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Why Register a Trademark

Have you ever wondered why it is important for your business or nonprofit to register a trademark? What is the benefit to you? In this article, we will share exactly why you should invest in registering a federal trademark to protect your brand.

Why register a trademark?

Businesses with a strong local reputations must take action to register their trademarks to protect their rights in a brand name, as branding strategies are becoming increasingly international. Preferably, registration should be done when a business is setup so that you are not limited when it comes to expanding the territory that your company serves.  When setting up a new business,  you cannot base your decision to use a name off of if the domain name is available for purchase. Just because a company did not purchase the domain name for its company name, does not mean that it has not already established trademark rights in the name.

How can you legally protect yourself?

At Chisholm Law Firm, our trademark attorney performs a Comprehensive Name Search and conducts prior name availability research before our client’s invest large amounts of time and money on initial branding. This ensures that the name that they are planning to build their local, regional, or national brand around is not already owned by someone else. Knowing that the name that your business or nonprofit is using is available can help reduce the risk of trademark infringement lawsuits from the rightful owner of a name.

Trademarks Symbols

You may also wonder what the various symbols mean as it relates to trademarks that you see on a daily basis. How do you know the ones that are registered versus the ones that are not? A trademark may be designated by the following symbols:

  • (the “trademark symbol”, known as the letters “TM”, is used to represent trademarks that have not been registered with the United States Patent & Trademark Office “USPTO”)
  • (known as the letters “SM” in superscript, are used to denote a mark for a service based company that has not registered with the USPTO)
  • ® (the letter “R” with a circle around it means that this mark is a registered trademark with the USPTO)

These are some common examples of marks that cannot be registered as a trade mark:

  • Marks that are descriptive (e.g. super, best, cheap, one dozen)
  • Marks that are common to your trade (ones that have become well accepted in relation to your trade and do not distinguish the goods or service you are offering)
  • Marks that could offend or promote immoral behavior
  • Deceptive marks (these marks can erroneously state the quality of their services or goods, the type of services or goods offered, as well as the actual location or origination of those goods or services)
  • Marks that are the same as marks that were previously registered and have not been abandoned
  • Marks that could cause confusion (similar or identical to an earlier mark and in relation to similar or identical goods or services provided by the owners of the earlier mark)
  • Marks that are exactly the same as popular or widely identifiable marks

Protect Yourself and Your Business

However, one of the best ways to legally protect you and your business as it relates to trademarks is to hire an attorney to check to see whether the mark you wish to register is similar or identical to an earlier mark. This is accomplished by conducting a Comprehensive Name Search that examines all of the common law names, business names registered in all 50 states that have available databases as well as trademarks registered in both state registries and the federal register. This should be done before you file your trademark application.

We Want to Hear from You

Our Trademark attorney has extensive experience in registering and researching trademarks for a range of industries. For more information on whether your business’s brand name, phrase or logo, could be registered as a trademark or how to register a trademark please contact our trademark attorney.

What is a trademark used for?

Have you ever been worried about how to protect the uniqueness of your business and services? Or how to distinguish yourself from your fellow competitors in business? Our trademark attorney is here to enlighten you on what a trademark is used for and how you can use trademarks to protect yourself and your business.

What is a trademark used for?

A trademark is a sign or symbol that you can use to distinguish or unify your business goods or services from those of fellow competitors. A trademark is a right that is granted to own a word, phrase, logo, or aspect of packaging.  A registered trademark is legally enforceable and gives you exclusive rights to commercially use, license or sell it for the goods and services that it is registered under.

What do trademarks do?

The vital function of a trademark is to exclusively identify the commercial source or origin of products or services. So a trademark, as it is properly called, indicates the source or serves as a badge of origin. We can as well say that trademarks serve to identify a particular business as the source of goods or services. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark.

How to do you get  Trademark Rights?

It should be noted that trademark rights generally arise out of the continuous use of, or maintaining exclusive rights over, certain products or services, assuming there are no other trademark objections.

Different goods and services have been classified by the International Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea behind this system is to specify and limit the extension of intellectual property rights by determining which goods or services are covered by the mark, and to unify classification systems around the world.

