What Is a Trademark and Why Do You Need One?

If you’re a business owner who sells things—goods or services—and you have a name associated with your products, you may consider filing a trademark with the United States Patent and Trademark Office (USPTO).

What Is a Trademark?

A trademark may be a word, phrase, design (logo), or sound (these are rare—imagine Darth Vader® breathing). A strong trademark helps your consumer quickly identify your business as the source of your goods/services: think Coke® for soft drinks or Apple® for computers. 

Trademarks can be purchased, licensed, and sold just like any other property. It can be a very valuable asset to your business.

What Trademark Protection Can Do For Your Business

The benefit of owning a trademark is that it becomes part of a larger business strategy. Your trademark registration is your business property and it can be sold and licensed, just like any other business asset.

There are multiple advantages of owning a trademark, including: 

1. Identifies and distinguishes your brand from others;
2. Captures the attention of consumers and brings recognition that the mark comes from a trusted source;
3. Establishes brand recognition for quality products/services;
4. Institutes nationwide ownership of the mark as of the date of use, if you currently are a regional business, this would be beneficial if you expand geographically;
5. Helps protect your mark from unauthorized use by others in the U.S. in the same and similar classes of goods/services;
6. Once you’ve held and used the registration for five consecutive years, you’re eligible to file a Declaration of Incontestability. Incontestable marks cannot be challenged in court on the grounds of the validity of the mark, the registered owner’s rights to the mark, or to the fact that the registered owner, owns the mark.

When Should You Consider Pursuing a Trademark? 

Ideally, when you’re thinking of your business name, you should consider the trademark implications. A strong trademark is creative and unique; it should not be generic or descriptive of the products/services you’re selling. According to USPTO, “strong trademarks are suggestive, fanciful, or arbitrary.”

When a business considers a new slogan, tagline or product, this is also an ideal time to consider pursuing a trademark. 

Start by conducting a trademark clearance search. A trademark search can help you, 1) see if a potential mark is already in use by someone selling similar goods/services or within your industry; 2) identify any potential risks of choosing a name or product name as a potential trademark; and 3) save you money from unsuccessful trademark application fees. 

How Long Does It Take to Get a Trademark?

Registering your trademark is a complex process, and it can be costly without the help of an experienced advisor. Typically, the process takes 12 to 18 months to move your trademark application through the various stages.

There are two types of trademark applications: in-use and intent-to-use. Both application types are filed with your products/services identified and signify that you plan to use the mark for your business. 

Intent-to-Use Trademark Applications

This type of trademark application demonstrates that you plan to use the mark at a future date.

After the application is filed, if no issues are raised by the trademark examiner, the mark moves to publication. Publication is a 30-day window where any trademark owner who believes they would be damaged by your mark can raise an opposition. 

If no opposition arises from the 30-day window, a Notice of Allowance is issued. You have six months to show use (provide specimens) to the USPTO, also known as a Statement of Use filing. 

Examples of products/goods specimens are photographs of the mark on your product, packaging, or a label. Services specimens include websites, marketing materials, business cards, sales pages, and promotional materials.

If the mark is not in use, you may file for an Extension of Time to file a Statement of Use (six months). 

Once the Statement of Use specimens are accepted, the trademark application proceeds toward registration. If an examiner has issue with the application, they will issue an Office Action prior to Publication or upon the Statement of Use filing, depending on the issue.

In-Use Trademark Applications 

This type of application is filed with proof of use (specimens) that show how you’re using the mark with the products/services you’re selling. 

If an examiner has issue with the application, they will issue an Office Action prior to Publication or upon the Statement of Use filing, depending on the issue.

After the application is filed, if issues are raised by the examiner, the mark moves to publication, the same 30-day opposition window referenced above. If no opposition is raised, the mark then proceeds to registration. 

The Geller Law Group’s experienced trademark attorneys are available to help you with all aspects of the trademark process to protect your business and your brand. Contact us today at trademarks@thegellerlawgroup.com to schedule an appointment.