More About Trademarks

Trademark holders enjoy many great benefits. However, the most important benefit is the ability to sue a competitor in federal court due to the unauthorized use of a registered U.S. Trademark. Without a federal trademark, a trademark holder is limited to suing a competitor only in their state based on "common law trademark rights" (or state rights). This can be very limiting. 

For example, if you live in Arizona and someone in Michigan has started to use a trademark that is similar to yours, and it is interfering with your business (i.e., confusion in internet marketing), then your recourse without a federal trademark is to sue the competitor in Arizona court, which would not have any jurisdiction over the competitor in Michigan, and so you would likely be stuck. However, with a federal trademark, you can avail yourself to federal court instead of state court; which has a far greater reach and it is generally easier to prove damages than in state court. 

The average fee is $1200-$1400 to secure a U.S. Trademark. This includes the fees associated with trademark research, application preparation and filing, and monitoring during the 10-12 month review period. Government filing fees are $250 per trademark class, and most trademarks are filed in 1-2 classes. 

The starting point is with a trademark search. Not only will the search forecast the likelihood of obtaining your trademark, it will also identify any potential challenges and conflicts that may need to be overcome. This is an important consideration when budgeting the overall cost of obtaining a potentially trickier trademark. 

Not necessarily. If you feel confident that there are no conflicts with your desired trademark name, you are encouraged to begin marketing your name. Having an early "first use in commerce" date may ultimately give you senior trademark rights in competitors that entered the market after you. As such, I often tell my clients that "time is of the essence" to enter the marketplace or file a Section 1(b) trademark application. I always recommend starting with a trademark search, however. 

For clients with "riskier trademarks" (i.e., trademarks with known potential issues), it is best practice to be very cautious about entering the marketplace while a trademark application is pending. Having some knowledge and awareness of a competitor with a similar trademark as to you exposes you to some degree of risk of committing trademark infringement or trademark dilution. This is very much a "case by case" determination on what is best. Usually, I suggest keeping a modest marketing and manufacturing budget while waiting for the trademark application to clear examination at the USPTO. This typically takes 7-8 months from the filing date. 

You can and should display the ™ symbol until your trademark registers. Only after a trademark registers can the ® symbol be displayed. 

A trademark protects products, while a service mark protects services. To designate the difference, a trademark symbol is commonly displayed to the upper-right of a trademark to indicate the brand is product-related; whereas either the TM, SM, or (R) symbol is placed to the lower-right of a trademark if it is service-related. 

A trademark owner can send a "cease and desist" letter to any third party that may be committing trademark infringement, trademark dilution, and perhaps other civil torts (violations), such as unfair business advantage. Suppose a trademark holder has a good faith belief that they have suffered damages. In that case, a "cease and desist" letter is a formal letter asserting the owner's rights and listing specific demands along with a deadline. Sending "cease and desist" letters is generally important to safeguard an owner's trademark rights, as the absence of asserting trademark rights can be used as a possible defense against the owner.

Our office requires two hours of time to carefully review a new "cease and desist" matter. This allows my legal team to perform the needed research and diligence so that we can properly advise our client on how to best draft their demand letter, or respond to a competitor's "cease and desist" letter.