First, periodic filings are required to retain your trademark.  These filings are due 5 and 10 years after you get your trademark and then every 10 years thereafter.  You must prove in these filings that you are using the mark in commerce exactly as the trademark was filed.  The deadlines for the trademark filings are firm and missing a deadline can be extremely costly, often leading to loss of your trademark.

Second, protecting your new trademark is an essential part of retaining your trademark.  As the trademark owner it is your legal responsibility to adequately police your trademark and make sure no one is infringing upon it, failure to do so can result in the loss of your trademark rights.  This can be a difficult task as adequate protection of your mark requires constant monitoring of new trademark applications with the USPTO and also watching for infringing use of your trademark in commerce.

To assist with these duties and responsibilities, I offer a “Trademark Monitoring” service.  This services works to ensure that 1) No one infringes on your trademark; 2) You continue proper use of your trademark; and 3) You never miss a trademark renewal.  If you are interesting in this service please contact me at 1-877-350-6275.

It is extremely important when selecting a trademark to ensure it use unique enough to quality for trademark protection.

On one extreme, the most protectable type of trademark, often referred to as a “fanciful” mark, is a mark which is a completely made up word.  An example of such a mark is Kleenex, which not a word until it was invented by the company and thus has no dictionary meaning.   The value of a fanciful mark in particular is that nobody can really validate their use of the mark legally because the word did not even exist until you created it.  Another type of mark that is generally very strong is a mark which bears no obvious relation to the product it represents, such as Apple referring to computers.  Because these marks have no obvious relation to the product to which they refer, they are highly protectable trademarks.

The weakest trademarks, on the other hand, are marks which clearly relate to the products to which they refer.  For example “Flame-grilled Chicken” as a name for a restaurant that features flame-grilled chicken is clearly descriptive and lacking in creativity.  It would be virtually impossible to even register this trademark.

Your best bet as you create your mark is to be as creative as possible and stray away from anything that could be seen as describing the product or service you intend to offer under the trademark.  The more arbitrary the relation of the mark to the product is, the stronger your mark will be.  The originality of your mark proportionally increases its strength.

If you have any questions regarding the strength of your proposed trademark please call trademark attorney Josh Gerben at 1-877-350-6275.  You may also visit the US Government’s trademark Web site at www.uspto.gov for more information.

For more information on my trademark registration services please call 1-877-350-6275.

To view the press release from the Corporation Service Company please click here.

When filing a trademark, the US Government asks the trademark applicant whether the trademark has been “used in commerce” or if the trademark applicant “intends to use” the trademark in commerce in the future.   Many trademark applicants make the assumption that claiming use is “better” and therefore make up reasons they believe constitute “use.”  This is extremely risky behavior.   All trademark applicants should be aware that if the trademark application does not meet the statutory definition of trademark “use”, yet “use” of the trademark is claimed in the trademark application, then the trademark will be subject to cancellation at almost any time for the making of a fraudulent statement to the USPTO.

Because of the consequences associated with making an inaccurate statement in a trademark application, the question of what constitutes “use” of a trademark under federal law is one that frequently arises.  One of the overriding guidelines for the use in commerce is that the trademark cannot be “used” just to obtain or reserve the trademark registration without intention of continued future use.  This general rule exists primarily to prevent people from speculating about which trademark names could be desired in the future and registering them purely in the hopes of eventually selling them for profit.

The issue I run into all the times is that clients always want to believe they are “using” their trademarks.  For example, many client claim that they are using their trademarks because they have shipments of product in from the manufacturer, they have intracompany use of the trademark, or they have sold a product or service to personal friends and relatives.  These are all examples of unacceptable “uses in commerce.”

The good news is that applying for a trademark as “intent to use” is not necessarily a bad thing.  Provided your trademark is strong enough, you can obtain priority on your trademark as of the date of your trademark filing.  This is because the USPTO wants you to be protected while you are in the process of starting your business or bringing a new product or service to market.  If you file as intent to use you have approximately one year from the date you file your application to prove to the USPTO.

The bottom line is that the issue of “use” in trademark law can be relatively difficult to navigate — and can have severe consequences if not handled properly.  If you retain my firm to assist with your trademark registration, as your trademark attorney I will assist you with this any many of the other tricky issues associated with registering a trademark.

1.  Federal trademark registrations are used by major companies to police trademark rights.  For example, Google, Facebook, Yahoo, etc. all have trademark policies.  The policies heavily favor the owner of a federal trademark.  If you have a federally registered trademark and there is some infringement of your mark going on in their system (think how big Google is),  you can write a letter to their trademark enforcement department and most of the time the infringing use is stopped within a week or two.  Compare this with going to court and spending tens of thousands in legal fees to enforce a trademark.

