Frequently asked questions about trademarks.

We hope this page answers some of your questions about trademarks, the registration process, and our firm. If you have additional questions after examining our site, please contact us to schedule a consultation.

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Q: What forms of payment do you accept?

A: We accept Visa, MasterCard, Discover and American Express. We also accept checks. If we do not have an established relationship with a client, work will not begin on a matter until a check clears.

Q: Can you accept work from an client located outside of Virginia?

A: The Brandwise Law Firm, P.C., which is located in Virginia, can perform federal trademark registrations for anybody regardless of where they are located, so long as there is not a conflict of interest with another client. Likewise, we can represent anyone in any trademark or trade dress matter before the United States Patent & Trademark Office (USPTO). One advantage to retaining us is that the USPTO is also located in Virginia, which can translate into a cost savings.

We can engage in trademark creation and clearance for anyone. For litigation or state trademark registrations, we may need to enlist the help of local counsel if we do not have an attorney on our staff who is licensed in a particular jurisdiction.

Q: Can't anybody register a trademark without the help of lawyer?

A: An enterprise can attempt to register a trademark without the help of an attorney, but there are risks of which many people are not aware. The authors of Branding For Dummies said it well by saying: "Anyone who tells you that the arena of trademarks is an easy one to navigate is wearing rose-colored glasses. We've been through it enough times to strongly advise you to...seek legal assistance from an attorney who specializes in trademark protection." The authors also wrote, "Don't try to proceed on your own; the trademark process requires professional expertise."

Q: What is a trademark?

A: A trademark is a word or symbol typically designed to cause immediate identification by the viewer of a source for goods and/or servcies which inspires trust, admiration, loyalty with a perceived level of quality. Trademarks originated in the Middle Ages when merchants and craftsmen wanted to differentiate their products or services from those offered by others. Unfortunately, counterfeiting trademarks soon followed.

Q: How is a logo different from a trademark?

A: A logo is a graphical element, symbol or icon sometimes combined with type to form a trademark. Essentially, a logo is a Special Form trademark.

Q: What is the difference between a trade name and a trademark?

A: A trade name is an alias. Some jurisdictions call a trade name a "doing business as." a "dba," or a "trading as." Businesses and organizations have one legal name, just like people. And like people, businesses and organizations can have nicknames. The difference between people and businesses in this respect is that businesses are required to register their nicknames in the interest of protecting the public. For example, your corporation's legal name is XYZ, Inc., but the sign on your storefront says "Mona Lisa's House of Hair." The public knows you as Mona Lisa's House of Hair, which is a trade name because it is the identity that the business presents to the public. It is like your corporation's nickname in terms of its legal identity. MONA LISA'S HOUSE OF HAIR is also a trademark because it is the word or symbol that identifies your store as the source for wigs, hair cutting, or whatever goods and/or services that you offer.

Q: If a trade name is registered, doesn't that mean that the trademark is registered too?

A: In most jurisdictions, registering a trade name is NOT the same thing as registering a trademark. Registeration of a trade name usually only permits the use of a name. It generally does not provide the registrant any rights against third parties, but it can provide evidence of using a trademark. Registration of a trademark generally provides rights against third parties, such as the recovery of attorneys fees, civil damages, and the right to exclude others from use of a mark.

Q: What is a service mark?

A: A service mark is a trademark used to identify the source or provider of a service. It is merely a kind of trademark.

Q: Can a slogan be registered as a trademark?

A: Yes, but all the same requirements and rules apply.

Q: What does "goodwill" mean?

A: Black's Law Dictionary defines "goodwill" as the favorable consideration shown by the purchasing public in connection with goods or services known to emanate from a particular source. In the context of a trademark, goodwill is the collective perception of quality that the public associates with a trademark which translates to the goods or services being offered. Goodwill is impacted positively or negatively by every encounter and transaction with customers, employees, vendors and members of the public. While the term goodwill is a long-established word, the phrase "brand equity" may more effectively convey the idea that a trademark is an asset that requires conscious efforts at cultivation and protection.

Q: Can a non-profit organization register a trademark?

A: Absolutely. We have years of experience in representing non-profit organizations.

Q: Why would a non-profit need or want to register their trademark?

A: Punitive damages are available against willful infringers of a registered trademark. The availability of these damages can be a deterrent to impostors and unauthorized "fundraisers" trading on an enterprise's name.

Q: Why aren't the filing fees included in the firm's Application Fee to prepare and file a trademark registration application?

