Why shouldn’t I just register my trademark through an online legal service provider? As a trademark attorney, I get this question from time to time and enjoy providing a response. First, it’s important to note that in a certain sense, our firm views our clients as business partners. If there are any existing third party services that may be more practical and economical for a client, we do not hesitate to recommend it. Therefore, the purpose of this article is not put down competing services. Far from it, and in fact, such services may be appropriate for certain situations as discussed further below.
(Mis)Understanding the General Principles Behind Trademarks
The issue with selecting a trademark is that clients do not understand the general principles behind selecting, registering, using and enforcing a trademark, all of which are critical in the development and selection process of a mark or a brand. Federal trademark applications are submitted to the U.S. Patent and Trademark Office (USPTO), which staffs over 500 trademark attorneys (Examiners) that review and approve (or deny) applications. The Examiners review an application for a variety of potential issues, including without limitation, potential conflicts, proper description of goods/services, proper usage of the mark in a trademark manner, and so forth. As you can imagine, with over 500 Examiners and evaluation factors that are often highly subjective, selecting a mark and drafting an application can require substantial thought, strategy and due diligence.
For instance, under both federal law and common law, a mark generally rises to the level of protection if it is “distinctive.” More distinct marks receive greater protection, and marks are categorized along a continuum of distinctiveness: fanciful, arbitrary, suggestive, descriptive, or general. The categories are in declining order – “fanciful” marks receive the most protection, while “generic” marks receive none. The line is drawn between “suggestive” and “descriptive” marks, suggestive marks receiving protection and considered inherently distinctive, while descriptive marks receive no protection unless the mark has acquired a secondary meaning. While each category has a particular threshold, in general, a mark will have protection if it is distinct in nature and does not simply describe an ingredient, quality, characteristic or feature of the goods or service.
Proper Trademark Use
In addition, using a mark in connection with a particular good does not automatically ensure that such use is a proper trademark use of the mark. Different goods and services have different rules and requirements for evidencing the use of a trademark. For instance, a company may submit an application for registration of a trademark for a new clothing line and include pictures for the required “specimen of use” for a T-shirt embodying the mark on the front of the shirt. However, the USPTO may reject the specimen if it determines such use is “ornamental.” Unless the applicant can submit new specimens of use demonstrating non-ornamental use of the mark as of the date of first use set out in the application, the application will fail unless the applicant amends the date of first use in commerce. However, as we will discuss in future comments, the date of first use, i.e., priority of use is a critical component of trademark rights when dealing with potential infringement situations.
Fees and Costs
Moreover, the filing fee for a trademark registration is non-refundable. And each mark for each class of good or service has a separate filing fee, normally in the range of $275-$325 per mark per class. While these costs can add up, they are minimal compared to the larger potential costs of rejection of a trademark by the USPTO after what could be years of time and money investment into building a brand while the application is processed, or a lawsuit for trademark infringement by a third party that then seeks to attack your mark based on improper trademark usage.
What KHS Can Do For Your Business
As part of the business formation and trademark selection process, we analyze the client’s business operations and goals and current and prospective uses of the mark(s) in connection with the respective goods or services. We identify and address potential issues with the desired mark prior to registering the mark, and more importantly, prior to the company investing substantial time, money and resources in potentially weak marks.
Online legal services may be appropriate for situations where one has little to know budget for intellectual property protection and an extremely unique mark. That said, even if you feel you cannot afford to retain counsel to help with registering your mark, feel free to call us for a general consultation and we will help identify potential issues and different options to consider.