Protecting your intellectual property allows you to operate your business with confidence. The United States Patent and Trademark Office (USPTO) strongly encourages anyone looking to establish trademark rights to hire an experienced trademark attorney.

This recommendation comes with intimate knowledge about the complexity of the filing process and the care you need to take to ensure your trademark will stand up to challenges.

The Weiner Law Group fits the bill, employing experienced trademark attorneys and a collaborative work environment that allows us to meet your intellectual property needs.

If you need the assistance of an innovative and experienced New Jersey trademark attorney, reach out today.

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What Is a Trademark?

A trademark is a “mark” that identifies goods or services made of words, phrases, symbols, or designs. This mark allows customers to distinguish between competitors.

Trademark also provides you with an intellectual property interest in the mark. This legal interest applies when you use the mark in association with the type of goods or services you offer. 

Consider the real-world examples of the Dove chocolate brand and the Dove skincare brand. Although these companies are not affiliated, they provide different products and do not infringe on each other’s trademarks.

How to Trademark a Name

As soon as you start using your mark, you own the trademark as it is used with your goods and services. You can even append the ™ symbol to any trademarks you own. In other words, trademark registration is not mandatory. 

However, this protection is limited and applies only to the geographic area where you use the mark. Someone else may have stronger rights in the trademark than you if they register first or have been using the mark longer. As a result, you risk your ability to continue to use the trademark. 

To better protect your interests, you can register your trademark. Registration not only provides stronger legal protection and remedies but puts others on notice that they cannot use similar trademarks.

To register a trademark, you:

  1. Select a strong trademark;
  2. Search for similar trademarks in the USPTO database;
  3. Submit your trademark application; 
  4. Respond to any questions or concerns from the USPTO; 
  5. Receive notice about whether your application has been approved or denied; and
  6. Maintain your registration.

An experienced trademark attorney can guide you through every step of the process.

Creating a Strong Trademark

To create a strong trademark, you need a mark that is “inherently distinctive.” Marks that qualify as inherently distinctive tend to be:

  • Fanciful,
  • Arbitrary, or
  • Suggestive.

Marks that are generic or merely descriptive are not inherently distinctive. 

Fanciful

Fanciful trademarks are invented or made-up words with little or no meaning separate from your products or services. Examples include Adidas and Chobani. Fanciful names can also include acronyms that create new words, like Aflac, or portmanteaus, like Intel.

Arbitrary

Arbitrary trademarks have another meaning that is unrelated to the goods or services. Examples include Amazon, Dove, and Target. 

Suggestive

Suggestive trademarks include words or phrases that suggest something about your products or services, but are still unique enough to be distinct. Examples include Dairy Queen, PopTarts, and Under Armour.

Distinctiveness

Fanciful, arbitrary, or suggestive marks are more likely to be approved, but approval is not guaranteed. And it is typically quite challenging, though not necessarily impossible, to get a descriptive mark approved. 

Also, the categories are as distinct as the traditional spectrum suggests. For example, Netflix, Intel, and FedEx have elements of fanciful and suggestive marks. Ultimately, the essential element of selecting a strong name is distinctiveness.

Searching for Similar Trademarks

You cannot register a new trademark that is too similar to an existing trademark. Trademarks are too similar if they are likely to confuse customers. Marks are confused based on:

  • Sound, 
  • Appearance,
  • Overall impression, or
  • Product similarity.

The USPTO provides a database to search for similar trademarks. 

Applying for Registration

Once you have identified a distinct mark, you can apply to register your trademark. This application requires you to:

A drawing can be a standard character trademark, meaning the word or words that represent your trademark in ordinary writing. The drawing can also be a design or logo, known as a special form drawing.

Your filing basis is the explanation of why you are registering your trademark. You have four options:

  1. Use in commerce—you are already using the mark in commerce;
  2. Intent to use—you intend to use the mark in commerce;
  3. Foreign registration—you have registered the same mark in a foreign nation; and
  4. Foreign application—you have applied for registration of your mark in a foreign country in the last six months.

Two filing bases are also registration bases: use in commerce and foreign registration.  You must begin using the mark or provide evidence of a granted foreign registration for USPTO to approve your application if you file based on intent to use the mark or a pending foreign application.

Responding to the USPTO

If the officer assigned to your case has questions or concerns requiring amendment of your application, they may contact you to request you modify the application. If you fail to respond, the USPTO may consider your application abandoned. 

Receiving Notice of Approval or Denial

Once your application is processed, the USPTO will notify you whether it is approved or denied.

If your application is approved, the USPTO publishes the mark in its Official Gazette. Anyone who objects to your use of the mark has 30 days to oppose the registration or request to extend the deadline.

Registration opposition works like a court case but takes place before the Trademark Trial and Appeal Board (TTAB).

If the USPTO denies your application, you have six months to appeal to the TTAB. You can appeal any final registration refusal.

Maintaining Your Registration

After you receive your official trademark registration, you need to maintain that registration. You must file several different documents through the USPTO website, including:

  1. Combined Declaration of Use and Incontestability under Sections 8 & 15—file after five years;
  2. Declaration of Use and/or Excusable Nonuse of a Mark under Section 8—file between five and six years; and
  3. Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9—file after ten years.

Depending on the circumstances, you may need to file additional documents, for example, if you must amend or correct your registration.

Copyright vs. Trademark

Copyrights are another type of intellectual property that can be closely related to trademarks. Neither require registration, but both benefit from it.

You can have a copyright in a fixed, original work. Works include tangible forms of expression, like:

  1. Paintings,
  2. Novels,
  3. Songs,
  4. Poems,
  5. Photographs, and
  6. Blog posts.

Many other forms of work qualify for copyright protection. Works must be creative and not copied to be original. To be fixed, they must be captured in a tangible form. 

Copyright and trademark protections can overlap. This overlap can occur if the mark you use qualifies as a “work” for copyright purposes. Consider a trademark that uses your initials.

If you use a standard font for your trademark, you may not qualify for copyright protection. However, if you create a design using your initials that qualifies as a creative work, you may be able to register for trademark and copyright protections.

Protect Your Intellectual Property Today

Hiring an experienced New Jersey trademark attorney is the best way to protect your intellectual property.

Weiner Law Group’s experienced lawyers can guide you through the filing process, help defend your trademark against challenges, and ensure you file as efficiently as possible.

Contact us to learn more.