A: Your enterprise is unique with its own objectives. Trademarks are associated with goods and services, which are sometimes divided intio different classes. Your application will have to reflect the unique combination of good and/or services that you provide. Some of the entities that grant trademark registrations, like the United States Patent & Trademark Office (USPTO), also have different kinds of applications, which have different filing fees. Your application may also require a Statement of Use which requires an additional filing fee. Lastly, you may or may not want to register your mark internationally which also has filing fees associated with it.

Q: Will I be charged any additional attorneys fees after my trademark registration application is filed?

A: Perhaps. Any number of things, which are beyond our control, can happen after the application is filed. In some cases, the work involved only takes a few minutes. In those cases we ususally don't charge anything. However, if the needed action represents a significant tine commitment, we reserve the right to charge for the time spent.

Q: How soon can you file my trademark registration application?

A: Very soon. It usually depends on how quickly the client can supply us with the necessary information and materials.

Q: Can I use my trademark after the registration application is filed but before the registration is granted?

A: Yes, but we encourage everybody to submit a trademark to a legal review before using it. It is better to make sure that the mark is registrable and not infringing on another party before putting it into use. You don't want to be sued and forced to adopt a new mark. After a trademark has undergone a legal review. start using a trademark as soon as possible. Filing a trademark registration application provides some evidence of priority status over subsequent users.

Q: How long does the registration process take?

A: As a rough estimate, an unopposed application for registration takes about eight to ten months. If an application is opposed, it takes longer.

Q: What do I get in exchange for my consultation fee of $100?

A: During the consultation, we will discuss the characteristics of your mark(s) and whether there are any issues which might prevent registration. We will do a Preliminary Search of the database of registered trademarks maintained by the United States Patent & Trademark Office (USPTO) to see if a similar mark is already registered. We will also provide an estimation of the number of classes your mark should be registered in. If you decide to retain us to prepare and file your registration application(s), your consultation fee will be credited towards the Application Fee for one matter.

Q: If someone else is using a trademark that is similar to mine, who has superior rights to the mark?

A: If the trademarks are similar enough to cause confusion regarding the source of goods and/or services within the same class of goods and/or services, then the first person to use the trademark in the region has the superior claim to the mark, which is known as priority. If similar trademarks are used in connection with different classes of goods and/or services, there may be no conflict. The critical questions are "Is the later mark likely to cause confusion?" and "Does the later mark damage the uniqueness or goodwill of the prior mark?" A futher issue may be whether it is reasonably foreseeable that the first user of the trademark could expand into another class of goods and/or services.

It should also be kept in mind that some trademarks become so famous that it does not matter what classes it is registered in. These famous trademarks are cultural icons and their owners will protect them at almost any cost.

Q: Why is a trademark search important?

A: The first party to use a trademark in a geographic area has the superior claim to the mark in that area. As an example, consider the following hypothetical involving fictional companies and products.

Plumber Brewing Co. begins selling a beer under the trademark BLUE LAGOON in the continental 48 states in 1999. When Plumber Brewing Co. introduces BLUE LAGOON beer in the state of Alaska, they discover there is a chain of brew pubs called Blue Lagoon Saloon operating in Alaska since 1970 that sell their own beer called BLUE LAGOON. The Blue Lagoon Saloon has a superior claim to the mark BLUE LAGOON in connection with beer in the state of Alaska and can prevent Plumber Brewing Co. from using the mark to sell beer in Alaska. The Blue Lagoon Saloon could also sue Plumber Brewing Co. for damage if they can prove confusion in the Alaskan marketplace.

To continue with this example, Plumber Brewing Co. could file a federal trademark registration application with the United States Patent & Trademark Office (USPTO) to register the mark BLUE LAGOON in connection with beer. However, there is the possibility that Blue Lagoon Saloon could oppose the registration. Because Blue Lagoon Saloon has not used the trademark BLUE LAGOON in connection with beer in interstate commerce, they do not qualify for a federal trademark registration. If Blue Lagoon Saloon opposes the federal registration filed by Plumber Brewing Co., the likely result is that the federal registration will be granted but Plumber Brewing Co. will have to tread lightly in Alaska for fear of Blue Lagoon Saloon filing suit under state law as the prior user. A trademark search should provide a warning to Plumber Brewing Co. that they should not market their beer in Alaska. It should be noted that the Blue Lagoon Saloon will be prohibited from expanding outside of Alaska because of the registration obtained by Plumber Brewing Co.

If we change the facts a little, the outcome will be drastically different. Say Blue Lagoon Saloon launched a web site in 1995 that sold BLUE LAGOON beer over the world wide web. Years later when Plumber Brewing Co. files their federal application to register the trademark BLUE LAGOON in connection with beer and Blue Lagoon Saloon opposes the registration, the likely result is that the registration will be denied. Plumber Brewing Co. could have possibly avoided the conflict with Blue Lagoon Saloon if they had performed a trademark search before investing money in a trademark that somebody else was already using in connection with beer.

