessment of potential risks and conflicts.
- Analyze Search Results: Review the search results and assess whether there are any marks that are identical or similar to your proposed trademark in the relevant industry or category. If there are potentially conflicting marks, consider whether there is a likelihood of consumer confusion. This analysis will help you make an informed decision about moving forward with the trademark.
Remember that the goal of a trademark search is to identify potential conflicts, but it does not guarantee absolute certainty that the mark is available. Even if no identical marks are found, there may still be similar marks that could pose a risk. Therefore, it’s advisable to seek the guidance of a trademark attorney who can interpret the search results, provide legal advice, and assist with the registration process if the mark is deemed available for use and registration.
Do I need to sell a product or service to obtain a registered trademark?
No, you do not necessarily need to be selling a product or service at the time of applying for a registered trademark. In many jurisdictions, including the United States, trademark registration is not contingent upon current commercial use. Instead, the focus is on the “intent to use” the mark in commerce.
In the United States, you can file what is known as an “Intent-to-Use” (ITU) application with the United States Patent and Trademark Office (USPTO). This type of application allows you to secure a priority filing date for your trademark before you have started using it in commerce.
The ITU application requires a bona fide intention to use the mark in commerce in the future. You must have a genuine plan to use the mark on the specified goods or services, and you must provide a sworn statement attesting to this intention. Additionally, once the ITU application is approved, you will need to file a “Statement of Use” to show that the mark is now in use on the goods or services listed in the application. This Statement of Use must be filed within a specific timeframe after the USPTO approves the ITU application.
By filing an ITU application, you secure your priority and establish a legal claim to the trademark, even if you haven’t started using it yet. This can be particularly valuable when you are in the early stages of developing a brand or product and want to protect your trademark before launching it in the market.
It’s important to note that the ITU application process comes with certain responsibilities and deadlines, so it’s advisable to work with a trademark attorney to ensure compliance with all requirements and maximize the benefits of the registration process.
In summary, you do not need to be currently selling a product or service to apply for a registered trademark. An “Intent-to-Use” application allows you to secure the trademark’s priority before actual use in commerce, provided you have a genuine intention to use the mark in connection with specific goods or services in the future.
If I only provide my services locally, can I still obtain a federal trademark?
Yes, you can still obtain a federal trademark in the United States even if you only provide your services locally. The scope of protection for a federal trademark extends beyond your immediate local area and covers the entire United States. Federal registration offers several benefits, regardless of whether your services are limited to a specific geographic region or are offered nationwide.
When you register your service mark with the United States Patent and Trademark Office (USPTO), you gain exclusive rights to use the mark in connection with the specified services throughout the entire country. This means that even if your services are currently localized, you are preventing others from using a similar mark anywhere in the United States in connection with related services.
There are several reasons why obtaining a federal trademark registration is advantageous, even for locally provided services:
- Expansion Plans: If you have plans to expand your services to other regions or states in the future, having a federal trademark registration in place ensures that your brand is protected in those areas as well.
- Legal Protection: Federal registration provides a stronger legal foundation for enforcing your trademark rights. It gives you the ability to bring an infringement lawsuit in federal court, which often leads to more substantial remedies and damages.
- Brand Recognition: A federal trademark registration increases the credibility and recognition of your brand, even if you currently operate on a local scale. It signals to consumers that your business is serious about protecting its intellectual property and providing quality services.
- Licensing and Franchising: If you decide to license your brand or franchise your services in the future, a federal trademark registration enhances the value and marketability of your intellectual property.
- Online Presence: In the digital age, having a federal trademark registration can help protect your brand from potential online infringements and counterfeiting on a national level.
When applying for a federal trademark, you will need to specify the goods or services that the mark will be associated with. It’s essential to accurately identify the services you provide, even if they are currently limited to a specific geographic area. Working with a trademark attorney can help ensure that your application is properly prepared and increases the chances of a successful registration.
In conclusion, obtaining a federal trademark registration is beneficial, regardless of whether your services are localized or have broader aspirations. It provides significant advantages and protections, both now and for the future growth of your business.
What should I register first: the name of my business or my brand logo?
When it comes to trademark registration, it’s generally recommended to prioritize registering the name of your business over your brand logo, especially if your business name serves as a primary identifier for your products or services. Registering your business name as a trademark provides broader protection since it covers the use of the name in various contexts, including on products, marketing materials, and advertising.
Here are some reasons why registering your business name as a trademark first is advantageous:
- Brand Identity: Your business name is often the core element of your brand identity. Registering it as a trademark helps create a strong association between your business and the name, enhancing your brand recognition and value.
- Comprehensive Protection: A trademark registration for your business name extends to the use of the name in connection with the goods or services you offer. This protection is not limited to specific font styles, colors, or design elements, giving you more flexibility in how you present your brand.
- Flexibility for Future Logos: By securing trademark protection for your business name first, you can then incorporate various logos or design elements into your branding without needing to register each variation separately. As long as the logo contains the registered business name, it will be covered under the existing trademark registration.
- Logo Dependence on Business Name: In many cases, the brand logo is closely tied to the business name. If the business name is not protected, others could potentially use a similar name and create a logo that could lead to confusion among consumers.
- Early Priority Date: Registering your business name establishes an early priority date for your trademark rights. This can be crucial in cases of potential conflicts with later applicants for similar marks.
However, it’s important to note that both your business name and brand logo can be protected under trademark law, and there are instances where registering your logo first may be more appropriate. For example, if your logo is highly distinctive and plays a more significant role in representing your brand than your business name, it may be beneficial to prioritize the logo’s registration.
Ultimately, the best approach may depend on the specific circumstances of your business and branding strategy. It is advisable to consult with a trademark attorney who can assess your individual situation, guide you on the best course of action, and ensure that your trademark registration aligns with your business goals and objectives.