2.  Trademarks are like property – they appreciate in value.  A trademark can be bought, sold or licensed.  Therefore, if you were ever attempting to sell your business one day, ownership of the federal trademark could significantly increase the purchase price.

3.  Federal trademark registration ensures protection of your intellectual property.  I’ve seen it happen where someone does not register a trademark and then someone else files something similar that then prevents that individual from using their trademark.  I then get the “how do we fix this” call.  Unfortunately, there are not good fixes to this problem.  With 7 billion people on the planet, your idea will occur to someone else.  Obtaining a trademark ensures you will not have to worry about someone else being able to limit the use of your trademark.

4.  If franchising your business is a consideration, you should always (and I mean always) ensure your trademarks are properly protected.

For more information on trademark registration please call trademark attorney Josh Gerben at 1-877-350-6275

At Gerben Law Firm we try to make the trademark registration cost as low as possible.   As a potential client, you should understand that hiring anyone who is not a lawyer to conduct your trademark search and draft and file your trademark application is extremely risky.  There is a high likelihood that your application will be denied using a service such as Legal Zoom (I get a lot of calls from their dissatisfied customers).  Moreover, please do not believe that you can conduct a “free trademark search” and determine whether or not your trademark is available for use.  There is a lot that goes into conducting a proper trademark search that is impossible to do online.  Our search uses special software and is conducted by an attorney.  There is just no replacement for this type of search. I have seen too many people rely on a free trademark search to file their trademark, only to have it rejected from the US Government (and thus lose all the fees they paid to have the trademark filed).

The cost of trademark registration at Gerben Law Firm as of February 14, 2010 is as follows:

Legal Fee: $495 Flat Rate (includes comprehensive trademark search and drafting and filing of your trademark application)

US Government Filing Fee: $275 or $325 per class (most applications require only one class)

Because each trademark registration is different, give me a call to get an exact quote on the cost of trademark registration for your trademark.  I can be reached directly at 1-877-350-6275.  I encourage you not to worry about saving a few dollars by using a service such as Legal Zoom.  If your application is not done correctly, you will lose your US Government filing fees and end up spending more in the long run to secure your trademark.  I invite you to call me at 1-877-350-6275 and register your trademark properly.

Both the trademark symbol (“TM”) and the service mark symbol (“SM”) can be used prior to obtaining trademark registration. However, the difference between the two symbols lies in what each represents. For instance, the trademark symbol should be used if your trademark is representing goods or a product. On the other hand, the service mark symbol should be used if your trademark is for services you intend to provide for your clients.

While the trademark symbol and the service mark can be used before a trademark is registered, the registered trademark symbol (“®”) should only be displayed once you have received a trademark registration certificate from the United States Patent and Trademark Office. The registration certificate is granted after you trademark application has been approved. Business owners use the symbol to acknowledge that their good or service is currently protected by a federally registered trademark.

For more information on how to achieve registration for your trademark contact Trademark Attorney Josh Gerben by visiting www.TrademarkArmor.com.

1. How much will the lawyer charge to conduct a trademark search and draft your trademark application;
2. How much will the U.S. Government charge to file the trademark applications (to register a trademark you are filing an application with a United States Government entity called the United States Patent and Trademark Office).

As of August 2009, I charge an affordable flat legal fee for my services of either $195 or $475 depending on the package of service you prefer. For $195, I will conduct a basic trademark search and draft and file your application. This option includes a federal trademark search in which I will determine if anyone has previously registered your trademark. While this search is extremely thorough, I would suggest the comprehensive trademark search package which is $475. This second option is considered a full legal clearance because it looks for any trademarks that could present a legal issue.  In addition to searching federal trademark databases, it searches state and common law trademark databases.  This is because if another company has registered a similar trademark at the state level, or has developed common law rights in the trademark, this company may be able to sue you for trademark infringement even once you file your federal trademark application.  Therefore, the comprehensive search results come with a letter from my law firm detailing all the legal risk associated with your proposed trademark.

The government filing fee to register a trademark is $325 or $275 per class of goods and/or services. The difference in price depends on a number of factors, however, I can normally qualify my clients for the reduced filing fee of $275.

Therefore, the total cost to register a trademark is:

1. The Legal Fee, plus,
2. The U.S. Government Filing Fee.

For more information on how much it costs to register a trademark please view all options on our website: www.trademarkarmor.com.

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