So your startup just spent $5,000 with a branding agency on a fancy new logo. After getting over the initial sticker price (did we really need to spend $5k??), it’s time to make the most of it and deploy your new digital asset to the marketplace. However, before you do, make sure you protect your logo with a trademark. Here’s how to do it.
WHAT IS A TRADEMARK?
Remember, a trademark is simply a branding asset which when tethered to the sale of a product or service, allows a consumer to understand who the source company is which manufactured the good/service. So, when a consumer sees a horizontal swoosh on a shoe, he will immediately know that the shoe is a product of the Nike company.
WHAT’S THE DIFFERENCE BETWEEN A COMMON-LAW TRADEMARK AND A USPTO REGISTERED MARK?
Once a business business sells a product or service, it obtains “common law ownership” of the trademark (name, logo and/or slogan) which is used to brand the particular product or service. So, if a new computer startup in NYC were to design a unique logo consisting of a multi-colored square, circle, and triangle, the startup would obtain Common-law rights to this logo vis-à-vis computers and no competing computer businesses would be permitted to adopt this unique logo for promotional use.
While there is no formal registration process for common law ownership, common law trademark rights are limited to only a specific geographic area. Outside that area, people can freely use the same logo. Therefore, it is always better for a company to register its logo to obtain national trademark protection with the United States Patent and Trademark Office (USPTO). Of course, beyond the expansive geographic rights secured through a Federal mark that are not available to common law trademarks, it is much easier to pursue a legal dispute in the court system with a Federal trademark than with a common law trademark. Ready to register your Logo trademark with the USPTO?
We have put together a few simple steps to assist you in the process.
STEPS TO TRADEMARK YOUR LOGO WITH THE USPTO
Conduct a Trademark Search With The USPTO
Once you’ve come up with the logo you’d like to register, the first step is to check existing trademark records. You don’t want to be disappointed later when your application is rejected simply because someone else thought of the design before you.
Here are four ways in which you can effectively conduct a trademark search:
- USPTO Trademark Database
Use the Trademark Electronic Search System (TESS) by USPTO to search for existing trademarks registered with the office and any prior pending applications for the same name. Conducting a trademark search for a logo is a slightly more challenging proposition than conducting a search for a name because the search requires identifying the composite parts of the design and searching for them individually. For example, if your logo contains a house, shoe, tree, and circle, it is imperative that the trademark search accounts for each feature of the design mark.
- State Trademark Databases
Each state has its own trademark database. You must also search for your potential business name in the relevant state databases where you want to sell your product. Here is a link from the USPTO website that lists all the databases. Why is this important? Well, it is actually quite common for a business to have developed state trademark rights rather than TM protection in the USPTO and therefore, simply conducting the search in the USPTO is insufficient to determine eligibility of the prospective trademark in all 50 States. Conducting a State Trademark search furthers the Applicant’s understanding of the viability of the mark and any chances of infringement.
- Business Directories
Not surprisingly, there are many companies that are in business, thus obtaining Common Law trademark rights, who haven’t actually registered a trademark in either the USPTO or via a particular State, but may still have the same logo you’re going for. Conducting a search of various relevant business directories is a good way of surveying the landscape in your industry and determining possible problems down the line.
- Search Engines
Ahh, the almighty Google. Before applying for a trademark on your Logo, please at least run a quick search for the mark on a search engine. Remember, at all costs, it is critical that you do not select a logo which may infringe on the existing rights of a competitor.
Submit the USPTO Trademark Application For Your Logo
Now that you’ve checked if your logo is unique, here is a list of details you’ll need to include in your trademark application to the USPTO:
- Your full name and/or company name, address, email address etc.
- A complete and proper description of your logo
- A list of products and/or services that you will sell under the banner of your logo
- If you have already made a “meaningful number of inter-state sales” of your products/services under the banner of your logo, the basis of your application will be “in commerce”. Please note, you will also need to provide a specimen showing your logo tethered to your goods along with a date the mark was first used.
- If you have not yet made sales under the banner of your logo, the basis of your trademark application will be a 1(b) “intent to use”. 1(b) trademark applications do not require a specimen or date of first use because by definition, the logo has not yet been used in commerce.
Here is the link to the online application page which contains a list of all the forms you need to submit to complete your application.
Respond to a Trademark Office Action if Required
After receiving your application, a USPTO attorney will review it thoroughly. He will be on the lookout for both Procedural defects (you wrote that your company is an LLC while the record shows that it is in fact a C-Corp) in addition to Substantive issues (your logo is too similar to an existing application). If the trademark examining attorney finds your logo to be unacceptable, he will issue an “Office Action” and with the directive to fix the defects within a maximum period of 6 months. If you fail to respond to the trademark office action, your application will be canceled.
Here are three common reasons why your application may be rejected:
- Your trademark is not sufficiently distinct given the goods/services that you sell but rather merely describes your product/service
- Your logo-trademark infringes on the rights of an existing trademark
- Your trademark application does not properly articulate the goods/services you intend to sell under the banner of your logo
In the event that your trademark is accepted, you will receive a registration certificate and you will have the right to use the highly coveted ® symbol next to your logo. Congratulations! This is a major accomplishment indeed.
COST TO FILE A TRADEMARK APPLICATION ON YOUR LOGO
When working with our Trademark Attorneys, the cost for filing a trademark application on your logo is a flat fee of $650 + Gov. Filing Fees of either $250 or $350 per class of goods (“T-shirts” is one class of goods while “Poultry” is a separate class of goods). The extent to which a trademark applicant will have to file a $250 application vs. a $350 application is a function of the nuance of the description of the goods/services sold under the banner of the application. If the goods are simple, the applicant will likely be able to file under the $250 application. However, if the applicant has created a logo for his company which sells something “fancy”, like space rocket propellers, the applicant can expect the application to fall under the $350 category.
SPEAK WITH A TRADEMARK LAWYER AND REGISTER A TRADEMARK FOR YOUR LOGO
Ultimately, your brand assets, including your new fancy logo, represents the heart and soul of your company. When a consumer sees your logo on your product, how would you like him/her to feel? Excited? Nervous? Rich? In short, your trademark along with the rest of your brand assets create a brand experience for your customers. Make sure you protect yourself. Speak with one of our trademark attorneys to learn more about the trademark process.