Should I wait until my business is up and running before registering my trademark?
Any trademark attorney will tell you that trademark registration one of the first things you should while you’re planning on starting your business. There’s no need to wait until your business is up and running.
If you wait until your business is established to register your mark, you may find that you’re infringing on an existing trademark after you’ve already spent time and money on logo design, marketing material, a website, store signage, etc. You want to register your mark early on so you know that you can proceed with branding and marketing with confidence.
What is a fanciful trademark?
A fanciful trademark is a type of trademark that derives its distinctiveness from being a completely made-up or coined term with no dictionary or common meaning. Fanciful trademarks are considered the strongest and most protectable category of trademarks under trademark law.
Unlike descriptive or generic marks, which are weak and difficult to register, fanciful marks have a high level of inherent distinctiveness because they are unique and have no association with the goods or services they represent. Since fanciful marks are invented solely for the purpose of being a trademark, they are inherently strong indicators of the source of products or services, making them easier to enforce against potential infringers.
Examples of fanciful trademarks include coined words like “Xerox” for photocopiers, “Kodak” for photography equipment, or “Google” for internet search services. These terms had no meaning before they were used as trademarks and were intentionally created to function solely as brand identifiers.
The distinctiveness of fanciful trademarks makes them eligible for immediate registration with the United States Patent and Trademark Office (USPTO) and other trademark authorities. They do not require evidence of secondary meaning (i.e., acquired distinctiveness through use) as some descriptive marks might need to acquire registration.
Fanciful marks enjoy a broad scope of protection since they are considered strong and unique in connection with specific goods or services. This protection applies not only to the exact coined term but also to variations or stylizations that are similar enough to cause consumer confusion.
When selecting a trademark for your business, using a fanciful mark can be an excellent strategy to ensure that your brand stands out in the marketplace and is easily distinguishable from competitors. However, inventing a fanciful mark requires careful consideration and creativity to create a term that is both distinctive and memorable.
Before adopting a fanciful trademark, it’s essential to conduct a comprehensive trademark search to ensure that the mark is available for use and registration. Additionally, working with a trademark attorney can help ensure that your chosen mark meets the legal requirements for trademark protection and is properly registered, providing you with the strongest possible protection for your brand identity.
What is TEAS?
TEAS stands for the Trademark Electronic Application System, an online platform provided by the United States Patent and Trademark Office (USPTO) to facilitate the electronic filing of trademark applications and related documents. TEAS offers a more efficient and convenient way for applicants to apply for trademark registration and manage their trademark-related matters.
TEAS provides several different application forms, each tailored to specific types of trademark applications and filings. The various forms available on TEAS include:
- TEAS Plus: This form offers a reduced filing fee compared to other options but requires strict adherence to specific requirements, such as using pre-approved identifications of goods and services and agreeing to communicate with the USPTO electronically.
- TEAS Reduced Fee (TEAS RF): Similar to TEAS Plus, TEAS RF offers a reduced filing fee but allows for a broader range of identifications of goods and services, making it a more flexible option for applicants.
- TEAS Regular: This form has a higher filing fee compared to TEAS Plus and TEAS RF but allows for the broadest range of goods and services identifications and provides more flexibility in the application process.
- TEAS Renewal: Used for filing trademark renewal applications.
- TEAS Change of Owner’s Address: Used to update the owner’s address information.
- TEAS Response to Office Action: Used to respond to any non-final or final office actions issued by the USPTO during the examination of a trademark application.
Using TEAS offers several benefits, including:
– Online Convenience: TEAS allows applicants to file their trademark applications and related documents electronically from anywhere with internet access, making the process more accessible and efficient.
– Immediate Filing Date: Upon successful submission, TEAS provides an immediate filing date for the application, securing the applicant’s priority over potentially conflicting marks filed later.
– Faster Processing: Electronic filing through TEAS often results in faster processing times for trademark applications and related documents.
– Real-Time Updates: Applicants can receive real-time updates on the status of their applications and correspondence from the USPTO through the TEAS system.
– Electronic Payment: TEAS allows secure electronic payment of filing fees, making the process more convenient and reducing paperwork.
It’s important to note that while TEAS simplifies the application process, seeking trademark protection can still be complex. Therefore, it is advisable to seek the guidance of a trademark attorney to ensure that your application is accurately completed, and your trademark rights are adequately protected.
What is the Official Gazette?
The Official Gazette (OG) is the official publication of the USPTO. It comes out weekly and includes information about trademarks that have been approved. Once a trademark is published in the Official Gazette, anyone has 30 days to come forward and oppose the trademark. If no one opposes the mark, then it is officially registered.
Once your mark is registered, it’s a good idea to review the Official Gazette to ensure no one is trying to register a mark that is similar to yours.
What is the USPTO?
USPTO stands for the United States Patent and Trademark Office. The USPTO maintains records of existing and pending trademarks. When you are ready to register your trademark, it’s the USPTO that reviews your application and approves or denies it.
Keep in mind, however, that the USPTO does not enforce trademark rights. It is your responsibility as the trademark owner to protect your trademark against infringement.
How does registering my trademark with the USPTO protect my business?
Registering your trademark is actually one of the most important ways to protect your business and your brand. That’s because, once you register your trademark with the USPTO, your trademark is protected from infringement in all 50 states. If there’s a competitor or a third party using your trademark or something similar, you can take legal action against them.
Am I required to hire a U.S.-licensed attorney to represent me at the USPTO?
If you are a trademark applicant or registrant who lives in a country outside of the United States, then you must be represented at the USPTO by an attorney who is licensed to practice law in the United States.
If you are a trademark applicant or registrant who lives in the United States or its territories, you actually don’t need to be represented by an attorney. However, the USPTO strongly recommends that you do hire a U.S.-licensed attorney who specializes in trademark law to ensure you are always acting in your own best interests.
How long does the trademark application process take?
