- Search first. Search the USPTO (consider variations in spelling, spacing, and word order) so that you know what potential obstacles lie in front of the application. Of course, a comprehensive clearance search should be done as well because someone using a similar mark prior to you in a related or competing industry, even if they do not have a registration, is a significant potential problem.
- Words are generally more important than designs. A registration for a design technically covers just that design. A registration for words (a “standard character” trademark) covers all variations of the wording. In other words, when you register a logo you can only use ® next to the logo. When you register words, you can use ® whenever those words are used – in text, in logos, and more. Registering words alone will also provide better protection regarding domain names and usernames. Note that creative and distinctive logos should be protected, but they should be generally be protected in a separate application. But while generally protecting wording is more important, sometimes the best registration strategy – due to descriptiveness issues or potential conflicts – may be to file only for a design.
- Black and white is better than color. A large majority of the time, it makes sense to file in black and white, which protects all colors, rather than to technically protect only the color scheme provided in a color image. Of course, when color is integral to the brand, it may make sense to file in color – or to file two applications, one black and white and one covering particular colors.
- Be Patient. It takes the USPTO about 3 months on average to open a new application and review it for the first time (and this is much better pendency than in the past). In general, when filing based on use of the trademark in commerce, the entire registration process takes about 1 year – and can take far longer if there are hiccups in the process or a “suspension” of the application pending the outcome of some other earlier filed applications.
- Check the status. To make sure the process is completed as quickly as possible, it is advisable to stay on top check the status every month or so – at a minimum – via the USPTO website to ensure that a correspondence from the USPTO – generally via email – was not lost or missed. Our custom built internal software checks the USPTO status for each application we handle every single day – and is a savior because on occasion USPTO emails get bounced, or physical mailings get lost, delayed or sent to the wrong address. I have also created a free cloud-based tracking tool that anyone can use, sofTMware (www.softmware.com).
Posts Tagged ‘trademark registration’
There are three particular concerns that affect small businesses when protecting their trademarks:
- prioritizing which trademarks to protect within a portfolio of brands and logos
- finding a law firm that they are comfortable working with
For more on these challenges, see my video below:
Of course, there are many challenges for small businesses when it comes to trademark protection, but these are three of the most common and most important.
An article I recently co-authored with Elizabeth M. Dukette (a recent law student intern at our firm) has been published by the American Bar Association Section of Intellectual Property Law in its LANDSLIDE magazine.
“[O]btaining trademark registrations in a band name or other marks used by an artist can be useful to protect profits and prevent the dilution of a valuable brand. Further, taking the steps to clearly identify who owns what part of that bundle of rights upon dissolution could prevent long, expensive, and potentially damaging litigation.”
The article discussed efforts by musicians to protect their brands, as well as frequent trademark pitfalls that they often encounter. The article discusses why trademark registration is valuable when it is available for musicians and other artists.
Please enjoy and share the article, and let me know any feedback you have in the comments below.
I am pleased to share the first of my series of new videos. In this video, I speak about three top trademark misunderstandings. Let me know what you think! And thank you to the incomparable client and friend Chad Barr for the video shoot and production!
Top Trademark Trends™ of 2015
By Erik M. Pelton (Erik M. Pelton & Associates®)
In 2015, the field of trademarks featured many developments. Two major court cases featured significant developments but left much unsettled. Nearly every major story in the news was followed by related trademark issues. In all, 2015 was an exciting year for trademarks.
US trademark filings increase again. For the sixth year in a row, the number of trademark application filings submitted to the US Patent and Trademark Office (“USPTO”) has increased. However, this year’s increase of nearly ten percent was even larger than those of the last several years. As a result of the increased filings in recent years, the overall number of active US trademark registrations sits at an all-time high, nearly 2.1 million.
Supreme Court weighs in on trademark law. In March, the Supreme Court issued its first significant trademark ruling in years. B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015). The Court held that proceedings at the Trademark Trial and Appeal Board (“TTAB”) of the USPTO have a preclusive effect in later District Court actions when the proper conditions are met; it may take a few years before we know the full ramifications. In the short term, it means that the decision for some trademark plaintiffs whether to file a claim at the TTAB or in District Court may be more complicated, and the stakes may be raised in all trademark disputes as the consequences are more significant.
Refusal to register “disparaging” trademarks held unconstitutional. In December, the Court of Appeals for the Federal Circuit (“CAFC”) held that the USPTO was wrong to refuse to register the name of a band, The Slants, on grounds that the name is disparaging. The CAFC held that the portion (in Section 2(a)) of the Lanham Act statute barring registration of disparaging terms violates the first amendment protections for private speech. The case could be appealed to the Supreme Court in 2016, and will likely affect the years-long saga involving the Washington Redskins trademarks.
Google and other logos get sleeker. Google unveiled a major logo redesign, but the design change was minimal. The significance of the change is that it created a more streamlined and sleek design package. In 2015, Verizon, Facebook, Spotify, OpenTable, and others also made subtle tweaks to their logos, all of made for simpler designs that are easier to read on small screens. As more brand interactions are online and mobile, look for other brands to simplify their logos next year as well.
Pop culture reflected in trademark applications. Major events in the news throughout the year were reflected in trademark application filings. For example, there were filings for Je Suis Charlie, Cecil the lion, Caitlyn Jenner, Donald Trump’s Make America Great Again, and Deflatriots. Taylor Swift also made news by filing scores of new trademark applications in 2015, including SWIFTMAS.
On tap for 2016. I predict that next year in trademarks will include further developments in the Redskins and Slants cases regarding allegedly disparaging trademarks, an increase in some USPTO trademark filing fees, and a meeting of the five largest trademark offices (the ‘TM5’) in China next fall. Despite a contentious presidential election, companies will continue to innovate and to invest in new trademarks.
© 2015 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
About Erik M. Pelton: Erik Pelton® has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates®, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 2,000 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2015, Erik presented on trademark and branding issues to a variety of audiences, including the American Bar Association and a high school class.
Past editions of Top Trademark Trends™:
- 2014: http://www.erikpelton.com/2014/12/31/top-trademark-trends-of-2014/
- 2013: http://www.erikpelton.com/2014/01/13/top-trademark-trends-from-2013/
- 2012: http://www.erikpelton.com/2013/01/14/top-trademark-trends-of-2012-scams-gtlds-celebrities-and-more/
- 2011: http://www.erikpelton.com/2011/12/14/top-trademark-trends-of-2011/
- 2010: http://www.erikpelton.com/2011/06/11/top-trademark-trends-of-2010/