How to avoid unauthorized use of someone’s trademark

Unauthorized use of trademarks results when you produce or trade fake consumer goods without the permission of the trademark owner. This is known as trademark infringement.

If you own a registered trademark, you can legally sue for trademark infringement if someone wrongfully uses your trademark without your permission. In the U.S., as well as many places around the world, you are required to formally apply to register your trademark with the governing agency in order to have the right to file a cause of action for trademark infringement.  How can you avoid the unauthorized use of someone else’s trademark? You need to conduct a Comprehensive Name Search. At Chisholm Law Firm, our Trademark Attorney takes the time to search common law trademark owners as well as those that have registered their trademark rights for our clients before applying to register new trademarks. This means that we identify unregistered trademarks that are still in use that may jeopardize our client’s ability to have their trademark registered. If we identify a threat to their registration, we provide them with a written legal opinion letting them know if we recommend that they move forward with registering their name, logo or slogan or if we advise that they build their company brand around something different. Our goal is to protect our clients’ legal interests. Although common law trademarks offer the holder less legal protection than registered trademarks, they can still compromise a registration.

Get in Touch

If you or someone you know is interested in registering a federal trademark to protect your brand, feel free to contact us. Our trademark attorney has a 100% success rate with trademark registrations (Disclaimer: Past results do not determine future outcomes) and we would love to speak with you during our free consultation about how we can assist you with your goals.

Photo credit: istock

What you need to know about the trademark process

Before you invest your precious time and money in applying for a federal trademark, there are some very important things that you need to know. Here are three things you need to know about the trademark process.

#1 You need to know what you are doing.

The federal trademark process is one of the few processes that the government hires actual lawyers to handle. That’s right. When you apply for a federal trademark, your application will be scrutinized by a licensed practicing attorney. They are actually called examining attorneys. This is important because this means that they are well versed in trademark law and will require that your application meet very specific requirements according to federal law in order to be approved.

This is one of the reasons it is often beneficial to hire a law firm to file your application. Many online companies will simply allow you to input your own responses and they will file whatever you submit. The problem with this is that you may not be a lawyer – and may not know the legally correct response to give in order for your application to be approved.

At our firm, all of our trademark applications are filed by a licensed practicing attorney that is well-versed in trademark law. We have handled so many applications with the trademark office that we know many of the examining attorneys and understand their expectations.

#2 Filing the application is just the beginning.

Many online companies sell people on cheap packages promising to file their trademark application. The only problem is that filing the application is just the beginning. Remember the examining attorney we discussed in item #1 above? Well, that attorney is going to spend the next 6-12 months reviewing your application and potentially providing you with Office Actions that you need to respond to. An office action is a formal request from the trademark office that must be responded to within a very specific deadline or your application can be abandoned. You want to make sure that the company you hire includes legal representation after they file the application up until you receive a final ruling from the government. Our firm includes this additional 6-12 months of legal representation in all of our trademark filing packages.

#3 There are generally no refunds in the trademark process

Generally, the filing fees that you pay to the trademark office to register your federal trademark are non-refundable. This means that you need to make sure that you have 100% confidence in your understanding of the process (or the attorney or company you hired) so that you do not have to refile the application multiple times and keep having to repay the filing fee.

At our firm, we are proud of our 100% success rate with our federal trademarks. (Disclaimer: Past results do not determine future outcomes). We are proud to say that we have successfully registered trademarks for clients all over the world and stand behind our experience and reputation.

Get in touch!

If you would like to speak to a trademark attorney about registering your federal trademark, please contact us. Our consultations are always free. We would love to help you legally protect your brand!

How much does a trademark cost?

In this blog, we will discuss how much does a trademark cost as well as your options for registering your trademark.

Registering the name, logo or slogan that you create as a federal trademark is a great way to protect your ownership interest. In our How to Make Money with Trademarks Series, we have discussed the process of Applying for a Trademark and Ways to Make Money with your trademark once you have it registered.

At this point, you may be asking, how much does a trademark cost? Meaning how much can you expect to invest in order to own the name, slogan or logo that you created. Well, the answer to this question is it depends on how you go about applying.

3 Ways to Register Your Trademark

Option #1: Do it yourself.