The duration of the trademark application process can vary depending on several factors, including the type of application, the complexity of the mark, and the workload of the trademark office. In the United States, the average timeline for a trademark application from filing to registration can range from several months to over a year or more. Here’s a general overview of the trademark application process and the factors that can impact its duration:
- Initial Application Review: After submitting the trademark application through TEAS or any other filing method, the United States Patent and Trademark Office (USPTO) conducts an initial review to ensure the application meets the filing requirements. This initial review typically takes a few weeks.
- Publication for Opposition (If Applicable): If the application is based on intent-to-use, the mark will be published for opposition in the Official Gazette after it passes the initial review. This publication period allows third parties to oppose the registration if they believe the mark may cause confusion with their existing marks. The opposition period usually lasts 30 days, but it can be extended if an opposition is filed.
- Examination and Response to Office Actions: If no opposition is filed or if the application is based on actual use, the USPTO will examine the application to determine if the mark meets all statutory requirements. If the examining attorney finds any issues or deficiencies, they will issue an Office Action detailing the concerns that must be addressed. The applicant has six months to respond to the Office Action, although extensions of time may be available in certain cases.
- Registration or Further Action: If the examining attorney is satisfied with the applicant’s response to the Office Action, the mark will be approved for registration. If no further issues arise, the USPTO will issue a Notice of Allowance. The applicant then has six months to submit a Statement of Use (for intent-to-use applications) or a Request for Extension of Time to File a Statement of Use if additional time is needed to begin using the mark in commerce.
- Trademark Registration: Once the USPTO receives and approves the Statement of Use, or if the mark was based on actual use, the USPTO will register the trademark. The entire registration process, from filing the application to receiving the registration certificate, typically takes several months to a year or more.
It’s important to note that the timeline can be extended if there are complexities or delays during the examination process. Additionally, if there are legal challenges or oppositions filed by third parties, the registration process can take longer.
To navigate the trademark application process efficiently and ensure your rights are protected, it is advisable to work with an experienced trademark attorney who can guide you through the process, address any issues that arise, and maximize the chances of a successful registration.
How long does a trademark last?
Once a trademark is registered, it can last indefinitely as long as it continues to be used in commerce and the required maintenance filings are timely submitted. Unlike patents or copyrights, which have limited terms of protection, trademarks can potentially be renewed and maintained indefinitely, providing ongoing protection for the brand.
In the United States, a trademark registration is initially valid for ten years from the date of registration. After the initial ten-year period, trademark owners can renew their registrations indefinitely in successive ten-year increments. To keep the registration active, trademark owners must file the necessary maintenance documents and fees with the United States Patent and Trademark Office (USPTO) at the appropriate times.
The USPTO requires trademark owners to file a Section 8 Declaration of Continued Use between the fifth and sixth year after registration and every ten years thereafter. Additionally, trademark owners must also submit a Section 9 Application for Renewal to maintain the registration beyond the initial ten-year period and every ten years thereafter.
It is essential for trademark owners to be vigilant about these maintenance filings to avoid unintentional abandonment of their trademark rights. Failure to file the required maintenance documents within the specified timeframes may result in the cancellation of the trademark registration.
It’s important to note that trademark protection is contingent upon the continued use of the mark in commerce. If a trademark is not actively used for a certain period, it may become vulnerable to cancellation due to non-use.
Furthermore, it’s vital to protect the trademark from becoming generic over time. If a mark loses its distinctiveness and becomes commonly used to describe the type of goods or services it represents, it can lose its trademark protection. This is known as genericide, and famous examples include “aspirin” and “escalator.”
To maintain the longevity and strength of a trademark, consistent use in commerce, diligent monitoring, and timely maintenance filings are crucial. Consulting with a trademark attorney can provide valuable guidance on the ongoing requirements and best practices for maintaining a strong and protected trademark over the long term.
Can I use a trademark without registering it?
Yes, you can use a trademark without registering it. Trademark rights in the United States are primarily based on “common law” use, which means that using a mark in commerce automatically grants you some level of trademark protection, even without formal registration with the United States Patent and Trademark Office (USPTO).
When you use a mark in connection with specific goods or services, you acquire common law trademark rights in the geographic area where the mark is used. These rights generally give you the ability to prevent others from using a confusingly similar mark in the same area and in connection with related goods or services.
While common law rights offer some level of protection, they are more limited compared to the benefits of federal trademark registration. Some key points to consider regarding common law trademark rights are:
- Geographic Limitation: Common law rights are geographically limited to the areas where the mark is used in commerce. If you only use the mark locally, your protection will be limited to that specific region.
- Limited Scope: Common law rights do not provide nationwide protection, which means someone else could use the same or a similar mark in a different geographic area.
- Evidence of Ownership: Registering a trademark with the USPTO provides concrete evidence of ownership, making it easier to enforce your rights against infringers.
- Presumption of Validity: Federal trademark registration creates a presumption of the mark’s validity and ownership, making it easier to pursue legal action against infringers.
- Incontestability: After a certain period of continuous and exclusive use (usually five years after registration), a federally registered trademark can become “incontestable,” further strengthening the protection against certain legal challenges.
- Enhanced Remedies: Federal registration allows for stronger legal remedies in the event of infringement, including the possibility of recovering treble damages and attorneys’ fees.
Given the advantages of federal trademark registration, many businesses choose to pursue registration to obtain more comprehensive and robust protection for their marks. However, registering a trademark is not mandatory, and some businesses may opt to rely on common law rights if their branding efforts are limited to a specific geographic area and they are not concerned about potential infringement beyond that region.
Whether you decide to rely on common law rights or seek federal registration, it is crucial to conduct a thorough trademark search to ensure that the mark is available for use and registration, and to monitor for potential infringement to protect your brand’s integrity and reputation. Working with a trademark attorney can provide valuable guidance throughout this process and help you make informed decisions about the best strategy for your business.
