Michael Kondoudis

What is a Trademark Statement of Use? – AN EASY GUIDE

December 14, 2022 by Michael Kondoudis

A Statement of Use is a document filed with the USPTO to indicate that you are using your trademark in commerce. It is only required in some applications.

By Michael Kondoudis, Small Business Trademark Attorney

This is our ULTIMATE guide to trademark Statements of Use. If you have questions about Statements of Use for trademarks, then this guide is for you.

In this guide we discuss:

→ The Basics of USPTO Statements of Use

→ How, When, and Where to File a Statement of Use

→ The Requirements for Trademark Statements of Use

→ An Example of a Trademark Statement of Use

→ Frequently Asked Questions About Statements of Use

Let’s get started!

What Are Trademark Statements of Use?

What is a Statement of Use trademark?

A Statement of Use (SOU) is a filing that demonstrates that a trademark is being used in commerce. Statements of Use are filed with the U.S. Patent and Trademark Office (USPTO) and are the way that you tell the U.S. Patent and Trademark Office that you are using your trademark.

The USPTO requires proof that a mark is in use before it will grant a trademark application. A Statement of Use is the way you show the USPTO that you are using your mark.

A Statement of Use is the last step of the trademark application process.

A Statement of Use has several specific requirements. Read about what you need to include in a Statement of Use here.

A trademark Statement of Use (SOU) is an important part of the trademark registration process with the USPTO. It is a sworn declaration that attests to using the trademark commercially in interstate commerce – meaning it has been used in connection with goods or services across state boundaries. A SOU serves as proof to the USPTO that the trademark is now being used on the goods/services specified in its trademark application, and must be filled out properly before they can issue trademark registration certification.

Do I need to file a trademark Statement of Use?

It depends. If the U.S. Patent and Trademark Office has sent you a Notice of Allowance, you will need to file a Statement of Use.

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Does every trademark application need a Statement of Use?

No, not every trademark application needs a Statement of Use. If you submit proof of use of your trademark with your new trademark application, for example, you will not need to file a trademark Statement of Use.

If you filed your trademark without proof of use, you must file a Statement of Use to show you are using it. This is required before your trademark can be registered.

What happens if I don’t file a trademark Statement of Use?

If you don’t file a Statement of Use, your trademark application cannot be approved, and your mark will not be registered. Eventually, your trademark will be deemed abandoned, and someone else can apply to register your trademark.

If you are not ready to submit a Statement of Use, it may be possible to request an extension of time. Read more about extensions of time here.

Filing Trademark Statements of Use

Where to file a trademark Statement of Use?

Statements of Use for trademarks are filed with the U.S. Patent and Trademark Office in Alexandria, Virginia.

How to file a trademark Statement of Use?

You can file a trademark Statement of Use online or by mail. The fastest way to file a trademark Statement of Use is online using the U.S. Patent and Trademark Office’s Trademark Electronic Application System (TEAS).

If you want to learn more about TEAS, you can read our Guide to TEAS Plus here.

When to file a trademark Statement of Use?

You must file a Statement of Use within six months from the date on your Notice of Allowance. If you are not using your trademark by that deadline, you can request a six-month extension. Read more about extensions of time here.

Who Should File a Statement of Use trademark?

A trademark applicant should file any required Statement of Use within six months after a Notice of Allowance from the U.S. Patent and Trademark Office (USPTO).

What is the Statement of Use trademark fee?

The fee for a trademark Statement of Use is $100, if the Statement is submitted to the U.S. Patent and Trademark Office using its Trademark Electronic Application System (TEAS). The fee is $200 is the Statement is submitted on paper. The USPTO publishes a list of all trademark fees on its website here.

Requirements for Statements of Use

What are the requirements for a trademark Statement of Use?

A Statement of Use has three requirements. Every Statement of Use for a trademark must include (1) the required fee(s), (2) at least one example of use, and (3) a sworn confirmation that the mark is being used in commerce.

The U.S. Patent and Trademark Office (USPTO) requires a fee for each class of products and services listed in your Notice of Allowance. Similarly, the USPTO requires at least one example of use for each class. So, if your trademark application has been allowed for three classes, then your Statement of Use would require $300 (3 classes x $100/class).

The sworn confirmation must be made by a person with legal authority to bind the trademark owner and must be signed. When a Statement of Use is unsigned or signed by the wrong party, a substitute verification Is required.