This may be the most obvious way. You can go online to the federal government’s website and file your own application. If you do, it will only cost you $225-$275 per international class (do you even know what that means?) Not to be disparaging – but people measure cost in dollars but do not factor in the value of your time. How many hours will it take you to complete the process? I’m an attorney and I still remember the first time I tried to navigate it. My mentor at the time told me to expect for it to take a few weeks to get my first application done. It’s not an intuitive system and there are many ways for you to unexpectedly make a costly mistake. If you do, your application may be rejected and you have to pay the filing fee all over again! No refunds. Again, if you view the process and are willing to invest the time, our series outlines many of the important things you’ll want to keep in mind. However, of the many services I do advise clients to do themselves – the federal trademark process is not one of them.

Option #2: Online Companies.

You can use a company online. These are the companies that advertise only $169 plus filing fee (typically $275) for a total of $444. However, there are three (3) reasons I do not recommend online companies:

  1. They cannot give you legal advice. This is usually a computer guided process that can only input your responses since they are not attorneys and are not allowed to provide legal advice. What does this mean? That if you make a decision based on what you think is best for your trademark, but it may not be the best legal decision for you, you will be stuck with your decision. Let me give an example. If you are registering the name of your business and you get to the ownership section of the application. Do you let the business own the name? Should you own the name yourself as an individual? Should you co-own it with your spouse or a business partner? The answer depends on your legal situation. We advise our clients on which ownership structure minimizes their tax liability, legal liability and would be most profitable for them and/or their business all the time. That is a benefit to having an actual lawyer guide you through the process.
  2. They do a minimal name search. These services will typically only check the federal register to see if someone else already has legal rights to your name, logo or slogan.  However, the federal register is just one of many places to search for individuals that already own your name. Most states have their own state register that you need to search. States also have corporate registers with business names. If a company already uses the name you have as a business, they likely already have ownership rights to the name (some exceptions apply). You also want to search common law listings for people that did not formally register their trademark but are still using it in commerce, which means they’ve already acquired rights to it.
  3. They cannot legally represent you after the application as been filed. This is by far the biggest benefit. I’ll explain what this means in the next option.

Option #3: Hire a Trademark Attorney.

Notice I said hire a “trademark” attorney. This is an attorney that has significant experience handling trademark applications. This is the option I always recommend when it comes to legally protecting your brand. A trademark attorney will typically cost you anywhere from $1,500 to $4,000 to register your trademark. As of the date of this publication, my firm currently charges a flat fee of $2,275 to register trademarks. The different in price largely has to do with our service. To begin, we have a 100% success rate (Disclaimer: Past results do not determine future outcomes). And we work with clients one-on-one to submit a trademark application that maximizes their legal rights. Our process consists of the following steps:

  1. Search of the federal trademark database. We will identify any existing applicants or opposition to your mark including pending registrations. This step is critical in determining our strategy to protect your mark moving forward. We will also analyze the strength of the mark and propose ways to improve it if needed.
  2. Strategic One-on-One Trademark Consultation. We will schedule a meeting to discuss the various filing options and make recommendations regarding the registration of your mark (e.g., protecting the words themselves, logo, colors, selecting the supplemental v. principal registry, etc.). We will also evaluate over 40 international classes before deciding the best classification for your trademark. We will provide a structured plan to expand the trademark protection of your mark as your business grows and expands into new markets and industries.
  3. Developing Quality Specimen. We will provide digitalization, adjustment and compilation of specimens using state-of-the-art technology in compliance with the USPTO requirements. This prevents having to file subsequent applications with the USPTO and pay additional filing fees due to submissions that do not meet their strict specifications.
  4. Application. We will file your federal trademark application with the USPTO.
  5. On-going Representation. This step is critical! Many people do not realize that after they have submitted their federal trademark application to the government, the government willl assign it’s own examining attorney to review the file. This attorney will often submit “Office Actions” which are official legal correspondences requiring the submission of additional evidence, specimen, disclaimers, etc. in order to proceed with the review process. If these Office Actions are not responded to in a timely fashion, and with responses that meet the criteria of the statute, in many cases the application will be rejected and the applicant will have to start all over again. Our service includes us representing you as it relates to the examining attorney throughout the review application process until a determination is made.

I hope this gives you a better understanding of how much it costs to get a trademark. If we can assist you in anyway, please feel free to contact us for a free consultation.

