Are you wondering “how do trademarks work?”
Trademarks protect intellectual property, and most of us don’t know how they work, or how to get one.
But if you need a trademark, there are some things you should be aware of. Like having an intellectual property lawyer toranto.
Check out our legal guide here on the key things to understand.
What is a Trademark?
A trademark is something that sets apart the source of goods of a party from other parties. It’s usually a word, phrase, symbol, design, or a mixture of all these things. Trademarks, patents, and copyrights protect intellectual property.
Trademarks will usually protect a brand name and logo that’s used for goods and services.
Copyrights protect artistic and literary works, and patents protect inventions.
For example, say you’ve invented games console.
You would patent to protect the invention.
You would then register a trademark to protect the brand name you’ve given the console.
You would register a copyright for any TV commercials you use to then market your product.
Trademarks protect against infringement, as well as damage caused by other firms.
With one in place, you can sue another company if they use your likeness or claim it as their own.
This extends to registered and unregistered trademarks.
Starting the Process
You should do a trademark search before you name your business, product or service.
It’ll bring up any potential problems you might face before you end up having to face them.
Because of this, it’s a good idea to conduct an online trademark monitoring, so you can find out if the name you want is available so you can avoid getting in legal trouble afterwards.
For example, any confusion with an already registered mark, or marks pending approval.
It’ll save you the expense of applying for a mark you’ll likely not get due to another party having stronger rights.
It’ll also save you from any rebranding or litigation costs if someone else has something similar or the same.
If your name appears in other registrations or is too generic, it’s hard to protect.
Where Do I Search?
The USPTO (United States Patent and Trademark Office) have a free search system. It’s known as the Trademark Electronic Search System or TESS.
You can access this 24/7.
There is a help page with guides to navigate registered and pending applications. You can find any marks that may prevent you from registering yours.
It’s important to note that the USPTO will not do a search for you before registration.
It’s on you to do it if you want the best chance of success.
After filing your application, they will do a search and let you know as part of their examination.
If they find anything that’s confusing and similar, they’ll refuse your application.
Hiring a Trademark Lawyer
The application process is a legal matter.
As is any decision appeal that you may want to take to the TTAB (Trademark Trial and Appeal Board).
Any of these things need you to work in compliance with U.S trademark rules and laws.
A trademark lawyer who’s licensed in the US can help you navigate all this.
You also must have a US-licensed lawyer to represent you at the USPTO if you’re outside US territories.
Once you’ve hired a trademark lawyer, the USPTO will only communicate with them.
The Application
As discussed, your trademark lawyer will be able to assist you with this, but here is an overview of the process.
The Drawing
Each application has to include a clear image of your mark, referred to as the drawing.
The USPTO uses the drawing to upload your mark not their search database.
They also print it in the Official Gazette (OG) when registering a certificate.
If you have any variations to this mark you want to register, each will need its own application.
Reason for Filing
Your application has to include a reason for filing.
In the U.S most applicants will base it on their current use of their mark in the business, or their future intent to use it.
But what is the difference?
In both cases, you must prove you use the mark in for the goods/service you’re listing in the application.
You must prove this before registration by submitting an acceptable specimen.
The main difference is the fact of whether you’ve started using the mark or not.
If you’ve started using it, you file under use-in-commerce.
If not, but you intend to in the future, it files under intent-to-use.
Intent-to-use applications have an extra form to fill out, and a fee to pay. This is not necessary if you’re filing under use-in-commerce.
The Specimen
The specimen is a real-life sample of how you’re using your mark in your goods and services.
It’s not the same as the drawing which shows only how the mark looks.
Your specimen will show your mark how your customers see it.
For example, this would be the mark on a product or packaging.
Or it’s a website page that’s displaying your mark for marketing purposes.
The Application Review
Around 3 months after application submission, it’s assigned to an examining attorney.
This examination is a legal and procedural requirement.
It decides whether federal law allows the registration.
The examining attorney looks at the written application, your drawing, and any specimens.
They will make sure that it all complies with all federal legal requirements.
If there are no refusals or extra requirements, or when you’ve resolved these, it’s approved. Your mark is then published in the OG.
The USPTO will prove you with a Notice of Publication that states the publication date.
With no extension of time or opposition filed, or if you overcome any opposition, there’s no action to take to get to the next step.
If things go well, you’ll usually get a registration certificate 11 weeks later.
If there is opposition, then this can cause delays while defending your application, or even stop the application altogether.
How Do Trademarks Work? It’s Simple!
So there you have it! Now the next time someone asks, “How do trademarks work?” you have the answer.
Remember that trademarks are essential for protecting your business and assets.
But they are very different from copyrights and patents, so make sure you’re applying for all the legal rights you need.
If you found this article useful, make sure to check out our other blog posts today!