Protect Your Company and Brand
A trademark protects a word, phrase, design, or combination thereof that identifies the goods and services you provide as yours. It is different from a patent, which protects technical inventions, and copyright, which protects artistic, literary, or intellectually created works. A trademark protects your brand identification, allowing people to know that the items or services bearing your mark are yours.
Whether you are a small business owner, or the CEO of a larger corporation, you are likely concerned with protecting your company’s brand. A trademark is used to represent a company, idea, or product through use of an emblem, logo, symbol, or sign. Although you are not required to register your trademark with the United States Patent and Trademark Office, there may be benefits to doing so. Registering a trademark:
- Gives you sole ownership of the brand name, logo, or emblem
- Prevents others from using a similar symbol and confusing your customers
- Provides brand recognition for customers
- Conveys a level of quality to customers
If anyone else uses your trademarked symbol once it is registered, then you can file a case of trademark infringement. Infringement occurs when another company, or brand, uses your registered trademark, and, as a result, potential customers or clients could mistakenly buy from the other brand thinking that they are purchasing your product.
When other companies see the registered trademark symbol after your brand, name or sign, they may be deterred from using a symbol that could be mistaken for yours. Furthermore, registered trademarks can be transferred. Commonly trademarks are transferred after the sale of a business because the trademark can add value to the business as it is being sold.
If you choose not to register your trademark, it is known as a common law trademark.
Common law trademarks only protect the mark within a limited geographical area, while federal and state trademarks protect trademarks in the state and nation, respectively.
A trademark can be registered with the state, or the federal government. In Ohio, a trademark is filed through the Secretary of State’s office. Federally, a trademark is filed through the United States Patent and Trademark Office (USPTO). Filing with the state protects the trademark within that state, while filing federally protects the trademark nationally.
You should consider how you are planning on doing business when deciding how you want to file your trademark. With the prevalence of the internet as a marketplace for a lot of consumers, it could be beneficial for even small businesses to have national brand protection.
How to Register a Trademark in Ohio
To register a trademark with Ohio, an applicant must submit the application form (Form 555) to the Secretary of State’s office. The filing fee for this form is $125. A specimen of the mark must be submitted with this application. If the application is accepted by the Secretary of State, then the owner of the trademark is protected from infringement within the state of Ohio.
How to File a Trademark with the USPTO
The process to file a trademark with the USPTO is a more involved process. After deciding on a mark, and what the mark will apply to, the first thing that an applicant for a trademark should do is search the trademark database (Trademark Electronic Search System, or TESS). This search will allow the applicant to see if there are any trademarks already in use that are similar in style and use to the applicant’s trademark.
Once the applicant has determined that no one has already claimed trademark rights for the mark, the next step is to access the Trademark Electronic Application System (TEAS) and fill out the application. There are a few items that the applicant needs to have, and to know, to fill out the TEAS. Like filing a trademark with the state, an applicant needs to have a high-quality image of the mark to submit with the application. It is important to know what goods and/or services the mark is going to apply to. When filling out the TEAS, the applicant will have to note how many of which goods and/or services the mark will cover. The applicant will also need to know the basis for filing, for example whether the mark is currently being used in commerce. The goods and/or services the mark will apply to is especially important for the applicant to know, because filing costs either $250 or $350 per good and/or service.
The difference in price is dependent on what type of application the applicant decides to fill out. The two application types are the TEAS Plus and the TEAS Standard. The TEAS Plus is the cheaper of the two options but does come with some drawbacks that allow it to be the cheaper options. The Plus application has more initial requirements than the Standard application and forces the applicant to choose goods and/or service descriptions from a standard list of options. These options do not always accurately represent the goods and/or services provided by an applicant. The Standard application, while more expensive, does allow applicants to customize descriptions of goods and/or services.
Once the application is filed, the USPTO determines that all the minimum filing requirements were met. If the minimum filing requirements are met, the application goes to an examining attorney. The examining attorney determines whether the mark should be registered. If the examining attorney does not believe that the mark should be registered, the attorney will send a letter outlining the substantive reasons for refusal. Upon receival of the letter the applicant has six months to respond to the action.
Once the mark is approved for use it is the job of applicants to maintain the registration and enforce their rights. To maintain the registration there are certain documents that must be filed. A Declaration of Use and/or Excusable Nonuse must be filed between the fifth and sixth years after the date of registration. Between the ninth and tenth years after the date of registration a Declaration of Use and/or Excusable Nonuse must be filed as well as an Application for Renewal. After that, a Declaration of Use and/or Excusable Nonuse must be filed with the Application for renewal every ten years. It is important for the owner of the trademark registration to check the status of the registration after all filings. It is also the responsibility of the owner of the registration to bring any legal action against trademark infringement.
The Five-Year Mark of Registration
Once a trademark has been filed for five years, it becomes much more difficult for others to contest the trademark. This is because of two sections of the Lanham Act, sections 14 and 15.
Section 15 of the Lanham act allows for the holder of the trademark to file to have the trademark declared incontestable. To have a trademark declared incontestable the trademark must:
- Be on the Principal Register
- Have been in continuous use in commerce for a period of five years after the date of registration, with the goods and/or services listed in the registration still in use
- Have been no final legal decision against the owner’s claim to the trademark, or the owner’s right to register the trademark, or to keep the registration
- Be no pending legal proceeding involving the trademark
To file to have the mark incontestable, the owner of the trademark must include the registration number and date, a filing fee of $200, and a signed statement attesting to the previous qualifications for incontestability. If the declaration is accepted, and the trademark is declared incontestable, this provides protection to the owner of the trademark. An incontestable status shows conclusive evidence of the owner’s right to the trademark. This gives the owner of the trademark a leg up in case of a lawsuit because the owner does not have to prove ownership of the mark or exclusive rights to the mark.
A registration with incontestability status can still be challenged on the grounds of:
- Fraud
- Abandonment
- False suggestion of connection
- Functionality
- Genericness
- And others
So, while an incontestability status does provide benefits to the owner of a trademark, it is not an invincibility status.
There are also general protections to a trademark after five years under section 14 of the Lanham Act. After five years a trademark can only be cancelled for the following reasons:
- The mark has become generic
- The trademark is functional
- The trademark was abandoned
- The registration for the trademark was fraudulent
- The registration violated provisions surrounding collective and certification marks
- The mark is immoral, scandalous, or deceptive; disparages a living or dead person, institutions, beliefs, or national symbols; suggests a false connection to a living or dead person, institution, belief, or national symbol; indicates a geographical region that is not the origin of the goods in the case of spirits and wines
- Has an insignia of the United States
- Has the name, image, or signature of a living person without their consent
- It misrepresents the source of the goods or services
There have been several companies that have lost their trademark due to genericizations even after five years of being trademarked, such as dumpsters, escalators, thermos, yo-yo, kerosene, TV dinner, zipper, and xerox.
