A trademark can be anything (relating to products and/or services) that people associate with a business or company. This includes company names, product names, words, brands, logos, slogans, symbols, scent, designs, or a combination of these elements. Trademarks, or marks, can be used to distinguish ‘services’ along with products. These are also referred to as ‘service’ marks when used to identify the source of a service.
In essence, trademark registration helps protect your valuable assets and intellectual property, and importantly, it establishes your ownership rights. Trademark Funnel offers you a simple, fast, and economical approach for trademark registration to protect your brand and business, throughout the US United States and beyond.
Getting a trademark registered with USPTO for your brand, logo, product or company name, phrases, slogans, or symbols that people associate with your business or product, provides you nationwide protection and establishes your ownership rights on the mark across the country. Trademark registration, once accepted by USPTO, strengthens your future claims if you pursue litigation against someone for trademark infringement.
Trademark Funnel is a responsible organization that cares; cares about the customers we serve, and values their work and assets, which we protect. However, we are not a legal firm that can replace a full-service intellectual property attorney. Any messages or information, whether intended or unintended, displayed on our website, should never be taken as legal counsel.
Trademark Funnel is a great resource for companies that do not really require or cannot afford such legal representation. We can provide a helping hand to educate anyone out there who needs relevant information, or provide complete assistance on the trademark registration process.
We do not guarantee registration of your trademark by USPTO, but we will ensure that the filing process for your trademark or copyright application is completed properly and professionally. Moreover, Trademark Funnel cannot provide any guarantees whether your mark will be infringed upon or used by any other entity. Once accepted by USPTO, trademark registration protects you from future infringements and strengthens your legal claims if you pursue litigation against someone for trademark infringement.
- Trademarks - Company names, product names, words, brands, logos, slogans, symbols, scent, designs, or a combination of these elements.
- Service Marks -Used to distinguish ‘services’ rather than sale of goods. These marks used to identify the source of a service.
Trademark protects slogans, phrases, logos, symbols, designs, and any product or service that people associate with a business or company. Trademark registration can secure your product name, brand name, and company name.
Copyright is used to protect original works and establish ownership of their producers so that their work is not used by any other party without authorization from the copyright owner. It prevents unauthorized distribution of these works (including copying and piracy) and any use of these original work for monetary gains.
Trademark Funnel can file your registration for copyright for all kinds of intellectual property:
- Works of Art
- Audio Recordings
- Literary Works
- Musical Composition or Lyrics
- Software and Programs
- Motion Pictures
- Technical Drawings
- TV Shows
- Visual Arts
Copyright registration establishes exclusive rights and ownership of creators, authors and producers for their original works. It protects their work or intellectual property from unauthorized use by other parties and prevents copying, piracy, distribution of these works.
If you have used your ideas, creativity, and skills to produce any original work, you would not want others to wrongly use your intellectual without your authorization, and forego all the financial rewards from that work. Copyright registration basically protects owners of these works in this way.
Common Law trademark (also sometimes referred to as unregistered trademark) does not need any federal registration. The common law protection and rights for your logo, product name, design, slogan, etc. arise from an entity’s actual use of the mark for a particular good or service. If you use your mark regularly in sale of product, labelling, branding and advertisements, then you might have common law rights before the trademark is registered with USPTO. If some other entity infringes on your mark or uses anything similar for their product/service, you may have limited litigation support and protection in courts.
Quite simply, trademark registration gives you broader protection throughout the country, while also strengthening future legal claims in court. Biggest concern with common law trademark rights arises from the fact that this protection is geographically limited. And you are kind of responsible for watching out for infringement and have to keep track of things.
With a federal trademark registration, you get protection throughout the country. Additionally, your mark is listed in the official USPTO databases, which informs others of the trademark use, preventing them from infringing on your trademark. Lastly, you can also use the symbol ® next to your logo or product name to denote a registered trademark.
Some trademark applications are based on ‘actual use’ which means that the trademark has already been used by the applicant in commerce or advertising for a product or service. ‘Actual use’ can be for either product or service, products sold in commerce or services that have actually been rendered
‘Intent-to-use’ applications are relevant for mark that have not been used or displayed yet, and that the owner plans to use the trademark in advertisements, commerce, product labels, etc. In such cases, the owner of the mark will actually have to use the trademark before it can be registered. After the trademark has been used for a product or service, you can file a ‘Statement of Use/Amendments to Allege Use’ with drawings and copy of specimen showing its actual use.
Once you have used your trademark, you will have to file a document titled "Statement of Use/Amendment to Allege Use."
The trademark registration process is a legal proceeding governed by US law. The process is structured and has slightly different requirements depending on the type of mark being registered. For most application, you might need to provide the following information:
- Owner’s full legal name, along with owner’s address
- Type of your entity (partnership, corporation, individual, etc.)