When should I hire a trademark lawyer?
Hiring a trademark lawyer is a wise decision at various stages of the trademark process to ensure that your rights are properly protected and to avoid potential legal pitfalls. Here are some key milestones when it’s beneficial to engage the services of a trademark attorney:
- Trademark Search and Clearance: Before adopting a new trademark or attempting to register an existing one, conducting a comprehensive trademark search is crucial to identify potential conflicts with existing marks. A trademark attorney can perform a thorough search, interpret the results, and advise you on the availability and registrability of your desired mark.
- Trademark Application: Preparing and filing a trademark application can be complex, and any errors or omissions could lead to delays or refusals from the United States Patent and Trademark Office (USPTO). An experienced trademark lawyer can help you draft a strong application, select the appropriate goods or services classifications, and navigate the intricacies of the application process.
- Office Actions and Responses: If the USPTO issues an Office Action raising concerns or requiring additional information, a trademark attorney can assist you in crafting a persuasive response to address the issues effectively and maximize the chances of successful registration.
- Oppositions and Disputes: If someone opposes your trademark application or if you need to enforce your trademark rights against potential infringers, a trademark lawyer can handle opposition proceedings, negotiations, and potential litigation.
- International Trademark Protection: If you plan to expand your business internationally, a trademark attorney can guide you through the process of obtaining trademark protection in other countries and ensure compliance with each country’s unique registration requirements.
- Trademark Portfolio Management: If you have multiple trademarks, a trademark attorney can help you develop and implement a comprehensive strategy for managing and maintaining your trademark portfolio effectively.
- Trademark Renewals and Maintenance: Trademark registrations require periodic maintenance filings to keep them active and enforceable. A trademark attorney can assist with timely renewals and ensure that your trademark rights remain intact.
- Trademark Licensing and Assignments: If you intend to license or transfer your trademark rights to others, a trademark attorney can draft and review licensing agreements or assignment documents to protect your interests.
By involving a trademark attorney at these critical stages, you can avoid potential legal pitfalls, maximize the protection of your trademark rights, and make informed decisions that align with your business objectives.
It’s worth noting that while hiring a trademark attorney is not mandatory, their expertise can significantly streamline the process, reduce the likelihood of complications, and provide you with valuable legal guidance and protection throughout the life of your trademark. As trademarks are valuable assets to businesses, investing in professional trademark services is a prudent decision to safeguard your brand and intellectual property.
What is a trademark’s specimen?
A trademark specimen, also known as a specimen of use, is a sample or example of how your trademark is being used in commerce on the goods or in connection with the services you provide. When you file a trademark application with the United States Patent and Trademark Office (USPTO), you are required to submit a proper specimen to demonstrate that the mark is being used in a lawful and bona fide manner.
The purpose of the specimen is to show that the trademark is not merely an idea or intent to use the mark, but that it is actually being used in commerce as a source identifier for the goods or services listed in the application. This requirement ensures that the USPTO grants trademark protection to marks that are genuinely used in the marketplace, rather than those that are merely proposed but never used.
For goods (products), acceptable specimens may include labels, tags, packaging, or displays that bear the mark and are affixed to the goods themselves or their containers. For example, if you are seeking trademark protection for a clothing brand, a specimen could be a hang tag displaying the brand name attached to a shirt.
For services, specimens can include advertising materials, brochures, website screenshots, or photographs showing the mark in connection with the services offered. For instance, if you are providing legal services, a specimen could be a brochure or a webpage that advertises your legal services using the trademark.
It’s crucial to submit an acceptable specimen that accurately reflects how the mark is being used in commerce. The USPTO is stringent in its examination of specimens to ensure compliance with the law and to prevent improper registrations.
Submitting an inadequate specimen can result in the USPTO issuing an Office Action requesting a proper specimen or even refusing the trademark application altogether. Therefore, it’s essential to work with a trademark attorney who can guide you on selecting and preparing the appropriate specimen to increase the likelihood of a successful trademark registration.
In summary, a trademark specimen is a tangible representation of how your mark is being used in commerce. Providing a valid and accurate specimen is a crucial part of the trademark application process, demonstrating that the mark is being used as intended to identify the source of goods or services in the marketplace.
Can I request an expedited approval of my trademark registration?
Yes, it is possible to request an expedited or accelerated examination of your trademark application under certain circumstances. In the United States, the United States Patent and Trademark Office (USPTO) offers an expedited review option called the “TEAS Plus with a Request for Expedited Examination” program, which is also known as the “TEAS RF” program.
To qualify for expedited examination, the application must meet specific requirements and criteria set by the USPTO. Here are the key eligibility requirements for the TEAS RF program:
- TEAS Plus Application: You must file the trademark application using the TEAS Plus form, which offers a reduced filing fee compared to other filing options. The TEAS Plus form requires you to select pre-approved identifications of goods and services and agree to communicate with the USPTO electronically.
- TEAS RF Fee: In addition to the regular filing fee, you must pay an additional fee for the expedited examination request.
- Expedited Criteria: You must provide a statement explaining the reason for the expedited request and meet one of the following criteria:
- Pending Lawsuit: There is a pending lawsuit regarding the mark or a related mark.
- Special Need: There is a special need for expedited examination due to factors like the applicant’s age or health, or a potential infringement concern.
- Senior Citizen: The applicant is 65 years of age or older.
- Optional Response: Office Action: If the USPTO issues an Office Action that requires a response, you have the option to request expedited examination of the response as well. However, this is not mandatory.
It’s important to note that expedited examination does not guarantee immediate approval of the trademark registration. The expedited process simply accelerates the examination timeline, which typically results in a more rapid initial examination and potential resolution of any issues identified by the USPTO.