Extensions of Time for Trademark Statements of Use

If you aren’t ready to file the SOU, you need to file a Request for Extension of Time to File a Statement of Use within six months of when your Notice of Allowance was issued. The extensions can be filed every six months for up to 36 months.

Trademark Statement of Use Example

A Statement of Use for a trademark application is needed when the U.S. Patent and Trademark Office (USPTO) issues a Notice of Allowance in a trademark application. If you receive a document that looks like the Notice of Allowance example below, you need to file a Statement of Use.

Example of a Notice of Allowance

This is an example of a Statement of Use that was filed in response to the Notice of Allowance above.

Trademark Statement of Use Example

Frequently Asked Questions About Trademark Statements of Use

1. What is a statement of use in trademark?

A Statement of Use (SOU) is a filing submitted to the U.S. Patent and Trademark Office (USPTO) that confirms that the applied-for mark is actually being used in commerce. Use in commerce is required to register a trademark with the USPTO.

2. How much does it cost to file a statement of use with the USPTO?

The cost for a trademark Statement of Use is $100 per class. A trademark Statement of Use must include a filing fee of $100 per class listed in your Notice of Allowance.

3. What is USPTO statement of use?

A statement of use (SOU) is a filing submitted to the U.S. Patent and Trademark Office (USPTO) that confirms that your trademark application is now being used in commerce.

4. What to include in a trademark Statement of Use?

You should include the required filing fee, at least one example of how you are using your mark, and a sworn statement that a trademark is in use

5. Do I need to file a statement of use for a trademark?

If you have received a Notice of Allowance from the U.S. Patent and Trademark Office, you must file a Statement of Use to show you are using it to sell goods and/or services.

Take the Next Step and Legally

Own Your Trademark

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Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

NIKE Trademarks – A COMPLETE GUIDE

December 3, 2022 by Michael Kondoudis

By Michael Kondoudis, Trademark Attorney

This is our COMPLETE guide to Nike’s trademarks.

If you want to learn about Nike’s trademarks, their histories, what products and services they protect, and Nike’s trademarking strategy then this guide is for you.

CONTENTS

> Introduction

> Nike and Its Trademarks

> Nike’s Famous Trademarks

> Nike’s Trademarking Strategy

1. Introduction

Nike is one of the most recognizable brands in the world. The company has been successful for many reasons, but one of the biggest is its masterful marketing and branding. In this blog post, we’ll take a look at Nike’s history as a brand and how it has used trademarks to become one of the most successful companies in the world.

Nike’s Beginnings

Nike was founded in 1964 as Blue Ribbon Sports by Bill Bowerman and Phil Knight. Bowerman was a running coach at the University of Oregon, and Knight was a former middle-distance runner who had recently graduated from Stanford Business School. The two men started selling running shoes out of the trunk of Knight’s car, and they eventually opened their first retail store in Santa Monica, California.

Iconic Branding

In 1971, the company decided to change its name to Nike, the Greek goddess of victory. The company also debuted its now-famous swoosh logo that same year. Since then, Nike has become known for its innovative marketing campaigns featuring top athletes like Michael Jordan, Tiger Woods, and Serena Williams.

Competition in the Athletic Footwear Industry

The athletic footwear industry is highly competitive. In addition to Nike, there are other major players like Adidas, Reebok, Puma, and Under Armour. To stay ahead of the competition, Nike continually innovates both its products and its marketing campaigns. For example, Nike was one of the first companies to sell athletic shoes online and was also an early adopter of digital marketing techniques like influencer marketing.

Nike’s Marketing Advantage

What separates Nike from its competitors? There are several factors that give Nike a competitive advantage in the marketplace. First, Nike has strong brand recognition worldwide. The company also has a long history of innovation that has helped it create groundbreaking products like Air Jordans and Flyknit technology. Additionally, Nike has a vast network of retailers selling its products around the globe. And lastly, Nike’s marketing campaigns are some of the best in the business—they’re creative, inspiring, and often controversial (in a good way).

2. Nike and Its Trademarks

What Is a Nike Trademark?

A Nike trademark is a trademark owned by Nike Inc., a world leader in footwear, apparel, and sports equipment. Nike trademarks represent the Nike brand. Companies like Nike use trademarks to identify their products and to keep their brands distinctive. With trademarks, a company like Nike can stop competitors from marketing competing products using similar names, logos, and slogans.

When did Nike start filing trademark applications?