- The trademark you are using or intend to use
- A drawing and a specimen copy of the mark (showing its actual use)
- A drawing of the trademark as it is intended to be used (for intent-to-use marks)
- Relevant dates (when first used on products/labels, or dates when you first advertised)
- Type of good or services for which the mark is being registered
Searching for direct conflicts for your trademark is an important process before you submit your registration application. Also known as trademark clearance search, this is a thorough process of searching and reviewing different trademark databases, at state and federal levels, for direct conflicts for your trademark. This search for conflicting trademarks is highly recommended, as it allows you to know whether your mark (name, logo, phrase, etc.) can be registered easily with the USPTO (U.S. Patent and Trademark Office) without any problems.
A complete review of USPTO databases, unregistered trademarks, internet searches, and state trademark databases, makes it easy to find out if you should file the said trademark registration. So with a proper search you can save (non-refundable) filing fees and avoid waste of time.
Also, it allows you as a new business entity to adjust your company/product names slightly if there is already a similar trademark name out there. It is easier to modify your branding strategy when starting out, rather than find out much later that there exists trademarks similar to your names or slogans. This exercise of performing a comprehensive search saves you time, effort and money.
Ideally, companies should trademark their name and logo separately, as each is considered a separate mark. But filing for each mark with USPTO has its own filing requirements and separate registration application fees.
Name (whether it is company name or brand name) is treated as a standard character mark. This is typically used for a combination of words, letters or numbers, where focus is the wording. Whereas, logo is filed as a design mark.
Registering both marks separately makes it easy for the company to use them as they wish, either as a combination or separately, depending on the marketing strategy. If these two are filed together, then a business will be bound to always use these two together, leaving no room for displaying one or other.
Obviously, there are added costs when filing for two classes. It is more common to generally have your product or company name being wrongfully used. Registration of standard character marks offers very wide protection as compared to any other form of trademark registration.
If you register only the logo, it will not completely protect your company name. Trademarking your logo only protects the design, shape, and elements of the logo. If a name is displayed on the logo, trademark registration only prevents other entities from using your ‘name’ in that particular style or way.
Incorporating a company name for your goods or services might provide common law trademark rights, but it does not offer proper protection like trademark rights. And again this may be limited to geographical location, for example, only at the State level.
One might get allowance at the state level to use a certain company name, if there are no name conflicts with those registered with that state. However, some other state may have another company registered with that name. And sometimes, they might also have registered the trademark for the company name, therefore, they have the right to use that company name throughout the country.
So, it is always prudent to get your company names registered as trademark so that you get exclusive rights to use the said name, throughout the United States.
Categories or classes are used to identify types of goods or services. Also known as International Classes, a number of different classes have been determined by USPTO for trademark applicants to choose from. Many times, trademarks need to be registered in more than one class, to be able to enjoy exclusive use rights and comprehensive trademark protection. If you are unsure about what class or categories you need to choose for your trademark application, then you can always contact us and we would be glad to guide you through the different applicable classes for your mark.
There are so many things to watch out for, especially as things might be slightly different when the mark is applied to a good or service. The class selection becomes very important as registering a trademark will only provide you protection for that category. Choosing the right category is also important for the application process, as your registration might not be approved if the appropriate class is not chosen in your application to USPTO.
General Guidelines for Choosing the Right Class/Category:
- First step is selecting whether mark is for a good or service
- Review the all the available information about classes (included in the Trademark Funnel's User's Manual). For more information on the possible categories, please visit: https://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm
- Select the most accurate category from USPTO list for your mark. Ensure that all classes are selected so that your use of mark across the board is covered. If working with Trademark Funnel, we assist you through the process and all categories are included on the drop-down menu on the Trademark Funnel website.
- Selecting the class becomes a lot easier if applicant focuses on the finished product and not on the constituents that go into making the product or delivering the service.
- Do not be hesitant to file under multiple classes, especially if affording the filing fees is not a major constraint. Having protection under multiple categories, gives you peace of the mind in the long run and facilitates in getting support from courts in future litigation cases.
It is important to use the right description for your goods and/or services, so that your application does not get rejected. It is also vital so that all of your intended products/services get the protection through the trademark application.
The description has to be precise, not too descriptive and not too restricted. Using specific details in the description, with simple and easy-to-understand English, makes things efficient for applicant and examiners at USPTO
Having a domain name available does not necessarily mean that you can use the same company name. There might be a company out there with a name trademark for their good or service, but they might not have had acquired the same domain name, and vice versa.
If you have the domain name, it might provide you some protection and common law rights, but getting a name trademarked is important as it gives you nationwide protection with exclusive rights to use the name on products, labels, online marketing, etc. Also, having a domain name does not prevent others from using the same name for the sale of their products or services. A trademark registration will prevent others from using a same or similar name, anywhere across the US.