If the USPTO accepts the expedited request and the application meets all other requirements, the examination process may be completed within a few months. However, the exact timeline can still vary depending on the complexity of the application and the workload of the USPTO.
It’s advisable to consult with a trademark attorney before requesting expedited examination to ensure that your application qualifies for the program and to maximize the chances of a successful and expedited registration process. An attorney can also assist with addressing any potential issues that may arise during the examination process and guide you through the expedited application process effectively.
Can I trademark a phrase?
Yes, you can trademark a phrase as long as it meets the requirements for trademark protection. In general, phrases are considered to be one category of trademarks known as “slogan marks” or “taglines.” To be eligible for trademark registration, a phrase must be distinctive, non-generic, and used in commerce to identify and distinguish your goods or services from those of others.
To assess whether your phrase is eligible for trademark protection, consider the following criteria:
- Distinctiveness: The phrase should be unique and distinctive, meaning it does not describe the goods or services directly. Fanciful, arbitrary, or suggestive phrases are generally considered more distinctive and easier to register than merely descriptive or generic phrases.
– Fanciful: Coined terms with no dictionary meaning, like “Xerox” for photocopying services.
– Arbitrary: Common words used in an unrelated context, like “Apple” for computers.
– Suggestive: Phrases that suggest a quality or characteristic of the goods or services, but require some imagination or thought to connect them, like “Netflix and Chill” for online entertainment services.
- Non-Generic: A phrase that is generic or commonly used to refer to the goods or services themselves cannot be trademarked. For example, the phrase “Delicious Burgers” for a restaurant selling burgers would be considered generic and not eligible for trademark protection.
- Actual Use in Commerce: To apply for federal trademark registration in the United States, you must demonstrate actual use of the phrase in commerce. This means using the phrase in connection with the sale of goods or the provision of services across state lines.
- Distinctiveness in the Marketplace: Even if your phrase meets the distinctiveness requirements, it must also be distinctive in the context of the marketplace where it will be used. If the phrase is already widely used or has become a common expression, it may be challenging to secure trademark protection.
- No Conflicting Marks: Before filing your trademark application, it’s crucial to conduct a comprehensive search to ensure that your phrase is not already in use by another business in a related field. A trademark attorney can assist with the search and assess potential risks of confusion or infringement.
If your phrase satisfies these requirements and is distinctive enough to function as a source identifier for your goods or services, you can proceed with the trademark application process. Registering your phrase as a trademark provides you with additional legal protection and enforcement rights against potential infringers, as well as national recognition of your rights as the trademark owner.
Can I trademark a logo?
Yes, you can trademark a logo as long as it meets the requirements for trademark protection. A logo is a type of trademark that consists of a distinctive design, symbol, or artwork used to identify and distinguish the source of goods or services. To be eligible for trademark registration, a logo must be unique, non-generic, and used in commerce to represent your brand.
Here are the key considerations for trademarking a logo:
- Distinctiveness: Like other types of trademarks, a logo must be distinctive and capable of identifying the source of goods or services. The more unique and creative the logo, the more likely it is to receive trademark protection. Fanciful, arbitrary, or suggestive logos are generally considered more distinctive and easier to register than logos that are merely descriptive or generic.
– Fanciful: Completely original designs with no prior meaning or association, such as the Nike “Swoosh.”
– Arbitrary: Common symbols used in an unrelated context, like the Apple logo for computers.
– Suggestive: Logos that suggest a quality or characteristic of the goods or services but require some imagination or thought to connect them, like the Amazon logo with an arrow pointing from “A” to “Z,” indicating a wide range of products.
- Non-Generic: A logo that is generic or commonly used to represent the goods or services themselves cannot be trademarked. The logo must be distinctive enough to set your brand apart from others in the marketplace.
- Actual Use in Commerce: To apply for federal trademark registration in the United States, you must demonstrate actual use of the logo in commerce. This means using the logo on products or in connection with the provision of services across state lines.
- Distinctiveness in the Marketplace: Even if your logo meets the distinctiveness requirements, it must also be distinctive in the context of the marketplace where it will be used. If the logo is already widely used or resembles other logos in the same industry, it may be challenging to secure trademark protection.
- Design Elements: A logo can include various design elements, such as words, letters, colors, shapes, or images. The logo as a whole, including its individual elements, should be distinctive and unique to be eligible for trademark protection.
As with any trademark application, conducting a comprehensive search to ensure the logo is not already in use by another business in a related field is essential. A trademark attorney can assist with the search and assess potential risks of confusion or infringement.
Registering your logo as a trademark provides you with additional legal protection and enforcement rights against potential infringers. It also establishes your ownership and exclusive rights to use the logo in connection with the specified goods or services, helping to build and protect your brand identity.
Can I trademark a color?
Yes, it is possible to trademark a color under certain circumstances. However, obtaining a trademark for a single color can be more challenging than trademarking other types of marks, such as words, logos, or slogans. Generally, color marks are considered to be inherently weak, and acquiring trademark protection for a single color requires demonstrating that the color has acquired “secondary meaning” in the minds of consumers.
To successfully trademark a single color, you must show that the color has become distinctive and serves as a source identifier for your goods or services, rather than merely being a decorative or functional element.
Here are some key considerations for trademarking a single color:
- Distinctiveness and Secondary Meaning: You must provide evidence that consumers have come to associate the specific color with your brand or product. This is known as “secondary meaning” or “acquired distinctiveness.” This evidence typically includes extensive and long-term use of the color in commerce, advertising, and marketing efforts.
- Non-Functional: The color cannot serve a primarily functional purpose in the industry or be commonly used by competitors for the same type of goods or services. For example, if a certain color is commonly associated with a particular product or has a functional purpose (e.g., green for vegetables), it may not be eligible for trademark protection.
- Distinctiveness in the Marketplace: The color must be unique and distinctive in the context of the marketplace where it will be used. If the color is commonly used by other businesses in the same industry, it may be challenging to demonstrate that it has acquired secondary meaning.