While a Comprehensive Search is not foolproof, it is the best due diligence available. It typically costs a fraction of a lawsuit and/or a re-branding.

Q: How is a Comprehensive Trademark Search different from a Preliminary Search?

A: A Preliminary Search is simply a search of the database of registered trademarks maintained by the United States Patent & Trademark Office (USPTO). A Comprehensive Search includes a large number of other sources in an effort to determine if someone else has used a confusingly similar mark in connection with similar goods and/or services.

Q: Are there different kinds of Comprehensive Trademark Searches?

A: Yes. There is a word (ie Standard Character) search and a design (i.e. Special Form) search. A word search is based on the verbal content of a trademark and a design search is focused on the graphic elements of a trademark. For cost efficiency, we contract with various companies to perform the search, without taking any mark-up, and then prepare a report to interpret the results for our client. To provide an idea of how much search fees could be, our vendors currently charge the following rates which are subject to change. A Standard Character (i.e. word) search for the U.S. is $345 per mark. The cost of a Special Form (i.e. design) search for the U.S. depends on the number of classes to be searched and costs between $445 and $1,550. A Special Form (i.e. design) search can be very expensive, while our Application Fee is comparatively inexpensive. Some clients decide to forego a design search before filing their federal application, in effect letting the United States Patent & Trademark Office (USPTO) perform the design search for them.

Q: Will you file a registration application without doing a Comprehensive Search beforehand?

A: While a Comprehensive Search is not foolproof, it is the best due diligence available. As a policy we always recommend doing a Comprehensive Search before filing a trademark registration application, but the decision whether to do the search belongs to the client. We understand that some of our clients have tighter budgets than others. We also realize that some of our clients are more comfortable with risk than others. If a client wants to file a trademark registration application without doing a Comprehensive Search beforehand, they are solely responsible for any and all consequences resulting from not doing the search.

Q: If I register my trademark with the U.S. government, can I prevent others from using my mark in states where my good's and/or services are not currently available?

A: Yes, but an applicant for a federal trademark registration needs to be able to demonstrate that they have used their mark in interstate commerce.

Q: Will my application be prepared and filed by an attorney or a paralegal?

A: All of our applications to register a trademark are prepared and filed by a licensed attorney.

Q: Can I file an application to register a trademark even though my business is not up and running yet?

A: Yes, and we can help you with the special requirements of this kind of registration application.

Q: Do people register their trademarks at both the state and federal level?

A: Yes. In some cases, a state registration may afford the registrant more rights than a federal registration.

Q: Will you respond to an initial rejection or Office Action issued to a trademark application that was prepared and filed by someone else?

A: We will review the application and the responses. We will then provide you with an opinion with a recommended course of action. We charge our hourly rate for these services. Please keep in mind that sometimes it is cheaper to do something correctly from the start than it is to repair something afterwards.

Q: What do ™ and ® mean?

A: The ™ symbol simply indicates that a mark is a trademark. It may be registered or unregistered. The ® symbol indicates that a trademark is in fact registered.

Q: What is a cease and desist letter?

A: A cease and desist letter is a demand to stop a course of conduct. In the context of trademarks, it is a demand to stop using a mark. If you have receive a cease and desist letter with regard to a trademark, it should be reviewed by a qualified trademark attorney.

Q: Do you handle trademark litigation?

A: Yes.

Q: Do you handle appeals?

A: Yes.

Q: After a trademark registration is obtained, is the owner required to do anything else?

A: Each jurisidiction has its own requirements for maintaining a registration. Some jurisidictions require a registrant to file a document that states they are continuing to use the mark. A federal trademark registration must be renewed between the fifth and sixth year following registration. We suspect the registration is initially for five years because most enterprises fail in the first five years. Each subsequent renewal occurs in the tenth annaversary of the registration date. There may also be some actions a registrant can take that are not required to maintain a registration, but give the registrant a strategic advantage. For example, the owner of a federally registered trademark can apply for incontestable status.

Q: What is the Madrid Protocol?

A: The Madrid Protocol is the application process outlined for the international treaty called the Madrid Agreement Concerning The International Registration Of Marks that allows a trademark owner to seek registration in any of the countries that have joined the treaty by filing a single application.

Q: Can you set up a corporation, limited liability company, or a non-profit?

A: Yes. We can also help your enterprise qualify for tax-exempt status with the Internal Revenue Service (IRS). If you wish to create a corporation or limited liability company in a state where one of our attorneys is not licensed, we will have to enlist the help of local counsel.

Q: Do you handle domain name disputes?

A: Yes.

© 2007 Brandwise Law Firm, P.C.