The value of trademark protection

The most valuable properties in the world are not the Sears Tower, the Tokyo Municipal Building, or some other physical property; they are brands such as APPLE, MICROSOFT, GOOGLE and EXXON. 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.

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 another company.

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 owned.

Can I Reserve a Trademark for Future Use?

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.

Trademark Amendments

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.

Overseas Trademarks

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.

Documentation

AllAll documents in Adobe PDF Format

Proper Use of Trademark Federal Registration

Proper Use of a Federal Trademark Registration - Fact Sheet

FDA Label Compliance

FDA Label Compliance Guide

 

Trademark SpecimensAvoiding mutilation of a trademark - how to use the trademark property for statement of use, allegations of use, renewals and declarations of use.

PDF guide to using a trademark properly and avoiding "mutilation" of a trademark by varying it's presentation.

Trademark Searching

Determining Whether to Institute a Trademark Search and Opinion
PDF discussing various trademark search options available.

Trademark Searching

Trademark Questionnaire - Fillable PDF.  Copyright 2008 Smith Hopen PA

PDF trademark questionnaire.

 

Reassignment of Trademark Attorneys - Process Explained
Reassignment of Trademark Counsel


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