- Specific Identification: Your application must clearly define the color and its specific shade using widely recognized color identification systems, such as Pantone or RGB values, to ensure clarity and precision in the trademark registration.
- Evidence of Use: When filing a trademark application for a color, you must provide sufficient evidence of the color’s extensive use in connection with the specified goods or services.
It’s important to note that obtaining a trademark for a single color can be a complex and lengthy process due to the need to demonstrate secondary meaning and distinctiveness. As such, it is advisable to work with a trademark attorney who can help gather the necessary evidence, craft a persuasive application, and navigate the challenges associated with color trademarks.
In certain cases, some well-known brands have successfully obtained trademark protection for specific colors. For example, the color Tiffany Blue® (Pantone 1837) is a registered trademark of Tiffany & Co. for jewelry boxes and packaging. However, each application is assessed on its individual merits, and the strength of the evidence provided will be critical in determining the success of the color trademark registration.
Can I transfer my trademark to someone else?
Yes, you can transfer your trademark to someone else through a process known as trademark assignment. Trademark assignment involves the transfer of all rights, title, and interest in the trademark from one party (the assignor) to another party (the assignee).
The assignment of a trademark must be done in writing and should include specific details about the trademark being transferred, the parties involved, the effective date of the transfer, and any consideration (payment or other value) exchanged between the parties.
Here are the key steps involved in transferring a trademark:
- Drafting the Assignment Agreement: The assignor and assignee must enter into a formal written agreement that outlines the terms and conditions of the trademark transfer. The agreement should clearly state the mark being assigned, the scope of the rights transferred, and any limitations or restrictions, if applicable.
- Recordation with the USPTO: While recording the trademark assignment with the United States Patent and Trademark Office (USPTO) is not mandatory, it is highly advisable. Recording the assignment with the USPTO provides public notice of the transfer and creates a legal record of the assignment. This step also ensures that the assignee’s name appears as the new owner of the trademark on the USPTO’s official records.
- Maintaining Use and Quality Control: Even after the transfer, the assignee must maintain proper use of the trademark and ensure that the quality of the goods or services associated with the mark meets the standards set by the USPTO. Failure to do so can result in the cancellation of the mark.
- Updating Business Records: Both the assignor and assignee should update their internal business records to reflect the transfer of ownership. This includes updating contracts, licenses, and other agreements that reference the trademark.
It’s important to note that not all trademark assignments are valid. For example, if the trademark is involved in ongoing litigation or disputes, the assignment may be subject to legal restrictions. Additionally, an assignment that results in confusion with other trademarks or violates antitrust laws may be deemed invalid.
To ensure a smooth and legally valid trademark assignment, it is recommended to seek the assistance of a trademark attorney. An attorney can draft the assignment agreement, guide you through the necessary steps, and ensure compliance with all legal requirements and regulations governing trademark transfers. By working with a legal professional, you can safeguard your rights and protect the integrity of your trademark during the assignment process.
Can I license my trademark to others?
Yes, you can license your trademark to others through a trademark licensing agreement. Trademark licensing allows you, as the trademark owner (licensor), to grant permission to another party (licensee) to use your trademark in connection with specific goods or services and under certain conditions.
Trademark licensing can be a beneficial business strategy as it allows you to expand the reach of your brand, enter new markets, generate additional revenue streams, or strengthen your brand presence without directly engaging in all aspects of product distribution or service provision.
Here are some key points to consider when licensing your trademark:
- Clear Terms and Conditions: The trademark licensing agreement should clearly outline the terms and conditions of the license, including the scope of the license (what goods or services the licensee can use the mark for), the geographic area of use, the duration of the license, quality control provisions, and any restrictions or limitations.
- Quality Control: As the licensor, you have a legal obligation to maintain quality control over the goods or services provided under the licensed mark. This ensures that the goodwill and reputation associated with your trademark are upheld. Quality control provisions in the agreement should outline the standards the licensee must meet.
- Registered vs. Unregistered Marks: Both registered and unregistered trademarks can be licensed, but having a federally registered trademark provides stronger legal protection for your brand and can be more appealing to potential licensees.
- Consideration (Compensation): In most cases, licensors receive compensation from licensees for the use of their trademark. This compensation can be in the form of royalties, licensing fees, or other financial arrangements.
- Monitoring and Enforcement: As the trademark owner, you should regularly monitor the licensee’s use of the mark to ensure compliance with the terms of the licensing agreement. Failure to enforce the agreement’s provisions could lead to the loss of your trademark rights.
- Termination Clause: The licensing agreement should include provisions outlining the circumstances under which either party can terminate the license, as well as the steps to be taken upon termination.
It is essential to draft a comprehensive and well-drafted licensing agreement to protect your trademark rights and maintain the reputation of your brand. Working with a trademark attorney experienced in drafting licensing agreements can help ensure that the agreement is legally sound, addresses all relevant issues, and protects your interests as the trademark owner.
Remember that trademark licensing is a complex legal process that requires careful consideration and attention to detail. By licensing your trademark correctly, you can leverage the value of your brand while maintaining control over its use and preserving its distinctiveness in the marketplace.
If my trademark is registered in the United States, is it protected in other countries as well?
No, a trademark registered in the United States is only protected within the borders of the United States. Trademark protection is territorial, which means that each country has its own trademark laws and registration systems. Registering a trademark with the United States Patent and Trademark Office (USPTO) grants you exclusive rights to use the mark in connection with the specified goods or services within the United States.
If you want to protect your trademark in other countries, you must file separate trademark applications in each country where you seek protection. This process is known as filing for international trademark registration or seeking trademark protection through individual national or regional trademark offices.