Trademark registration applies in online world as well. When you register a name, say for your business, the trademark prevents other entities to start a company using the same name. They can’t open a retail outlet or store using the same business name that you have trademark. Similarly, if somebody else attempts to register a domain (website URL) that is same as your registered mark, then you can prevent that from happening. So, in most cases a federal trademark registration may protect your web domain name as well. For example, your trademark business name is ‘abcdefgh’, then your domain ‘adcdefgh.com’ may also get some protection, so that when some other entity uses a similar domain, it prevents consumer confusion. A registered trademark may also prevent cybersquatting and grant you additional rights and protection under the Anti-Cyber Squatting Consumer Protection Act
But as trademarks are registered within a specific class of goods or services, then if somebody uses a domain name that is same as your business name, but the type of business is too different from yours, then the domain name might not always get complete protection. For example, your product is for pet food, and another entity uses domain name for their company that deals with automobile parts.
Just like registering company or product names, companies that implement strong advertisement and branding campaigns, often register their taglines, catchphrases or slogans, as trademarks. When these branding messages become synonymous with great quality and brand value, then other entities might start using similar slogans in their marketing campaigns. It is always prudent to register any intellectual property assets that have considerable financial and business value. But just like with any other mark registration, too generic or general use words might not get approved for trademarks.
This filing fee is charged by the USPTO (United States Patent and Trademark Office) as assessment fees for all trademark registration applications. Each application can be filed in one (1) of the three (3) options for each class of goods and/or services. The following fees are charged on per class basis for each application:
- Option 1: TEAS Plus - $225
- Option 2: TEAS RF - $275
- Option 3: TEAS Regular - $400
For further information about trademark filing application fee with USPTO, please visit: https://www.uspto.gov/trademark/trademark-fee-information
This filing fee is non-refundable, whether your trademark gets approved or rejected. This fee is mandatory and does not change, irrespective of how the applicant files the application. The fees is the same, whether owner files on their own or using another representative (attorney or trademark companies). After we conduct the basic trademark search for direct conflicts, we collect the fee and send it over to USPTO as filing fee, when the signed application is filed for trademark registration.
The whole process may take a few months, usually 6-8 months or more, assuming that the initial application has all the right information and does not need any significant changes.
After you have met USPTO filing requirements, USPTO begins application review begins and application is forwarded to an examining attorney.
If the examining attorney finds any issues and determines that the trademark should not be issued, then an ‘Office Action’ letter is issued. An option is given to the applicant to respond to the USPTO within 6 months.
If there are no issues found with the trademark application, then the mark is ready to be published in the "Official Gazette” and applicant receives a Notice of Publication. If no objections surface after mark’s publication, then USPTO issues a Notice of Allowance. Notice of Allowance is a notification from USPTO to confirm that your trademark will be allowed to register, after surviving opposition following the publication of mark in the Official Gazette.
As per USPTO, trademark registration ‘may remain in force for potentially unlimited consecutive ten-year periods as long as the owner meets the legal requirements for post-registration maintenance and renewal and timely files all necessary documents.
In other words, your trademark registration is valid indefinitely, with 10-year renewal terms, as long as the trademark use is continued by its owner and all applicable paperwork is filed on time.
After your trademark is registered, for it to remain valid for a term of another 10 years, USPTO requires the owner to file a ‘Declaration of Use’ between the fifth and sixth year following registration. An additional affidavit also needs to be filed within the last year before the end of the 10-year term, again declaring that the owner is still using the trademark.
Trademark Funnel can provide you with timely notifications and reminders to renew your trademark. We also help trademark owners file their paperwork for renewal of trademark registration.
Not always is the infringement by another party intentional. Often times, the other party is unaware of registered trademark that they are infringing upon.
The first step, if you find someone infringing, is to send a ‘Cease and Desist’ letter to warn the other party (business, corporation, individual) to stop the illegal activity of using your mark. Notifying the infringing party with this letter may often resolve the issue. But if they ignore your notification or inform you that as per their understanding, they are not infringing, then it is time take the matter to court with a trademark infringement lawsuit.
If the examining attorney at USPTO finds any issues with the registration application and determines that the trademark should not be issued, then an ‘Office Action’ letter is issued. There may be a number of reasons for this decision, e.g. the mark is too generic, or the mark is too similar to an already registered trademark.
An option is given to the applicant to respond to the USPTO, within 6 months, or the application is considered to be ‘abandoned’. The applicant (or their attorney) have the chance to respond to USPTO, giving them rebuttal why the initial decision by examining attorney may be wrong.