Nike first began filing trademark applications in 1971. Since then, Nike has filed almost 200 trademark applications.

How many trademarks does Nike have?

Nike currently owns almost 200 registered trademarks.

What does Nike trademark?

Nike trademarks the names, logos, and phrases that it uses to identify its products and to distinguish them from the competition. These trademarks protect Nike’s brand and help consumers find authentic Nike products. Some of Nike’s famous trademarks include:

The company name (NIKE)
Shoe names (AIR JORDAN)
Phrases (JUST DO IT)
Logos (the SWOOSH symbol)

3. Famous Nike Trademarks

Nike owns some of the most famous and valuable trademarks in the world.

The “SWOOSH” Logo

Nike first began using its SWOOSH logo in June of 1971 and trademarked the world-famous logo in 1974. Since then, it has become synonymous with the Nike brand. Nike owns multiple trademark registrations for its SWOOSH logo and these registrations cover a variety of products, including: clothing, footwear, sports equipment, and even virtual goods and stores for the metaverse!

U.S. Trademark No. 977,190 for the SWOOSH Logo

Is the Nike Swoosh trademarked?

Yes, the Nike Swoosh logo is trademarked. Nike trademarked the iconic swoosh logo in 1972 and currently owns several trademark registrations for it.

When was the Nike Swoosh logo trademarked?

Nike filed its first trademark application for the SWOOSH logo in January of 1972. The application was granted by the U.S. Patent and Trademark Office on January 22, 1974, and it is now registered.

JUST DO IT

Nike first began using the phrase JUST DO IT in 1988 and trademarked this famous phrase in 1995. Since then, it has become synonymous with the Nike brand. Nike owns multiple trademark registrations for its JUST DO IT phrase and these registrations cover a variety of products, including: clothing, footwear, sports equipment, and even virtual goods and stores for the metaverse!

U.S. Trademark No. 1,875,307 for JUST DO IT

Is the phrase JUST DO IT trademarked?

Yes, the phrase JUST DO IT is trademarked. Nike trademarked this distinctive phrase in 1995 and currently owns several trademark registrations for it.

When was JUST DO IT trademarked?

Nike filed its first trademark application for the phrase JUST DO IT in October of 1989. The application was granted by the U.S. Patent and Trademark Office on January 24, 1995, and it is now registered.

AIR JORDAN

Nike first used its AIR JORDAN name for basketball shoes in 1984 and trademarked this famous brand in 1985. Since then, AIR JORDAN has become closely associated with Nike. Nike owns several trademark registrations for the AIR JORDAN name covering many products, including: clothing, footwear, sports equipment, and even virtual goods and stores for the metaverse!

U.S. Trademark No. 1,370,283 for AIR JORDAN

Is the name AIR JORDAN trademarked?

Yes, the name AIR JORDAN is trademarked. Nike trademarked this iconic product name in 1995 and currently owns several trademark registrations for it.

When was AIR JORDAN trademarked?

Nike filed its first trademark application for the name AIR JORDAN in May of 1985. The application was granted by the U.S. Patent and Trademark Office on November 12, 1985, and it is now registered.

The “JUMPMAN” Logo

One of Nike’s most famous trademarks is the “Jumpman” logo, a silhouette of former NBA player Michael Jordan. This logo is on every AIR JORDAN sneaker. Nike introduced its Jumpman logo in 1987 and trademarked it in 1989. The sneakers that bear Michael Jordan’s name and image have helped Nike become one of the leading sportswear brands in the world today.

U.S. Trademark No. 1,558,100

NIKELAND

In 2021 Nike began making preparations toward entering the metaverse. As part of those preparations, Nike filed a US trademark application for NIKELAND to protect the name for a variety of virtual products and services, including:

• Virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys, and accessories

• Providing an interactive website and computer application software for virtual reality game services

• Entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys, accessories, digital animated and non-animated designs and characters, avatars, digital overlays, and skins for use in virtual environments; virtual reality and interactive game services provided online from a global computer network and through various wireless networks and electronic devices; entertainment services, namely, providing online non-downloadable game software and online video games; entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure, or entertainment purposes; entertainment services, namely, providing an online environment featuring streaming of entertainment content and live streaming of entertainment events; entertainment services in the nature of organizing, arranging, and hosting virtual performances and social entertainment events

4. Nike’s Trademarking Strategy

Nike is one of the most successful companies in the world because of its rich history as a brand and its masterful marketing campaigns.