How to Market Your Trademark for Big Bucks

In this article, I am going to teach you how to market your trademark (e.g., the names, slogans or phrases you have created) online to sell or license for big bucks with a few clicks of a button.

Are you ready? Well, before I share how this simple marketing strategy works, you will need to have completed a few things first:

  1. Create a money-making trademark – I am assuming that you have been following along with our How to Make Money with Trademarks series and have created a unique trademark that has money-making potential. If you’re not sure to do this, be sure to reference my previous post on the subject.
  2. Own the Trademark – You will also need to be the legal owner of the trademark. If you have been following along with the series, you will understand the steps to apply for a federal trademark to own the name, logo or phrase you have created. You will need to have successfully registered the trademark with the federal government in order to legally market it to sell or license.

In my previous posts, I shared in detail the aspects of applying for a federal trademark to register your ownership of your original names, slogans and logos. The process is detailed and the filing fees are non-refundable if you don’t do it right the first time around. If you want the comfort of knowing that your trademark was registered the right way the first time around, feel free to hire our firm to complete the process for you. We have a 100% success rate with our federal trademark filings (Disclaimer: Past results do not determine future outcomes). We are currently running a special for individuals that have followed along with our How to Make Money with Trademarks series by offering to register their trademark for a non-refundable flat feel of  only $1500. This includes us completed a name search, preparing and filing the application, and representing you for the year-long process when the government’s examining attorney requests additional information and petitions in order to approve your application. This is a limited time offer so contact us today to get started.

So, now that you have your creative trademark and you have registered it with the federal government, here is the resource you can use to market it to prospective buyers from around the country:

www.UStrademarkexchange.com

This is a website that allows trademark owners to market their registered trademarks to companies and individuals that are looking to buy or license existing brands from throughout the United States.

As always, make sure you take the time to read the guidelines on the site to ensure that it is a good fit for you and your licensing goals. If so, this may be an easy way to list a trademark that you have invested $1500 to register and then sell it for $10,000, $50,000, $200,000 or even $1 million dollars.

Be sure to leave a comment or share this article if you found it beneficial. If you have any other questions about trademarks you can leave a comment below as well.

How to License Your Trademark

Wouldn’t it be nice to receive a monthly check just for allowing someone to use a creative name slogan or logo that you came up with? This is how trademark licensing works and I’m going to show you exactly how to license your trademark in this article.

This is the eight blog in our How to Make Money with Trademarks series. We have previously covered What is a TrademarkHow to Apply for a Trademark, How to Own a Trademark, and How to Create a Trademark that Makes Money. Now, that you understand how to create a money making trademark as well as how to legally own and protect your trademark, we’re going to learn about how to license your trademark to generate monthly passive income.

What is licensing?

Licensing is the process of giving another person legal permission to use something that you own. Oftentimes, individuals that are creative enough to come up with novel and iconic trademarks do not always have the time, capital or desire to build a business around the brand that they created. Instead, they leverage their creativity by selling the right to use the name, logo, or slogan they invented in exchange for a fee referred to as a licensing fee.

How much can you make from licensing a trademark?

The answer to this question is it depends. Our firm represents clients that license their trademarks to individuals and companies in exchange for licensing fees. Some clients want to receive an annual flat fee for the right to use their trademark. Others want to receive a flat rate each month. While others prefer to receive a percentage of gross revenue earned by the company that is using their trademark. Depending on the perceived value of your trademark, this licensing fee can range from a few hundred dollars to several thousands.

What do you need to license your trademark?

There are two critical things that you need in order to successfully license the name, logo or slogan that you created:

