What Are Trademarks?
Trademarks come in many forms, but their defining quality comes down to one simple thing: they represent and identify products, content, and/or services from a specific entity (specifically, an individual, business, or legal entity).
A trademark is a kind of intellectual property, thus there are many things that can be trademarked, including:
- Expressions (for example, “I Pity The Fool” has been officially trademarked)
- A word, multiple words, or phrases
- Colors (Barbie Pink, Wiffle Ball Bat Yellow)
- Sounds (the Law & Order “chug chug”, 60 Minutes’ ticking stopwatch)
- The way in which certain products are packaged (think Hershey’s Kiss)
Once something has been officially trademarked, it can be legally protected and enforced. That is to say, legal action can be taken if someone is using your trademark (or a mark that is confusingly similar to your own) without your permission.
All it takes is having your trademark registered, preferably with the help of a U.S. trademark attorney (this includes Canadian businesses who are now required to be represented by a U.S. attorney for trademark registration).
How Do I Get Something Trademarked?
Registering a trademark is now easier than ever. Most people can file an application for one online in just over an hour. You can do this on the USPTO’s website.
Before you submit your application, however, it’s a good idea to do a comprehensive search to see if the mark you have in mind is already registered to another business. Keep in mind, your mark doesn’t have to be an exact match with an existing trademark for it to be rejected; marks that are “confusingly similar” to existing trademarks will result in your application being rejected.
Before submitting your application, do a thorough search in the USPTO’s Trademark Electronic Search System (“TESS”). This is a database that contains information on existing trademarks.
Canadian & Other Foreign-domiciled Businesses Are Now Required to Retain a U.S. Trademark Attorney for USPTO Submissions
As of August 3, 2019, foreign patent agents can no longer represent their clients before the USPTO. The main reason for this change is to help the USPTO ensure that registrants and applicants are in compliance with trademark law. There have been too many foreign-domiciled trademark applicants who have submitted inaccurate or fraudulent files. This law thus ensures registers maintain integrity and accuracy in their trademark filings.
Why Hire a Trademark Attorney?
Trademark attorneys specialize in trademark law, including all factors of registration, protection, and enforcement of trademarks.
Deciding on a unique, powerful, and successful trademark is time consuming and difficult. You’re likely to miss the fact that the mark you have in mind already exists, or one confusingly similar to it exists, and thus the USPTO will require you to make revisions. A trademark attorney, on the other hand, can engage in a comprehensive trademark search for you. They’re likely to find existing trademarks that you would have missed.
Trademark attorneys can also help with the registration process, which can be confusing if you have never done so. They know all the ins-and-outs of trademark registration, so you’re likely to have your mark approved without any delays or unnecessary headaches.
Protection & Enforcement
Once your trademark has been approved, your attorney can help you protect and enforce it in the future. Remember: it’s up to you to enforce your trademark; the USPTO isn’t going to do that for you.
You don’t want another party using your trademark, or one confusingly similar to it, without your permission. This is likely to damage the reputation of your brand and hurt your business. A trademark attorney can construct and send cease-and-desist letters backed with the threat of legal action. Finally, if legal action does need to occur, your attorney can file suite.
Many trademark attorneys also offer trademark monitoring services. This is something that is likely to consume a great deal of your time if you attempt to do this yourself.
Other Services Trademark Attorneys Offer
- Legal advice on the adoption and selection of new trademarks and how best to use them
- Handling invalidations, assignments, oppositions, and revocations
- Finding problems that may arise with the adoption of certain trademarks
- Evaluating the strengths and weaknesses of a trademark