There are a number of reasons why a trademark gets rejected by USPTO. The most common reason for rejection is the likelihood of (consumer) confusion. Another likely reason is when the mark looks or appear very similar to another trademark. Similarly, for some marks if it sounds too similar, the mark may be rejected. Some of the other reasons for rejection are as follows:
- Merely Descriptive and Deceptively Misdescriptive
- Geographically Terms or Geographical Location Descriptions
- Surname or Common Individual Names
- Foreign Language Word that Translate to General-Use English Words
- Anything that is Merely Ornamental in Nature
- Title of a Song, Book, Movie, TV Show, etc.
After you have filed your application, you may be able to make certain changes to your file. There might be limited options available depending on the type of change requested, and timing of the request. As per USPTO, ‘you can change some information in your trademark application after you receive a Notice of Publication or a Notice of Allowance and before your mark is registered, but not all changes are allowed.’https://www.uspto.gov/trademark/trademark-updates-and-announcements/procedures-submitting-amendmentscorrections-trademark
Notice of Publication – Notification from USPTO confirming that your mark will be published in their official gazette.
Notice of Allowance – Notification from USPTO to confirm that your trademark will be allowed to register, after surviving opposition following the publication of mark in the Official Gazette.
Depending on when you request changes and type of changes you want, the process and required fee will vary. Generally, minor changes and clerical mistakes can be easily changed e.g. updating address, your attorney info, transfer of ownership, etc. After Notice of Publication has been issued, Post-Publication Amendment form is used to request most changes with USPTO. You can also request any issues or changes after either of the notice with Trademark Funnel, where we can file and manage amendment request with USPTO. For some changes, additional fees may be required by USPTO.
Yes, it is possible to transfer ownership rights of a trademark. Trademark registration is an asset for any company or individual, with financial value. If you are moving on to new ventures or changing your business type, or simply looking to cash in on your intellectual property, you can sell it off. You can also license it to another party, where a trademark licensing agreement has to be formulated for legal enforcement. Trademark Funnel can help clients with selling, licensing, or assignments of trademarks with USPTO.
Depending on the type of the software and how it is sold, software can be treated as a good or service by USPTO. It is important to select the appropriate class for each software trademark, as choosing the wrong class may lead to rejection by USPTO.
Software may be categorized as a good or product, if the software is sold through an external drive or available for download. If software is sold as a service (SaaS), then it is denoted under scientific and technical services.
It is possible to register clothing and apparel brands as trademarks with the USPTO. The registration for brand trademark protects the financial integrity of your brand and prevent others selling clothing and fashion accessories under similar brand name or logo. USPTO will request information and evidence to ensure that the character mark (words or names) are actually being used for branding on actual clothing products.
In most cases, the answer is no. Although it is not illegal for USPTO to register names as trademarks, generally it is discouraged to trademark surnames or names of individuals. Under certain circumstances, where the said name has acquired a ‘secondary meaning’ or association to a product/good or service. It may also be trademark if the name is very unique. For example, some celebrities are able to trademark their name to give their personal brands financial protection.
Even if present solely on social media, the name, logo, and slogan of a nonprofit or social group may be eligible for the registration of a trademark.
In order to prohibit external usage, or to prevent unauthorized usage that is not in cognizance with the social mission, ideology, or philanthropic function, non-profits opt for mark registration. Capable of protecting a community both online and offline, trademarks, however, cannot be registered in the event that active social media pages are being used solely for the selling or promotion of goods and services. Instead, the filing of a proper trademark that is in direct correlation with said goods and services is a tactic that has reportedly worked for some.
There are many instances where non-profits have been known to be confused by the “use in commerce” requirement. The equation is slightly different for non-profit organizations. An individual, for example a homeless person, may receive basic necessities from the non-profit and the non-profit may receive the funds for this provision from a different source.
Under most circumstances, this is accepted as a sufficient mode of economic exchange to satisfy the “use in commerce” requirement. However, the UPSTO, regardless, demands proof of the organization’s ‘non-profit’ status. Whereas, social organizations mostly make use of their marks under commercial instances where there are concerns regarding dues, or financial accounts of money-spending activities.
There are some groups that register under Class 35 (Advertisement and Business Services) as promoting causes; Class 36 for philanthropic fund raising services, others come under Class 41 (Education and Entertainment) as social club services that organize, plan, and host social events, get-togethers, and parties for members to come together and partake in the sharing of information about certain causes.
This is amongst one of the most common questions we receive regarding bands or other musicians. Their main query is about what class should they be using? In the absence of major budgetary constraints, many bands will register under several classes, including entertainment services, sound recordings and clothing.
Each of these may cost $275 in USPTO filing fees, so this may not be the most economical option. For those just starting out, consider registering entertainment services to try and protect the mark as it relates to live performances and begins building up the fan base. As a band grows, they can then afford to start thinking about their merchandise. This is the most commonly taken route by most musicians.