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What entrepreneurs need to understand about trademarks

Posted by Shivali Anand

August 9, 2021    |     5-minute read (924 words)

As entrepreneurs, we think about insuring our assets, becoming bonded and obtaining a Tax ID number. But protecting intellectual property is something many entrepreneurs overlook.

Intellectual property, or IP, is defined by the World Intellectual Property Organization as "creations of the mind, such as innovations; literary and creative works; designs; and symbols, names, and pictures used in commerce." If you have produced or are producing a product, service, method or concept that you want to take to market while protecting your company's brand and identity, safeguarding your IP should be a priority.

Trademarks, patents and copyrights protect three different forms of IP. A trademark safeguards logos and brand names used on products and services. A patent protects an invention, and a copyright protects an original literary or creative work.

For example, if you create a new vacuum, you must file for a patent to protect your invention. To protect the vacuum’s brand name, you would need to file a trademark. To protect an ad jingle for the product, you would file a copyright. Whether you've invented something, written a book or composed a jingle, you need to protect your work legally.

 How does a trademark work?

As per the United States Patent and Trademark Office, a trademark is "a term, symbol, phrase, and/or design that identifies and differentiates one party's source of products from those of others." A service mark provides the same level of protection to services. The term "trademark" refers to both trademarks and service marks. Trademarks can be used for a number of purposes, including brand names, slogans and logos.

Basically, a trademark allows customers to distinguish one company's goods or services from those of other firms. Trademarks extend back to ancient times, when artists used to stamp their items with their mark or signature.

A trademark falls under one of four categories: fanciful or arbitrary, suggestive, generic or descriptive. The category in which your mark belongs will have a significant influence on its ability to be registered as well as your capacity to assert your rights to it. The strongest and most defensible types of trademarks are fanciful and arbitrary because they do not correspond with any meaning in the dictionary.

 What a registered trademark does

If you opt to register your trademark, you will benefit from the right to use it exclusively on the goods or services listed in your registration, as well as a public notice of your ownership claim. The USPTO allows less than 50 trademark classes. As a result, comparable items are generally grouped together into a single category.

The three most widely used trademark symbols are TM, SM and ®. The latter, the federal registration symbol, may be used only in connection with products and services included in the federal registry upon their approval. In contrast to the TM or SM insignias, which have minimal legal importance, the federal registration symbol has several legal advantages. The TM and SM symbols demonstrate you have implemented these as "common law" trademarks or service marks.

Use of the proper symbol on trademarked words, phrases, symbols and/or designs is a good practice. Subscript or superscript the ® sign after the mark if it has been registered. It is acceptable to use TM or SM for unregistered marks, regardless of whether you have filed a trademark or service mark application with the USPTO. 

The stages in registering your trademark with the USPTO 

  1. Select the mark you want to trademark in the drop-down menu. The USPTO does not register or protect every mark.
  1. Using the Trademark Electronic Application System, prepare and submit your trademark application online.
  1. The USPTO assigns a serial number to your case after determining that you have satisfied the filing criteria for your application. Your application is then submitted to an examining attorney, who analyzes it to see if it conforms with applicable required fees. Be in frequent communication with the examiner and promptly reply to their questions.
  1. If your registration is accepted and the examining attorney raises no objections, the mark will be published in the USPTO Official Gazette. An acknowledgment of publication will be sent to you, along with the date on which it was published. An opposing party or a request to extend the period to oppose a mark's registration must be applied within 30 days of the mark's publication date.
  1. Within six months of receiving a notice of permission, you must file a statement of use together with proof that you have used the mark. The SOU requires a filing fee.
  1. Once the examining attorney approves the SOU, your mark will be registered, and a registration certificate will be provided.
  1. To keep your registration active, you must file appropriate maintenance papers. The registration may be canceled or expire if you do not follow these instructions, and you will have to start the registration procedure over from the beginning.
The entire procedure might take many months. Keep track of your application's progress by logging on to the Trademark Status and Document Retrieval system. Ensure you don't miss a deadline by checking the progress of your application at least every three months.

How long does it last?

Rights for a federally registered trademark can exist in perpetuity if you continue to use the mark and file the relevant maintenance paperwork with the requisite fee(s) at the proper times, according to the USPTO. The following papers are necessary to keep a trademark registration current:

  • Section 8 Declaration of Continued Use or Excusable Nonuse.
  • Sections 8 and 9 Combined Declaration of Continued Use and Renewal Application.

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