Nike carefully cultivated and protected an expansive brand comprising a variety of trademarks. As the company moves its brands into the metaverse, it continues to strategically trademark its brand elements to prevent the competition from using them without permission. As a result, Nike has maintained control over its image, cementing its place as one of the top brands in the world.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

The Differences Between the TM and ® Trademark Symbols

October 26, 2022 by Michael Kondoudis

The ® symbol indicates that the mark is registered with the USPTO and protected by federal law. The TM symbol indicates only that the mark is trademarked but may not be registered with the USPTO.

By Michael Kondoudis, Small Business Trademark Attorney

This is our COMPLETE guide to the TM and ® trademark symbols.

This guide explains what the TM and ® symbols mean, when to use them, and the differences between them.

If you’re a trademark owner wondering what the differences are between the TM and ® symbols, then this guide is for you.

Let’s get started!

CONTENTS

> About Trademarks

> The TM Symbol

> The ® Symbol

> The Differences Between the TM and ® Symbols

> Condensed Summary

1. About Trademarks

What is a trademark?

A trademark is a symbol, name, or other device that distinguishes the goods or services of one company from those of others. A trademark can be a word, phrase, logo, graphic, color, or even a sound. The purpose of a trademark is to prevent consumers from being confused about the source of a product or service. Trademarks can be registered with the U.S. Patent and Trademark Office (USPTO), the federal agency that administers federal trademarks.

What is trademark registration?

Trademark registration is a process through which the U.S. Patent and Trademark Office (USPTO) evaluates a trademark to ensure that it qualifies for protection under federal trademark laws. The trademark registration process involves submitting an application to the USPTO and then waiting for the office to review the application and make the determination.

Is trademark registration required?

Registration is optional, but trademarks registered with the USPTO are stronger than those that are not registered. Only owners of registered trademarks are legally permitted to use the ® trademark symbol.

What are some of the benefits of trademark registration?

The benefits of trademark registration are numerous. First, only one person or business can register a trademark in an industry. When a trademark is registered, no one else can register or use it. Secondly, trademark registration is official confirmation of ownership of the mark. Third, trademark registration extends protection nationwide. Also, trademark registration is a powerful marketing tool; by registering your mark, you tell customers that your products or services are of high quality and legitimacy.

You can read all of the reasons to register a trademark here.

2. The TM Trademark Symbol

What does the TM symbol mean?

Typically, the TM symbol means unregistered trademark. The TM symbol means you claim rights in your trademark but may not have registered it. The TM symbol lets people know that a name, word, phrase, or logo is trademarked – regardless of whether you have registered it or not.

What is the TM symbol used for?

Typically, the TM symbol is used to indicate an unregistered trademark. When the TM symbol is used with a name, word, phrase, or logo, it means that the mark may not have been registered with the USPTO.

Do you need help with your trademark?

When is the TM symbol used?

The TM symbol can be used at any time, regardless of whether or not your trademark is registered with the USPTO. So, the TM symbol can be used with registered and unregistered trademarks. However, a TM symbol is typically used to indicate an unregistered trademark.

When should you use the TM symbol?

You should use the TM trademark symbol for unregistered trademarks and those going through the registration process. After the USPTO registers a trademark, you should use the ® symbol and stop using the TM symbol.

Why is it important to use the TM symbol?

Using the TM symbol for registered trademarks is important because it lets consumers know that you claim rights in a mark, and common law rights protect it. If you don’t use the TM symbol, consumers may not realize that your mark is a trademark.

The TM symbol puts potential infringers on notice that you consider your mark already in use and protects your common law rights to the mark.

3. The ® Trademark Symbol

What does the ® symbol mean?

The ® symbol means registered trademark. The ® symbol means that the U.S. Patent and Trademark Office (UPSTO) has registered your trademark and is protected by federal trademark law. The ® symbol lets consumers know that a name, word, phrase, or logo is trademarked and that it is registered with the USPTO.

What is the ® symbol used for?

The ® symbol is used to indicate a registered trademark. The ® symbol indicates that a trademark is registered with the USPTO.

When is the ® symbol used?

The ® symbol is used only after a trademark has been registered by the USPTO. The ® symbol can only be used with registered trademarks.

When should you use the ® symbol?

You should use the ® trademark symbol for registered trademarks that have completed the USPTO registration process. So, for a company to use the ® symbol, it must first apply for and receive a trademark from the government.

