Frequently Asked Questions
General Trademark FAQs
A trademark is a word, phrase, symbol, design, or combination of these elements that identifies and distinguishes the source of the goods or services of one party from those of others. A trademark helps consumers recognize and choose between products or services based on their quality, reputation, and other characteristics.
Trademark, patent, and copyright are different types of intellectual property rights that protect different aspects of creations.
• A trademark protects a brand name or logo that identifies the source of goods or services.
• A patent protects an invention or a new and useful improvement of an existing invention.
• A copyright protects an original work of authorship, such as a book, song, movie, or software.
A service mark is actually a type of trademark that identifies and distinguishes the source of a service rather than a product. For example, FedEx is a service mark for delivery services, while Coca-Cola is a trademark for a soft drink. With that said, the term “trademark” is often used to refer to both trademarks and service marks.
To register a trademark in the United States, you need to file an application with the United States Patent and Trademark Office (USPTO). You can file online by yourself or with an attorney using the Trademark Electronic Application System (TEAS). You need to provide information such as:
• The name and address of the owner of the trademark
• The name and description of the goods or services associated with the trademark
• A specimen showing how the trademark is used on the goods or services
• The filing fee
If you are a U.S. citizen or company with a U.S. domicile address, then no, you do not need an attorney to register a trademark. However, it is advisable to consult with a trademark attorney before filing an application.
If you are not a U.S. citizen and also do not have a U.S. domicile address (P.O. Boxes and virtual addresses do not count as domicile addresses for the purposes of the USPTO), then yes, you will need a U.S. attorney to assist you with your application.
Among other things, we can help you:
• Conduct a comprehensive search for similar trademarks that may conflict with your trademark
• Choose an appropriate filing basis and classification for your goods or services
• Draft a clear and accurate description of your goods or services
• Respond to any objections or rejections from the USPTO
• Track and monitor your trademark registration progress
• Overall greater chance of approval
The time it takes to register a trademark depends on several factors, such as:
• The complexity and accuracy of your application
• The availability and responsiveness of the USPTO examiner assigned to your application
• The existence and outcome of any oppositions or disputes from third parties
On average, it has recently been taking the USPTO approximately 10 months to assign an examiner to new applications. The whole process takes about 14 to 20 months from the date of filing to receive a registration certificate. However, some applications may take longer or shorter depending on the circumstances.
To maintain your trademark registration, you need to:
• Use your trademark continuously and consistently in commerce
• File a declaration of use and/or excusable nonuse between the fifth and sixth year after registration
• File a renewal application every 10 years after registration
• Pay the required fees for each filing
Registering a trademark gives you several advantages, such as:
• The exclusive right to use your trademark nationwide for the goods or services listed in your registration
• The ability to sue infringers in federal court and seek monetary damages and injunctive relief
• The presumption of validity and ownership of your trademark
• The right to use the ® symbol next to your trademark
• The right to record your trademark with the U.S. Customs and Border Protection to prevent the importation of counterfeit goods
If the similar trademark is for similar goods or services, then it is likely that you will not be able to register your mark, because it could create confusion.
With that said, if the other mark is used for different products or services, it might be possible because consumers may not be confused about who sells what.
For example, the Delta trademark. Delta Dental, Delta Air Lines, and Delta Faucet Company can all coexist because the products and services are different enough to prevent consumer confusion.
Yes.
The trademark examination process is subjective. A USPTO examining attorney could reject your mark if they believe there is a possibility that consumers could confuse your mark with another mark. Examiners assess this likelihood based on an overall commercial impression.
Yes! Anyone can use the TM symbol regardless of whether they have filed a trademark application or not. The ® symbol, however, can’t be used unless the trademark is fully registered.
Yes! Trademarks require use in commerce. If you’re just trying to protect a particular word or phrase that you use, that’s not a trademark. Trademarks identify the source or origin of goods and services.
Trademark Registration FAQs
Yes, you can! We will discuss your trademark application with you, conduct a comprehensive search, and prepare the application for you. Click here to get started with your trademark application
This answer really depends. There are both, legal fees and government fees that will need to be paid. Our legal fee is $999 for one application, but we also offer a reduced price for a second application if purchased as one package. The government currently charges a base fee of $350 per class per application. Different factors could cause other fees down the road. For example, if you are not using the trademark in commerce when you file, you will eventually need to prove use in commerce. The government charges a fee for that proof when it is provided later. Sometimes, the government also issues refusals against registration. If they do, we might be able to argue against that refusal, but arguments do cost extra due to the time needed to draft a proper argument.