  1. Marketable Trademark. The first thing you need is a money-making trademark.  You need something that is creative, catchy, and marketable. It has to be something that individuals would be willing to pay big bucks to use in association with their goods are services. If you want to learn How to Create a Trademark that Makes Money, please check out our previous blog.
  2. Ownership. The next thing you need in order to license your trademark is legal ownership of your trademark. This means that you must have a trademark that is registered with the federal government. Our blog series How to Make Money with Trademarks series outlines the application process and the steps that you need to take to register your federal trademark. Alternatively, you can save yourself time by hiring a qualified trademark attorney to handle all of the legal paperwork for you. Our firm successfully registers federal trademarks for clients all throughout the country and currently has a 100% success rate (Disclaimer: Past results do not determine future outcomes). Contact us to schedule a free consultation to discuss this process in detail.
  3. Agreement. Lastly, you need a written Agreement. You need a document that will outline the payment, the amount of time you are allowing the person to use your trademark, as well as any other terms and conditions relating to the arrangement. This agreement should be drafted by a trademark lawyer that has experience with licensing. Don’t just use a free form or template that you find on the internet. It may not address all of the issues that you need for your particular deal. For example, it needs to have clauses to protect you in the event that payment is not sent as promised or if the person uses the trademark in a way that was not authorized by you.

Now that we understand how to license a trademark, we will continue our How to Make Money with Trademarks series by discussing how to market your trademarks to make money.

How to Apply for a trademark (part two)

Welcome to our seventh blog in the How to Make Money with Trademarks series. In our last blog, How to Apply for a Trademark, we talked about the actual questions that you will need to be prepared to answer when completing your federal trademark application. In this blog, we will continue our discussion on How to Apply for a Trademark by sharing more questions that you will see within your federal trademark application.

How to Apply for a Trademark

In our last post, we discussed the following elements to the federal trademark application:

  • Ownership of the mark
  • Contact Information
  • Information regarding the Mark

In this post, we will talk about three more questions you will need to be prepared to answer in your trademark application.

What is the Filing Basis? 

Your federal trademark application will require that you specify your “filing basis.” The filing basis let’s you tell the government if you are filing to register a mark that you are currently using in commerce or for a mark that you plan to use in the future. For example, if you already have a website and are actively promoting your goods and services, you would likely want to list your filing basis as “in use” since you are already using the mark. On the other hand, if you are registering a mark that you haven’t started using yet, you would want to use an “intent to use” filing basis.

Keep in mind that it is not enough to say that you are currently using the mark. You will have to provide the government with actual dates as well as an example, or specimen, of your actual use of the mark in the application. We will discuss the requirements for a specimen further in this article.

How are you using the Mark? 

Filing to register your trademark with the federal government does not give you unfettered rights to use your mark (name, logo or slogan) in any way that you want. Instead, you have to file for ownership of the mark within different “categories” which the government refers to as international classes. In your federal trademark application, you will need to list specifically which goods and services you are using (or plan to use if it is an intent to use application) with your brand.

This step is very important because you will not be able to go back and add additional goods and services unless you pay an additional fee. Whenever we are meeting with clients, our firm undergoes a detailed legal analysis to determine exactly which international classes would provide our clients with maximum legal protection based on their current and anticipated use of their mark.

What is your Specimen?

One of the last components to your federal trademark application will be submitting a specimen for the government to review with your application. A specimen is an actual showcase of the mark being used “in commerce.” A specimen cannot simply be a digital rendering or mock-up. For example, a t-shirt company would need to submit an image of an actual shirt featuring the logo of the brand that they are trying to register. A 3D image or rendering of the photo in Adobe Photoshop likely would not be sufficient. In the event that you are filing an “in use” application, the government wants to see an example of how you are actually using your mark in commerce as proof in support of your claim for ownership.

Now that we understand what applying for a federal trademark entails, we will continue our series by discussing how to license your trademark in our next blog.

Applying for a Trademark

There are several things you should know before applying for a trademark. We’re in the fifth installation of our How to Make Money with Trademarks series. Our first article was How to Make Money with Trademarks.  The second article in our series was What is a Trademark & How to Make Money with Them. In the third article we discussed How to Create a Trademark that Makes Money. In the fourth article, we learned How to Own a Trademark. Now, we’re going to talk about things you should know when applying for a trademark in order to protect your legal rights in the name, logo or slogan you created.

The 3 Types of Federal Trademark Applications

What is the TEAS Plus application?

Generally speaking, you will have the option of using one of three different types of applications when you apply for a federal trademark. The first type of application we will discuss is the TEAS Plus Application. This application is the least expensive application. In fact, the filing fee was recently reduced to $225 (it used to be $275). The reason this application is less expensive is because you have less options when it comes to describing how you will use your mark. For example,  both applications require that you describe the goods and services that you are currently using in association with your mark. However, the TEAS Plus Application only lets you choose from the goods and services that are predefined in the government’s Acceptable Identification of Goods and Services Manual (ID Manual) instead of being able to create your own descriptions as with the TEAS Regular application.