Why is it important to use the ® symbol?

Using the ® symbol for registered trademarks is important because it lets consumers know that the mark is protected by federal law. If you don’t use the ® symbol, consumers may not realize that your trademark is registered.

The ® symbol, on the other hand, provides notice that your mark is registered with the USPTO and deters potential infringers by making it clear that you have a valid claim to the mark.

4. Differences Between TM and ®

The ® and TM symbols are both used to indicate that a particular name, word, phrase, or logo is a trademark. However, there is a distinct difference between the two symbols.

How do the TM and ® Symbols Differ?

The TM and ® symbols differ in the following three ways:

when they are used
what they mean
their impact

#1 Usage

The TM symbol can be used with registered and unregistered trademarks, while the ® symbol can only be used with registered trademarks. You can only use the ® trademark symbol after registering your mark with the USPTO.

The ® symbol is reserved exclusively for registered trademarks, while the TM symbol can be used regardless of whether your trademark is registered with the USPTO.

Do you need help with your trademark?

#2 Meaning

The ® symbol means that a trademark is registered with the USPTO and is protected by federal law, while the TM symbol means that someone claims exclusive rights to a trademark, which may or may not be registered.

#3 Impact

The TM symbol is less powerful than the ® symbol because it doesn’t offer federal protection. However, using the TM symbol can still help to prevent consumer confusion and can help to protect your trademarks from infringement.

5. Condensed Summary

When you see a company’s logo, there is usually a little symbol next to it. But what does that symbol mean? The two most common symbols are the TM and the ®. They may look similar, but they actually have two very different meanings. Keep reading to learn the difference between the TM trademark symbol and the ® trademark symbol.

The TM symbol stands for ‘trademark.’ It can be used with any word, phrase, or logo that a company feels represents their brand. The TM symbol does not have to be registered with the government to be used; however, businesses can only use it once they have proof that they are using it as a trademark. common law rights.

The ® symbol stands for ‘registered trademark.’ This means that it is a trademark that has been registered with the government. In order to use this symbol, businesses must first register their trademark with the USPTO.

The bottom line is that if you want to use the ® symbol, you must register your trademark with the USPTO. However, you can use the TM symbol even if your trademark is not yet registered. Doing so will help you protect your rights to your word, phrase, or logo by indicating that you are already claiming ownership of it.

TAKE THE NEXT STEP

Take next step toward LEGALLY owning your Trademark!

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your mark, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

How to Trademark a Logo for Free – AN EASY GUIDE

October 25, 2022 by Michael Kondoudis

You can trademark a logo for free with a “common law” trademark and establishing a common law trademark doesn’t require any forms or fees. However, you cannot register a trademark for a logo for free.

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademarking a logo for free.

You may have heard that you can trademark your logo for free. Is this true? The answer is both yes and no.

It is possible to get some trademark rights just by using a trademark. But, those rights are limited and pale in comparison to trademarks registered with the U.S. Patent and Trademark Office.

In this post, I’ll explain exactly how to trademark a logo for free, and this information applies to names and phrases as well.

So, if you want to learn how to trademark a logo for free, this guide is for you.

Let’s get started!

CONTENTS

→ How to trademark a logo for free

→ All about common law trademarks

→ How to establish common law trademark rights

→ All About registered federal trademarks

→ The benefits of trademark registration

→ How to register a trademark for free

→ Condensed summary

→ Frequently asked questions

I. HOW TO TRADEMARK FOR FREE

How to Trademark a Logo for Free

You can trademark a logo for free by getting a common law trademark. A common law trademark can be a great way to protect your logo without incurring the cost of registration.

Can you trademark a logo for free?

Yes, you can trademark a logo for free by establishing a “common law” trademark through use of the logo in commerce. This means using the logo to brand your company, business, product, or service. You cannot register the logo for free, however, because the U.S. Patent and Trademark Office charges a filing fee for every new trademark application. So, there is always a fee to register a logo.

RELATED: How to Register a Band Logo

Is There Such a Thing as Free Trademark?

Yes, you can establish a common law trademark for free. A trademark registration is never free, however. The U.S. Patent and Trademark Office charges a “filing fee” for every application.

II. COMMON LAW TRADEMARKS

What is a Common Law Trademark?

A common law trademark is not registered with the USPTO but is instead established through use in commerce and taking steps to prevent others from using it.

