Trademark Status Information

Smith & Hopen partner Anton Hopen at the U.S. Patent & Trademark Office July 23, 2001 to  conduct examiner interviews.

Trademarks

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.  Click here to search for current and pending trademarks.

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.

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.

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.

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 filing 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

All documents in Adobe PDF Format

Trademark Flowchart

PDF of Trademark Prosecution Flowchart with Fees and Timelines.

Trademark Searching

PDF discussing various trademark search options available.

Trademarks Issued to Our Clients

OOPS!® was granted U.S. Federal Trademark Registration No. 3,415,991 on Tuesday, April 22, 2008 to David Terence Pemberton for insurance services. This trademark registration must be renewed no later than Tuesday, April 22, 2014.

BERING HOMES® was granted U.S. Federal Trademark Registration No. 3,412,260 on Tuesday, April 15, 2008 to Brier Patch Capital & Management, Inc. for residential construction services. This trademark registration must be renewed no later than Tuesday, April 15, 2014.

THE CONSCIOUS DECISION® was granted U.S. Federal Trademark Registration No. 3,408,790 on Tuesday, April 08, 2008 to Sweetpeas, Inc. for healthcare services, namely, holistic wellness programs. This trademark registration must be renewed no later than Tuesday, April 08, 2014.

TURNING HEALTH ON EDGE® was granted U.S. Federal Trademark Registration No. 3,408,718 on Tuesday, April 08, 2008 to University of South Florida for hospital and healthcare services. This trademark registration must be renewed no later than Tuesday, April 08, 2014.

TURNING RESEARCH ON EDGE® was granted U.S. Federal Trademark Registration No. 3,408,944 on Tuesday, April 08, 2008 to University of South Florida for educational services. This trademark registration must be renewed no later than Tuesday, April 08, 2014.

PROGRESSION® was granted U.S. Federal Trademark Registration No. 3,404,123 on Tuesday, April 01, 2008 to iDatix Corporation for computer software for work process design and documentation. This trademark registration must be renewed no later than Tuesday, April 01, 2014.

DRAWLOOP TECHNOLOGIES® was granted U.S. Federal Trademark Registration No. 3,405,255 on Tuesday, April 01, 2008 to Drawloop Technologies, Inc. for document automation services. This trademark registration must be renewed no later than Tuesday, April 01, 2014.

EVTIME® was granted U.S. Federal Trademark Registration No. 3,403,600 on Tuesday, March 25, 2008 to Wheeltime Network, LLC for repair or maintenance of emergency vehicles. This trademark registration must be renewed no later than Tuesday, March 25, 2014.

MOWERMAX® was granted U.S. Federal Trademark Registration No. 3,382,842 on Tuesday, February 12, 2008 to Atmax Equipment Co. for grass mowers and power-operated trimmers. This trademark registration must be renewed no later than Wednesday, February 12, 2014.

MOJO® was granted U.S. Federal Trademark Registration No. 3,381,778 on Tuesday, February 12, 2008 to MOJO Publishing, Inc. for administration of a discount program enabling participants to obtain discounts on goods and services through use of a discount membership card. This trademark registration must be renewed no later than Wednesday, February 12, 2014.

TIPCLIP® was granted U.S. Federal Trademark Registration No. 3,370,608 on Tuesday, January 15, 2008 to Tip Clip, Inc. for metal money clips. This trademark registration must be renewed no later than Wednesday, January 15, 2014.

THERMAL MATRIX® was granted U.S. Federal Trademark Registration No. 3,370,612 on Tuesday, January 15, 2008 to Thermal Matrix, Inc. for design and engineering of sensor equipment for threat assessment purposes. This trademark registration must be renewed no later than Wednesday, January 15, 2014.

IDEAS START HERE® was granted U.S. Federal Trademark Registration No. 3,365,796 on Tuesday, January 08, 2008 to Engineering and Manufactoring Services, Inc. for computer aided design for others; consulting services in the field of design, selection, implementation, and use of computer hardware and software for others; design and testing for new product development; design and testing of new products for others. This trademark registration must be renewed no later than Wednesday, January 08, 2014.

INTELLINET NETWORK SOLUTIONS® was granted U.S. Federal Trademark Registration No. 3,362,474 on Tuesday, January 01, 2008 to IC Itracom Holdings, LLC for computer hardware and peripherals. This trademark registration must be renewed no later than Wednesday, January 01, 2014.

INFINIWORX® was granted U.S. Federal Trademark Registration No. 3,360,249 on Tuesday, December 25, 2007 to Microsystems Technology, Inc. for computer programs for document management. This trademark registration must be renewed no later than Wednesday, December 25, 2013.