There are plenty of reasons why you should consider using an attorney to file your trademark instead of doing it yourself. The biggest reason is that statistics show that trademark owners who file using an attorney are much more likely to have their trademark successfully registered.
While we all hope that the trademark process will go smoothly, many times it does not. Sometimes, refusals are issued simply due to a trademark being improperly filed. Sometimes, though, the refusal is more substantive. An attorney can help prevent and drafting or filing errors, but more than that, an attorney can manage your response deadlines, respond to the USPTO on your behalf, and increase your odds of successfully registering your trademark.
It’s not a government requirement, and if you file on your own, it is entirely your choice as to if you conduct a search prior to filing.
With that said, whether you file through us, someone else, or on your own, it is highly recommended that a comprehensive search be completed first. You cannot make substantive changes to a trademark once it is filed. So if someone already has your trademark for similar or related goods and services, or if they have a trademark that looks or sounds or seems similar enough to your trademark, there is a strong chance that the USPTO will issue a refusal against your trademark.
Filing a word (name) mark and a logo requires you to file two separate applications. We offer a two trademark package at a reduced rate in order to help you file both, a logo and a word mark for the same brand. Please note, however, that the government does not offer any bulk or double order discounts on their end. You would still need to pay the government filing fees for each application.
No, you do not have to provide your services or sell goods everywhere in the United States. You need to provide your goods and services in interstate commerce. This means that your goods and services need to be available across state lines, but it does not mean that they have to be sold or provided in every state.
There is no set number of sales required. Instead, the rule is that you have to have bona fide sales in interstate commerce. This means that you need something more than token sales to friends and family.
Generally speaking, the application process cannot be sped up. Of course, there are some exceptions, such as current litigation, infringement, or if there is a unique need for a foreign registration, but a substantial need must be shown.
A disclaimer is a statement provided by the trademark owner to the USPTO indicating that they do not claim exclusive use to a particular word or phrase in their trademark, because it’s either generic or descriptive as to the goods and services. Meaning, they cannot sue someone else for using that same disclaimed word or phrase.
A specimen is a sample of your trademark as it is used in commerce. It is used as evidence that your goods and services are available for use by other people in interstate commerce under the brand/trademark that you are attempting to register.
An Examiner’s Amendment is a way for the USPTO examining attorney to make minor changes (with your permission) to your trademark application without having to file a formal response. Examiners will typically request to make an Examiner’s Amendment by phone or email.
Questions About Our Firm
Alec Allen Ross, the founder of The Trademark Place, is licensed to practice law in Florida and Iowa.
Absolutely. Due to the nature of trademark law, we can represent clients regardless of where they live. Whether you live in Miami, Florida, New York, New York, Los Angeles, California, Seattle, Washington, Chicago, Illinois, Denver Colorado, Atlanta, Georgia, Austin, Texas, or anywhere else, we can represent you and help you protect your trademarks.
Not at all! We have clients from around the world. In fact, if you are not domiciled in the United States, the USPTO requires you to file your application using a U.S. based attorney.
Our firm is completely remote, and we do not have a physical office location. All of our consultations are done over the phone and through email.
No, The Trademark Place does not have hidden fees. We will not charge extra to respond to minor/procedural USPTO office actions. Those are included in your package costs.
If you receive a substantive refusal, however (such as a likelihood of confusion refusal, for example), and you want us to argue against that refusal, we do charge an argument fee for that service, but is also a flat rate fee.
Sí, podemos hablar español. Sin embargo, debido a que el español no es nuestro primer idioma, preferimos tener conversaciones en español a través de mensajes de texto o correo electrónico para asegurarnos de no perdernos nada.
Oui, nous pouvons parler français. Cependant, comme le français n’est pas notre langue maternelle, nous préférons avoir des conversations en français par SMS ou par e-mail pour être sûrs de ne rien manquer.
Evet, Türkçe konuşabiliyoruz ancak tüm Türkçe aramaların önceden planlanması gerekiyor.