Dispelling Myths About Trademarks
July 25, 2022
Many business owners – both those starting out and those who are more established – have misconceptions about what a trademark accomplishes, as well as how and when to register and then protect one.
The United States is the only country in the world that recognizes trademark protection once a mark is used in daily commerce. However, the mark is only protected in the geographic region in which the owner operates his or her business. Say, for instance, you establish The Chili Station in Kansas City, Missouri, and another entrepreneur establishes a restaurant of the same name (and even symbol) in Chicago, you may have a hard time enforcing your right to the mark.
That’s where federal registration with the U.S. Patent and Trademark Office (USPTO) comes into focus. It does provide nationwide recognition of your unique name, slogan, logo, or symbol as it relates to the goods or services you provide. Another business may adopt a similar symbol or even near-duplicate name, so long as their goods and services are completely different from yours.
Say you open ABC Express Services to provide delivery of food and meals to people’s homes, and somewhere else a business opens with the same name to deliver auto parts. The USPTO will look to see if potential customers would be confused by the competing business names. The standard for USPTO is whether the two marks are so similar in sight, sound, meaning, and goods or services provided that customers may be confused.
If you are seeking to establish or defend a trademark, or even to defend yourself against charges of trademark infringement, in or around Kansas City, Missouri, contact Ream Law Firm, L.L.C. Dale J. Ream is experienced in all aspects of trademark law and intellectual property protections. He proudly serves clients throughout the Kansas City Metro Area, including Johnson County, Kansas, and Jackson County, Missouri.
Common Misconceptions About Trademarks
Here are some of the most common misconceptions around what trademarks do and how to make sure your trademark receives the protections it needs:
We should wait till our business grows to register our trademark:
Though your trademark is subject to common law protections in the U.S., asserting your rights under common law (should someone infringe on your mark) can prove difficult. Federal registration allows you to more clearly establish yourself as the “senior user” of the mark should someone come along with a similar or nearly duplicate mark as a “junior user.” Don’t wait to see whether others want to copy your mark and use it for themselves before registering with the USPTO. Also, registration with the USPTO is not a quick process. It can take months, even more than a year. Your copycat may beat you to the punch.
We do not need to do anything with our mark once it is registered:
Not exactly true because the USPTO, in addition to your initial application fee, requires maintenance fees at the five- and ten-year periods of your registration. If you don’t pay these fees, your trademark can be considered abandoned and your protection will expire.
Also, if your trademark falls into disuse for three years, it can be considered abandoned. In other words, you must continue to use the trademark in the manner for which it was approved – meaning for certain goods and/or services – or it can be revoked. If you try to expand the usage of the mark, it can become diluted, and you may have to start over.
Our business name is a common term, so we can’t be sued for trademark infringement:
The USPTO will not grant trademarks to common terms, that’s true. For instance, you can’t trademark the word “water” and probably not even use it in connection with selling water products to warrant a trademark. But, if you use water for another purpose, such as The Water Retreat as a name for a bar and restaurant, the name may well qualify for registration. So, if you’re using or intending to use a generic term, you should do a Google search and other trademark searches to see whether others are using the word and how.
We own a trademark, so no one else can use it:
The USPTO judges trademarks on whether the use of similar logos, slogans, names, or other marks might cause confusion in the commercial marketplace. Thus, it is entirely possible for the USPTO to approve similar or even identical marks so long as they are being used for differing products and services.
For instance, if Sam’s Place is a diner with a registered trademark throughout the Midwest, but Sam’s Place on the East Coast is a retail clothing operation, then the names may both be registrable.
Registrations are easy and quick to file, so I can do it on my own:
Actually, registration can take a year or more before you receive approval – or disapproval. The first step is to do a search to make sure your mark is not being used by someone in the same class of commerce, or for that matter, is not being used at all. Then, you can submit it to the USPTO along with the filing fee.
Once the agency determines that your application meets minimum filing and legal standards, an application serial number will be assigned and the application forwarded to a USPTO examining attorney.
The examining attorney will then conduct an independent search for competing marks. When he or she completes the full process of assessing the trademark, you will receive notice of an “Office Action,” which will state acceptance or rejection.
The process can be lengthy and challenging. Even the USPTO website urges individuals not to try it alone, saying that “we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you through the application process.”
How Ream Law Firm, L.L.C. Can Help
Navigating the USPTO trademark registration process is not as simple as just filling out an application and submitting your fee. There can be questions and requests back and forth with the examining attorney.
Likewise, if you already have a patent, you want to make sure that you protect it. You need to have policies and procedures in place to ensure the integrity of your mark or marks.
Dale J. Ream can help you with all aspects of trademark law and trademark protections. Whenever you have a question or issue involving trademarks, contact him immediately. He proudly serves clients in and around Kansas City, Missouri, metro area, including Johnson County, Kansas, and Jackson County, Missouri.