The answer is that trademark registration is appropriate when you are trying to protect the name (and/or associated logo or slogan) of a business, a product or a service that you are offering.  On the other hand, a copyright protects a work of art such as the contents of a book or a movie (remember this means the contents of a book or a movie, not the title).

For example, a trademark registration protects the name of a software program such as “Microsoft Word.”  The trademark registration prevents any other company from making a program and calling it “Microsoft Word.”  A copyright protects the software code that makes up the program (thus preventing someone from copying the program’s code and reproducing it without Microsoft’s consent)

Another example is that a trademark registration would protect the name of a band such as “The Black Eyed Peas.”  The trademark registration prevents any other band from using this name to sell music.  On the other hand, a copyright protects the music the band produces (thus preventing someone from copying and distributing the music without the band’s consent – think Napster).

For more information on trademark registration please visit our home page: Trademark Armor.

Generally speaking, a trademark is a word, symbol, device or name that identifies the source of a good or service. Therefore, your trademark could be just a name, or it could be a logo, a slogan, or “tagline.” More recently, trademark law has expanded to the point where you can even register a particular smell as a trademark. At the very core, a trademark is used to associate a good or service with a particular company. Trademarks are intended to prevent consumer confusion by immediately distinguishing the producer of a good or service.

In order to assist you in completing a successful trademark application that will not be denied by the USPTO, I will utilize our trademark search software to search for any existing marks that may potentially conflict with yours. If such a conflict arises, I will offer my legal advice to you as an attorney on the risks involved in proceeding with your particular application or what you may need to change about your mark to avoid an infringement issue.

In addition to receiving questions about trademarks, I often receive many inquiries concerning patents and copyrights. While all three may appear similar, there are important distinctions that exist between each. As previously stated, a trademark protects an identifier of a good or service. Patents, on the other hand, protect ideas like inventions. Lastly, a copyright protects original works that are typically placed in the following categories: literature, dramatic, musical, artistic, and intellectual. Therefore, the content of a book is protected by copyright law while the name of a series of books (e.g. Harry Potter) would be protected by trademark law.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

Once we have completed a thorough and detailed trademark search and found no conflicting trademarks, our next step is to assist you in drafting and filing a trademark application that we are confident will be approved by the USPTO. The application is ultimately filed online using the Trademark Electronic Application System or TEAS.

There are a few elements of the application that I would suggest preparing prior to beginning the application process. These items include: a scanned JPEG file of the drawing of the mark and a scanned JPEG file of an actual example of how the trademark is being utilized in commerce. By offering my legal advice and assistance in the preparation of these critical components of the application, I make certain that your application is as well assembled as possible.

Furthermore, the trademark application will require that you specify the mark type as either standard characters or special form. A standard characters mark is one that does not contain any design element. In contrast, a trademark that is categorized as special form does include a design element. I will help you make the decision as to which type of trademark is appropriate for your product once we review your file.

The next section of the application pertains to goods and/or services information where you will need to complete of list of goods and/or services for your application. After reviewing the description of your product we will draft a legal description of your product that is appropriate for the application.

After we complete the application, you will receive an email which will allow you to review and approve the application for submission to the U.S. Government. At that time your application will be filed and your product name will be well on its way to receiving trademark protection. For any questions on how to trademark a product name please contact Josh Gerben Trademark Attorney.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

The reason potential danger is afoot when you trademark a logo is that many individuals are under the impression that they can trademark a logo and trademark a name in the same trademark application.  For example, if your logo and name are one in the same, many individuals suspect they only have to make one trademark filing.  The problem with only making one filing is that if your logo were to ever change (i.e. you went through a re-branding in the future) you could actually lose the trademark rights in your name as well.

The reason for this is that trademarks have a use requirement.  If you do not use a trademark someone else can petition the trademark office to have your trademark canceled.  This means that if you “re-brand” and ever discontinue the exact use of the logo that you filed as a trademark, the entire trademark could be canceled.  Therefore, the name that was a part of the trademark filing would also be canceled, which would open the door for someone else to register the same or similar name as a trademark.

The best advise when it comes to obtaining a trademark on a logo is to file two trademark applications.  File one application to trademark your logo and a second application to trademark your name.  This will ensure that your trademark name is always protected even if your logo changes in the future.

For more information on how to trademark a logo, click on the link below.

A comprehensive trademark search and filing package includes not only a search of federal trademark filings to ensure no one else has filed for a federal trademark, but also includes a search of each state’s trademark database and a search of all unregistered use of the proposed trademark.  The reason this comprehensive trademark search and filing package is so important is that if anyone else had made a state trademark filing or simply had used my client’s proposed trademark in commerce (i.e. common law use of the trademark) prior to the filing date of my client’s trademark with the United States Patent and Trademark Office, this individual or company would have the right to keep my client from using the trademark in the geographic region in which the trademark was being used prior to my client’s federal trademark filing.  This could severely limit my client’s ability to use their trademark as they desire.

Therefore, it is only a comprehensive trademark search and filing package that can give full legal clearance for use of a trademark.  If a client elects only to conduct a federal trademark search on their trademark they may not know about a state registration or common law use of their proposed trademark which could limit their trademark rights.

For more information on Gerben Law Firm’s comprehensive trademark search and filing package please contact Attorney Josh Gerben at (202) 294-2287.

When you undertake the process to trademark your name, a good trademark attorney will recommend that your first conduct a trademark search on your name.  This is because if someone else has filed a trademark for the same or similar name prior to your now imminent trademark application, the United States Patent and Trademark Office can deny your trademark for your name.  Therefore, the process of obtaining a trademark on your name is a good way to slow down and ensure the name you have selected can be used without infringing on another company’s trademark rights.

The second reason that the answer is almost always “yes” to the question of “should I trademark my name” is that when you obtain a trademark on your name you obtain the presumption of national ownership on the name. This is extremely important to a company that plans to expand in the future.  For example, even if your company’s operations today are only in New York and Pennsylvania, a trademark can help you expand to California in the future without any problems.  Let’s say that you expand to California in five years only to discover someone else has been using your name as their trademark.  If you had obtained a trademark on your name you can force this other company to stop using the name as their trademark (so long as their use began after the date you filed for your trademark).   If you had not obtained a trademark on your name, the California company could continue to legally used your name in California and force you not to use the name as your trademark in the California market.  Therefore, obtaining a trademark on a name is extremely important if you plan to expand outside of your current market.

As you can see, when you trademark a name it gives you a national right to use the name (and prevent others from using the name) as of the date your trademark application is filed.  After the filing date (presuming the trademark is ultimately approved) no other company can claim a trademark right superior to yours in the name.  In today’s competitive marketplace a trademark of a name can be an extremely valuable asset to any company.