There are two primary ways to seek international trademark protection:
- Madrid System (International Registration): The Madrid System is a centralized international trademark registration system managed by the World Intellectual Property Organization (WIPO). It allows trademark owners to file a single international application (through their home country’s trademark office) and designate multiple countries where they seek protection. This system simplifies the process and reduces costs for seeking trademark protection in multiple countries that are parties to the Madrid Agreement or Madrid Protocol.
- National or Regional Filings: Alternatively, trademark owners can file separate trademark applications directly with the national or regional trademark offices of each country where they want protection. This approach requires navigating the trademark laws and procedures of each individual country, and the process can vary significantly from country to country.
When seeking international trademark protection, it’s essential to consider the differences in trademark laws, filing requirements, and examination procedures in each country. Working with an experienced trademark attorney or using a specialized trademark service provider can help you navigate the complexities of international trademark registration, ensure compliance with each country’s requirements, and maximize the protection of your brand worldwide.
Keep in mind that international trademark registration is an important step if you plan to expand your business into global markets or if you want to prevent others from using your mark in other countries where your goods or services may be offered or advertised. Registering your trademark internationally provides you with the means to enforce your rights and protect your brand’s integrity on a broader scale.
Is there such a thing as an “International Trademark”?
While there is no “international trademark” that grants worldwide protection with a single registration, there are mechanisms and agreements that facilitate the process of seeking trademark protection in multiple countries. One such mechanism is the Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO).
The Madrid System allows trademark owners to seek protection for their marks in multiple countries through a single international application. This streamlined process simplifies the administrative burden and can be cost-effective for businesses looking to expand their trademark rights beyond their home country.
Here’s how the Madrid System works:
- Home Application or Registration: Before using the Madrid System, the trademark owner must have a “home” application or registration in their country of origin, which serves as the basis for the international application.
- International Application: Using the home application or registration as a foundation, the trademark owner can submit an international application through their country’s national trademark office, designating the countries where they seek protection. The application is then transmitted to the WIPO.
- Examination by WIPO and Designated Countries: The WIPO reviews the international application to ensure it meets the necessary requirements. The designated countries have the opportunity to examine and decide whether to grant protection within their jurisdictions.
- Individual Country Registration: If the designated countries approve the application, the trademark will be protected in each country as if it had been filed directly with their respective trademark offices. Each country’s national trademark laws and procedures will govern the protection of the mark.
The advantages of the Madrid System include cost savings, simplified management of international trademarks, and the ability to add additional countries to the registration at a later date through subsequent designations. However, it’s important to note that the Madrid System does not create a single, unified international trademark; rather, it is a centralized process for seeking protection in multiple countries through a single application.
It’s also worth mentioning that not all countries are members of the Madrid System. Countries that are not part of the system require separate national or regional trademark applications for protection within their borders.
Due to the complexities and variations in trademark laws and procedures worldwide, seeking international trademark protection can be a challenging endeavor. Working with an experienced trademark attorney or using a specialized trademark service provider can help you navigate the intricacies of international trademark registration and ensure the best possible protection for your brand on a global scale.
What is a trademark office action?
A trademark office action is an official communication from the trademark examining attorney at the United States Patent and Trademark Office (USPTO) regarding the status of your trademark application. When you submit a trademark application, it undergoes examination by a USPTO attorney to determine if it meets all the legal requirements for registration.
If the examining attorney identifies any issues or concerns with the application, they will issue an office action detailing the reasons for refusal or requesting additional information or clarification. Office actions can be either substantive or procedural in nature, and they require a response from the applicant within a specified period.
Here are the two main types of office actions:
- Substantive Office Action: A substantive office action raises issues related to the registrability of the trademark itself. Common reasons for substantive office actions include:
– Likelihood of Confusion: The mark is similar to an existing registered or pending trademark, and its use may cause confusion among consumers.
– Descriptiveness: The mark is considered merely descriptive of the goods or services, and therefore, it lacks the required distinctiveness.
– Genericness: The mark is generic and identifies the common name of the goods or services, making it ineligible for trademark protection.
– Specimen Issues: The submitted specimen of use does not meet the USPTO’s requirements to demonstrate use of the mark in commerce.
- Procedural Office Action: A procedural office action addresses administrative or technical deficiencies in the application. Common reasons for procedural office actions include:
– Incomplete Application: The application lacks certain required information or fees.
– Incorrect Classification: The goods or services listed in the application are not properly classified according to the USPTO’s system.
– Signature Requirement: The application may require a proper signature or authorization.
The office action will include a deadline by which the applicant must respond to the USPTO’s concerns. Typically, the response deadline is six months from the date of the office action, but extensions may be available under certain circumstances.
It is essential to respond to the office action promptly and carefully. A well-crafted and persuasive response is crucial to overcoming the USPTO’s objections and securing the registration of your trademark. In some cases, multiple rounds of responses and negotiations may be necessary to address all issues and ultimately gain approval for registration.
If you receive an office action, it is advisable to seek the assistance of a trademark attorney. An experienced attorney can analyze the issues raised, formulate a strong response, and guide you through the process to increase the chances of a successful trademark registration.
What should I do if I receive an office action on my trademark application?
Receiving an office action on your trademark application does not mean that your application has been rejected outright. It is a standard part of the trademark examination process, and the issues raised in the office action can often be addressed with a well-prepared response. Here are the steps you should take if you receive an office action on your trademark application:
- Read Carefully and Understand the Office Action: Carefully review the office action to understand the issues raised by the USPTO examining attorney. The office action will clearly state the reasons for refusal or any deficiencies found in your application.
- Consult with a Trademark Attorney: If you haven’t already done so, consider consulting with a trademark attorney. An experienced attorney can provide valuable guidance and help you understand the implications of the office action. They can also advise you on the best course of action to respond effectively.
- Prepare a Comprehensive Response: Draft a thorough and well-reasoned response to address each of the USPTO’s concerns. Your response should include legal arguments, evidence, and any necessary amendments or clarifications to the application.