There are also a few other requirements in order to get the discounted rate due to the TEAS Plus application which are:

  1. Your application must be complete when you file it since most of the fields in the TEAS Plus application are considered mandatory.
  2. You have to identify the goods and services associated with your mark using the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual).
  3. You have to pay for all of the international classes associated with your mark when you file the application.
  4. You must file the application as well as any future responses electronically using TEAS.
  5. You must consent to e-mail communication and submit a working e-mail address.

What is the TEAS Reduced Fee (RF) Application?

The second type of federal trademark application is the TEAS Reduced Fee (RF Application). The TEAS RF is similar to the TEAS PLUS application but has less requirements:

  1. You must file the application as well as any future responses electronically using TEAS.
  2. You must consent to e-mail communication and submit a working e-mail address.

In exchange for meeting these two requirements, the filing fee for the TEAS RF application is only $275. It is a little more than the TEAS PLUS application but not as much as the TEAS Regular.

What is the TEAS Regular application?

The third and final type of federal trademark application is the TEAS Regular application. The TEAS Regular application is the most expensive federal trademark application of the three applications. The filing fee for the TEAS Regular application is $325. The reason this federal trademark application is the most expensive application is because it gives the applicant the most flexibility as it relates to their filing. The TEAS Regular is the most flexible because it allows the applicant to get a filing date and submit an application while meeting the following minimal requirements under 37 C.F.R. §2.21(a):

  • The applicant must include their name and address
  • The applicant must submit a clear drawing of the mark
  • The applicant must list the goods and services associated with the mark
  • The applicant must submit a filing fee for at least one class of goods or services.

Although we always recommend that our clients submit as much information as possible in order to avoid any delays in the processing of their application, the TEAS Regular application is a good option for individuals that want to at least get an early filing date even though they may not have everything else together.

Now that we understand the three different types of federal trademark applications, we will continue by discussing the components of the Federal Trademark Application and how to successfully apply for a trademark in our new article How to Apply for a Trademark.

 

How to Apply for a Trademark (part one)

Welcome to the sixth blog in our How to Make Money with Trademarks series. In our last blog, Applying for a Trademark, we talked about the three different types of federal trademark applications and the requirements of each. Now that you understand the different types of applications you can use to apply for a trademark, we’re going to dive into how to apply for a trademark.

The government has the tough job of reviewing trademark applications and deciding if they should approve the registrations. The way that they decide if they will approve the application is by asking questions in the trademark application. They assign an examining attorney to your file and they review the responses to see if your application meets the criteria that the law requires for trademark registration.

Trademark Application Questions

Let’s talk about some of the questions that you will have to answer within your trademark application:

Who Owns the Trademark?

One of the first things the government will want to know is who is the owner of the mark. The mark can be an individual, several individuals or even a business. Whenever we are filing a federal trademark application for a client, one of the first things that we do when discussing the application is to conduct a legal analysis to let our clients know if it is in their best interests to own the mark (e.g., the name, logo or phrase they want to register) as an individual or for their business itself to own the mark. In some cases, listing yourself as the owner may expose you to more liability. In other cases, there may be tax benefits for letting your business own the name or it may increase the value of the company when you sell. Either way, we recommend having an attorney conduct a thorough analysis of your individual situation before you make this decision.

How Can They Contact You?

The government needs to know the best way to reach you if and when they have questions. An important part of the review process is that the government will assign an examining attorney to your file that will oftentimes have additional questions which need a response by a specific deadline or you risk losing your application altogether. Some of the applications will offer you a discounted rate if you agree to receive and submit all of your communications via e-mail. You can learn more about the 3 types of trademark applications by reading our blog Applying for a Trademark. Either way, you will need to provide contact information that you check regularly so that the government can communicate with you. Another benefit that our clients get when hiring us to do their trademarks is that all of the communications from the government come directly to our office. We always forward them to our clients so that they have a copy. However, this makes us responsible for receiving and responding to them by the deadlines and keeps our clients from having to worry about missing an important e-mail from the government and having their trademark application terminated.

