The value of trademark protection
The most valuable piece of property in the world is not
the Sears Tower, the Tokyo Municipal Building, or some other physical
property; it is the Coca-Cola trademark valued at $72.5 billion dollars. Every year, thousands
of U.S. companies are granted trademark registrations. Many trademarks
increase in value every day. Securing and protecting your trademark rights
serves your business in a number of ways.
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Increase Business Assets
Successful businesses realize the value of customer goodwill
generated through the public’s association with their trademark. A registered
trademark is a recognized business asset which may contribute to the overall
value of a company. In addition, licensing or franchising your trademark may
lead to unrealized revenue.
Avoid Costly Errors in New Product Development
It is rarely advisable to launch a new product or service
without commissioning a comprehensive trademark search. Your company may lose
its rights to its business name, trademarks and service marks if they are not
carefully selected and properly used. Companies often invest considerable sums
of money promoting a new product or service only to be forced to destroy their
marketing materials and start over because the mark was already in use by
Protect Internet Domain Name Rights
Without proper protection, your company’s reputation and
goodwill can be held hostage by cybersquatters. (people who register a domain
name on the Internet and ransom it for sale) Registering your company’s
trademark provides swift and effective recourse not only to exact duplications
of your mark, but also to confusingly similar marks.
How to Protect a Trademark
First of all, if you have invented a pavement sealing compound, don't
try to register Pavement Sealing Compound as its trademark. Generic or descriptive words
or phrases are unregisterable because those words must remain in the public domain for
everyone's use. A generic or descriptive word or words follows the trademark.
Thus, a good trademark for a pavement sealing compound might be something like Arnold's
pavement sealing compound; note that "Arnold's" is the trademark and it is
followed by the generic description of the product, like Pontiac automobile, Maxwell House
coffee, and so on. The trademark is capitalized or written in CAPS, or stylized in some
other way, but the generic or descriptive expression that follows it is not. Thus,
FLAMINGO FIREWORKS is not a trademark; only Flamingo or FLAMINGO is; the
"fireworks" expression is generic.
It follows that you should use your own trademark correctly in all of
your literature. Don't tell your customers in the pavement sealing industry:
"Whenever you have a pavement that needs to be sealed, just Arnold's it." That
usage represents an improper use of the Arnold's trademark; specifically, it uses the
trademark as a verb whereas the only correct use of a trademark is as a proper adjective
that modifies a generic or descriptive identification of the goods or services. Use of the
trademark as a verb can inject the trademark into the public domain, thereby destroying
all trademark rights. That's why Xerox Corporation has taken out ads in major newspapers,
pleading "Please don't use our name as a verb, as in 'Xerox this.'" The Xerox
Corporation has a major trademark problem on its hands; people commonly say "Make a
Xerox of this" even if they are referring to use of a copy machine of an entirely
different brand name, i.e., the term "'Xerox" is in danger of becoming the
generic word for making copies. The point is this: Use your trademark properly and insist
that others use it properly as well. It may well become the most valuable asset you ever
Can I Reserve a Trademark for
Yes; the only requirement is that you must have a good faith
intent to use the mark in commerce in the near future. Thus, you can't reserve dozens of
potential trademarks, because unless you're Proctor & Gamble, chances are you lack the
manufacturing and financial capacity to introduce that many new brandnames into the
marketplace in the foreseeable future. A trademark application typically takes a year and
a half or so to process, during which time you are perfectly free to use your trademark.
When the application process is over, the PTO will issue a Notice of Allowance, and give
you six months to start using the mark. If you need more time, you can get it, for a few
hundred bucks, up to a couple of years. Thus, you can reserve a trademark for about three
and a half years before you actually need to use it. If you're not a major corporation,
however, there is little reason to request so much time to use the mark. You'll pay an
extra fee of to the Commissioner of Patents and Trademarks if you file the trademark
application as an Intent-To-Use (ITU) application, but that extra expense is not incurred
upfront; you pay it down the road when the mark is actually used. You'll also incur a
legal fee at that time for preparation of a Statement of Use.
How to Renew a Trademark
Under current law, a trademark owner must file a Declaration of Use
with the Patent and Trademark Office at any time during the sixth year of the mark's
registration. In other words, during a one year window that opens on the fifth anniversary
date of the registration; if no Declaration of Use is filed by the sixth anniversary, the
registration expires but the mark's owner retains ownership of the mark under the common
law if the mark continues to be used in commerce. It is customary to file a Declaration of
Incontestability at the same time the Declaration of Use is filed. Trademarks and service
marks are renewable perpetually every ten years, measured from the date of registration.
Drawing and Search Costs
If a regular or ITU trademark application is filed, our legal fee
covers the preparation and filing of the application, but does not include a drawing
charge if the mark is in the form of an artistic logo. Marks used simply in all caps, such
as "KODAK," require no drawing charge because they are "drawn" by
typing them. The legal fee also does not cover the filing fee payable to "The
Commissioner of Patents and Trademarks", nor does it include the search fee.
Some trademark applications require amendment which require an
additional fee. The amendment, if necessary, is usually encountered about four months
after the fiĂing date of the trademark application. There are no issue fees associated
with trademark applications, but if registration of a mark is formally opposed by a third
party, the PTO treats the issue as a litigated case and substantial additional legal fees
at the $200-250 hourly rate for litigated matters may be incurred in responding to the
opposition. Oppositions are quite rare.
Trademark applications may also be filed overseas. We recommend against
such filing, of course, if you have no means of marketing your product overseas. You can
obtain trademark protection in fifteen European countries by filing a Community Trademark
application; the official filing fee is about $1200.00 but there is also a registration
fee at the end of the process that is about $1400.00. The fifteen countries,
including about 360 million consumers, are: Austria, Belgium, the Netherlands, Luxembourg,
Denmark, Finland, France, Germany, Greece, Ireland, Italy, Portugal, Spain, Sweden, and
the United Kingdom. There are no treaties for filing trademark applications in Asian,
African, or other countries outside of the European Union. Thus, a trademark lawyer must
be hired in the non-European country of interest.
All documents in Adobe PDF Format
PDF of Trademark Prosecution Flowchart with Fees and Timelines.
Proper Use of
Trademark Federal Registration
PDF guide to using a trademark properly and avoiding "mutilation" of
a trademark by varying it's presentation.
PDF discussing various trademark search options available.
PDF trademark questionnaire.
Reassignment of Trademark Counsel