- Respect the Deadline: The office action will include a response deadline, usually six months from the date of the office action. Ensure that you respond within this timeframe to avoid abandonment of your application.
- Amend the Application, if Necessary: If the office action points out deficiencies in the application, such as incorrect classification of goods or services or issues with the specimen of use, make the necessary amendments to rectify these deficiencies.
- Overcome Substantive Objections: If the office action raises substantive issues like likelihood of confusion or descriptiveness, provide evidence and arguments to demonstrate the distinctiveness and registrability of your mark.
- Consider the Specimen of Use: If the specimen of use was rejected, review the USPTO’s reasons for refusal and submit a new specimen that meets the USPTO’s requirements for demonstrating use in commerce.
- Pay Attention to Formal Requirements: Ensure that your response complies with all formal requirements of the USPTO, including proper signatures and fees.
- Be Patient: After submitting your response, it may take several months for the USPTO to review it and issue a final decision. Be patient and monitor the status of your application.
- Appeal, if Necessary: If your response does not overcome the issues raised in the office action, you may have the option to appeal the decision or seek further legal recourse. Your trademark attorney can advise you on the best course of action.
Remember that addressing an office action requires careful attention to detail and knowledge of trademark law. Working with a qualified trademark attorney can significantly increase the chances of a successful response and the ultimate registration of your trademark.
How do I enforce my trademark rights?
Enforcing your trademark rights is essential to protect your brand and prevent others from using your mark without permission. Trademark enforcement involves taking appropriate legal actions against individuals or businesses that are infringing on your trademark or engaging in activities that may dilute the distinctiveness of your mark. Here are the steps you can take to enforce your trademark rights:
- Monitor for Infringement: Regularly monitor the marketplace, both online and offline, to identify potential infringers or unauthorized users of your trademark. This can be done through manual searches, online monitoring tools, or by working with a trademark watch service.
- Document Infringements: Keep detailed records and evidence of any instances of trademark infringement or unauthorized use of your mark. This documentation will be crucial if you need to take legal action later.
- Cease and Desist Letter: Start by sending a cease and desist letter to the infringing party, demanding that they stop using your trademark immediately. This letter should clearly state your rights as the trademark owner and the legal consequences they may face if they continue to use the mark.
- Negotiation and Settlement: In some cases, negotiations with the infringing party may be possible to reach a resolution without resorting to formal legal action. You can explore options for licensing, coexistence agreements, or other solutions that protect your rights while allowing the infringing party to continue limited use under specific conditions.
- Mediation or Alternative Dispute Resolution: If negotiations are not successful, consider mediation or alternative dispute resolution to try to resolve the issue without going to court.
- Trademark Opposition or Cancellation: If the infringing party has applied for a trademark registration that conflicts with your mark, you may file a trademark opposition or cancellation proceeding with the USPTO to prevent or cancel their registration.
- Trademark Litigation: If all other attempts at resolution fail, you may need to pursue trademark litigation. This involves filing a lawsuit against the infringing party in a court of law to seek injunctive relief, damages, and other appropriate remedies.
- Enforce Online: Take action against online infringement by sending takedown notices to internet service providers or website hosts when unauthorized use of your mark is found on websites, social media platforms, or online marketplaces.
Enforcing your trademark rights can be a complex process, and it’s important to work with a skilled trademark attorney experienced in trademark enforcement. An attorney can guide you through the enforcement process, advise on the best strategies for protecting your brand, and take the necessary legal actions to safeguard your trademark rights effectively. Proactively enforcing your trademark rights helps maintain the strength and value of your brand, ensuring that consumers can rely on your mark as a symbol of quality and authenticity.
Why Trademark Registration Matters for Toledo Businesses
Toledo, Ohio has some of the most beautiful scenery in the country. Many young entrepreneurs are hoping to start their dreams of business ownership in the Centennial State. Most of them may not realize that it’s important to protect their business and their brand identity by registering their trademarks.
Some young business owners want to jump right into the “fun stuff” when it comes to opening a business. Finding a location, getting the Instagram account going, creating a dynamic marketing campaign, and hiring staff. But registering their trademark? For some, it’s the last thing on their minds. There’s plenty of time to take care of that boring stuff, right? The truth is registering a mark properly is one of the first things you should do when starting a new business.
Imagine the following: Jackie loves the outdoors and she’s a skiing fanatic. Where better to open up her new ski shop than in Toledo? She plans on selling and renting skis and giving cross-country skiing tours every weekend. She decides to call her new shop Cross Country Queen. She tells her friends about the idea and they support her 100%. Her best friend asks her when she’s going to trademark the name. Jackie says that she has plenty of time for that and wants to start designing the shop.
Jackie pours her heart and soul into her new business. She secured a small business loan and used the money to order inventory, create a website, and hire a sign maker to create a custom sign to hang over her shop.
She got the shop open just in time for the tourist season and she quickly attracted lots of customers. She was giving 4 tours every weekend and was thinking of adding a Friday night cross country tour to her offerings.
A few days later Jackie’s friend stopped by with some bad news. Apparently, there was an existing ski shop in Cleveland called The Cross Country King and they were planning on opening a second shop in Toledo. Jackie wondered if the name of her shop was too similar to her competitor.
Sure enough, a few weeks later Jackie received a cease-and-desist letter in the mail from The Cross Country King. Now she has to close the shop and rebrand which will cost time and money. By the time she’s ready to re-open with a new name, the tourist season will be over.
Had Jackie made registering her trademark a priority early on, she wouldn’t have this problem. If you have questions about trademark registration, then contact the attorneys at Cohn Legal for a no-cost trademark consultation.
** Cohn Legal, PLLC is not located in Toledo and yet it can assist businesses from Ohio in registering a federal Trademark because trademarks are governed under federal law.
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