Most people already know that it’s possible to trademark a logo with the United States Patent and Trademark Office (just as it’s possible to trademark a product name). But, applying to register a logo as a trademark is quite different than simply registering a name or a slogan. In my experience, people who file their own US trademark application tend to make the most (and costliest) mistakes when they attempt to register their logos. Of course, this often leads to the expenditure of additional time and money that would have been completely unnecessary if the application was properly prepared in the first place. Although this is certainly not a comprehensive list of all the things you need to know to successfully trademark a logo, here are a few hints that will help you avoid making some common mistakes.
People ask me all the time if it’s possible to trademark a product name. The answer is….sometimes. Some categories of product names are eligible for federal trademark registration with the United States Patent and Trademark Office (“USPTO”), while others are not. In general, the more unique and creative your product name is, the easier it will be to register it as a trademark and the greater scope of protection it will receive.
A final office action is issued by the United States Patent and Trademark Office (“USPTO”) if you didn’t successfully or properly respond to all of the issues raised in a previous trademark office action. If you fail to take action within six months from the date the final office action is sent, your trademark application will go abandoned and you’ll have little choice but to begin the US trademark registration process all over again.
If you receive a final office action, you basically have three options:
A USPTO trademark search is simply a search of the United States Patent and Trademark Office records. It will reveal pending trademark applications and existing trademark registrations that are active (live), as well as abandoned applications and canceled registrations that are inactive (dead).
Last week, I received a telephone call from a guy located in Florida who was on the verge of opening a new business. Apparently, he was thinking about using the LegalZoom trademark registration service to prepare and file his trademark application. For those of you who don’t already know, LegalZoom is an online legal document preparation service. It’s not a law firm and it can’t offer any legal advice or guidance. People who are looking to register a trademark with LegalZoom (God forbid) are asked to fill out a questionnaire that resembles the official USPTO trademark application form provided by the Trademark Office. They submit their responses to LegalZoom along with a payment that covers LegalZoom’s service charge and the government filing fee for the trademark application. Without checking for accuracy or completeness, LegalZoom transcribes the responses onto the USPTO application form and submits it on behalf of its customers. There’s absolutely no review by LegalZoom as to whether the trademark is even eligible for registration, which is a problem considering that there are many categories of trademarks that are completely barred from being federally registered.
A prospective client once called me to ask some basic questions about the US trademark registration process and its associated costs. We started talking about the trademark he wanted to adopt and the products with which he intended to use the mark. Of course, one of the first things we discussed was the necessity of conducting a comprehensive federal trademark search to learn whether another individual or entity already owns an existing federal registration for an identical or confusingly similar trademark. Not unlike many other clients, he informed me that he had already conducted a USPTO trademark search using the free search tool provided by the United States Patent and Trademark Office and that he fortunately “didn’t find anything.”
Is the Free USPTO Search Reliable?
I cringe every time prospective clients tell me they “didn’t find anything” after using the USPTO search tool because I know from experience how weak and unreliable that tool is. This type of USPTO search will most often not catch variations of words, common misspellings, novel or intentional misspellings, verb conjugations, etc. The free USPTO search tool is really only for finding identical trademarks, which I always encourage my clients to do prior to hiring me to conduct a more comprehensive federal trademark search to find confusingly similar marks (which is the legal standard for trademark infringement). Clearly, there’s little reason for me to perform my search if their USPTO search already revealed an obvious obstacle to registering and/or using their trademark.
First and foremost, I would like to thank the LegalZoom trademark service for this week’s blog post. I swear, the only good thing about LegalZoom is its uncanny ability to continually provide me with fodder to write about on this blog. Just when I think I have nothing interesting to talk about, LegalZoom swoops in to save the day!
As some of you know, in addition to having my own law practice, I work as an independent contractor to another trademark attorney here in St. Louis and frequently assist her clients with a variety of intellectual property matters. A few weeks ago, she was hired by a client to respond to a trademark office action he received from the Trademark Office that requested some additional information and clarifications regarding his trademark and the products with which his mark is used. I later learned that this client had used the LegalZoom trademark service (which is an online legal document preparation service and not a law firm) to prepare and file his trademark application. Of course, when he received this office action in his inbox, he had no idea what it was or how to properly respond to it.