What is the Mark?

You get to chose between registering your mark as a “word or phrase” or by registering an actual illustration (logo, etc.) representing the mark. Most people immediately want to register the logo of their brand. However, there may be drawbacks to doing this because sometimes protecting the words will allow you to have greater and broader legal rights in association with the mark

These are just a few of the questions you will need to answer in your federal trademark application. Check out our next blog to learn about the remaining items you will need to be prepared to address within your application.

Contact Us

If you have additional questions or concerns about the federal trademark application process, or if you would like to schedule a free consultation to learn more about owning your name, logo or slogan, please feel free to contact us.

How to Own A Trademark

Have you ever wondered how to own a trademark? This is the fourth blog within our How to Make Money with Trademarks series. In the first article, we talked about  What is a Trademark & How to Make Money with Them. In the second article we discussed How to Create a Trademark that Makes Money. Now, we’re going to talk about how to legally own the rights to the money-making trademark that you’ve created.

What are Common Law Trademark Rights?

Let’s clear one thing up. Technically, you don’t have to file with the government in order to own the legal rights to a mark (e.g., name, slogan or logo) that you created. You simply need to have been the first person to begin using the mark “in commerce” to acquire ownership of the mark.  These rights are called “common law” trademark rights.

Why Should I Apply for a Trademark?

You’re probably wondering why you should even bother investing your resources hiring a trademark attorney to apply for a federal trademark if the law will automatically protect your ownership in the name. Well, the answer to this question is simple – registering your federal trademark gives you certain legal benefits that you won’t have otherwise.

One of the main reasons you may want to strongly consider registering your name as a federal trademark is that relying on common law rights may not be sufficient to prove your ownership. For example, someone else can hear the name and claim that they created it and started using it before you did. At this point, you may have to sue them in court in order to enforce your “common law” ownership rights. However, without having a properly registered trademark, it may be time consuming and expensive to hire an attorney and provide enough evidence to prove that you were in fact the actual owner.

Instead, you may be able to save yourself money and time by investing in a federal trademark up front. Here are some of the benefits.

What are the Benefits to Registering a Trademark?

  1. Ownership. One of the benefits of having a federal trademark is that if someone wants to use your trademark, they will need to ask for your permission (unless they want to use it for a reason covered by the “Fair Use Doctrine” which is a different topic). This means that you can feel confident investing in building a brand around your name (website, social media accounts, business cards, merchandise, etc.) knowing that the law presumes that you are the legal owner of the name.
  2. Make Money Licensing the Name. Owning a federal trademark also means that you can charge people for the right to use the name (license). This means that if an apparel company wants to use a slogan that you own the federal trademark for, you can charge them a percentage of their gross annual revenue each year for a license to use your slogan on their t-shirts, hoodies, and other merchandise. Not only does licensing build awareness for your brand, it also generates income for you!
  3. Make Money from Lawsuits. When you are the legal owner of a federal trademark, you also have the right to legally sue individuals that use your trademark without your permission (trademark infringement) for money damages.
  4. Make Money Selling Your Trademark.  If you have ever considered selling your business or company, one of the first things business brokers will advise you is that you need to make sure that you own all of the intellectual property (trademarks, logos, slogans, trade secrets, etc.) associated with your business. Otherwise, investors may not want to by something that they feel they may be sued later for since your trademark was never registered.
  5. Make Money Internationally. Another benefit to owning a federal trademark in the U.S. is that it gives you a legal basis (in some instances) to apply to own the trademark in other territories and countries. This allows you to also own the name abroad and make money licensing the name in other countries.
  6. The Right to Use the “®”. When you legally register your federal trademark, you can announce to the world that you are the registered owner, and further protect your legal interest in the mark, by using the the “Circle-R” or “®” registered trademark symbol.  This symbol offers legitimacy to your brand and puts others on notice that you are the registered owner of the mark. The federal government also has penalties for individuals that use the symbol when they are not a registered trademark owner.

These are just a few of the reasons why it may be beneficial for you to register your federal trademark. Check out the next blog on Applying for a Trademark within our How to Make Money with Trademarks Series to learn the steps you need to take in order to legally register your trademark.