Common law trademarks are not registered with the government but are still protected under the law.

Common law trademarks are established through use in commerce. They are based on use, through actual use in commerce rather than through registration.

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See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

The Benefits of a “Free” Common Law Trademarks

There are several benefits to common law trademarks.

First, common law trademarks are easier to obtain than federal trademarks. There are far fewer requirements. Common law trademark rights come from use in commerce.

Second, common law trademarks are much less expensive than registered federal trademarks. It is cheaper to establish a common law trademark than to register one with the U.S. Patent and Trademark Office (USPTO).

Third, common law trademark rights can be established in less time than registered trademarks. All that is required is use in commerce.

The Limitations of a “Free” Common Law Trademark

Common law trademarks can provide valuable protection for businesses, but they have limitations. The two most important limitations are geographic and enforcement.

First, common law trademark rights are limited to the geographic area where a mark is used. They are not national, unlike registered trademarks. That means that other businesses outside of your local region could use your logo and you would be unable to stop them. So, if you plan to expand your business into multiple markets, you should consider registering your trademark with the USPTO.

Second, enforcing common law rights is far more complex and expensive. For example, a trademark owner must prove ownership, validity, and regions of use. In contrast, with registered federal trademarks, these elements of infringement are legally presumed, so enforcement is easier and less expensive. Also, it is presumed that a registered federal trademark is recognized as representing a brand.

The surest way to LEGALLY own your trademark is to register it with the U.S. Patent and Trademark Office. Federally registered trademarks are stronger than common law trademarks. Read about the advantages of trademark registration here.

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III. HOW TO GET A COMMON LAW TRADEMARK

How to Establish a Common Law Trademark

To establish a common law trademark, you will need to do two things:

1. Use the mark in commerce; and

2. Demonstrate that it has “secondary meaning,” which is to say that it has become associated with your brand in the minds of consumers.

Use in commerce

You have to use the mark in a way that identifies it as being associated with your goods or services. For example, you could use the mark on packaging, labels, signage, or advertisements.

Secondary meaning

This can be shown by promoting the mark through advertising and marketing and ensuring that it is used consistently across all your business’s communications. This can be done by showing that the mark has been in continuous use for a period of time or that it has become well-known among consumers.

Once you have established a common law trademark, you can enforce it against infringements in certain situations. However, note that common law trademarks do have some limitations.

IV. ABOUT REGISTERED TRADEMARKS

What is a Registered Trademark?

A Federal trademark is an enhanced trademark certified by the U.S. government. It’s an enhanced trademark because it comes with exclusivity and nationwide legal rights, preventing anyone else from registering anything similar for your industry.

The United States Patent and Trademark Office (or “USPTO”) is the Federal agency that registers trademarks.

What Are the Benefits of a Registered Trademark?

Federal trademark registration is the ultimate protection for any brand. There is no higher level. That makes a Federal trademark the best insurance against having to rebrand.

Here are just some of the reasons why:

A registered federal trademark is an official confirmation that you own your trademark.
A registered federal trademark comes with the immediate, exclusive, and nationwide right to use your mark.
A registered federal trademark will prevent anyone else from registering it (or anything similar) in your industry.
A registered federal trademark gives you enhanced protection for domain names and social media platforms and access to Amazon’s brand registry.
A registered federal trademark gives you the legal right to use the ® symbol.A

V. HOW TO REGISTER A TRADEMARK FOR FREE

How to Register a Trademark for Free

You cannot register a trademark for free because every application filed with the U.S. Patent and Trademark Office (“USPTO”) must be accompanied by a non-refundable filing fee. This fee is mandatory and is non-refundable. The USPTO filing fee is $250 or $350 per class of goods or services. Therefore, while it is possible to register a trademark without hiring a lawyer, it can never be free.

Can You Register a Trademark for Free?

No, you cannot register a trademark for free because the U.S. Patent and Trademark Office (“USPTO”) charges a filing fee for every application it receives.

Is There Such a Thing as Free Trademark Registration?

No. To register a trademark, you must pay a non-refundable government filing fee to the United States Patent and Trademark Office (“USPTO”). So, free trademark at the federal level is not an option.

How Much Does Trademark Registration Cost?

Currently, the U.S. Patent and Trademark Office charges a filing fee for every application. The current filing fee is at least $250 per application, and often more when many products or services are listed in the application.

The average cost is between $275 and $400 to file a trademark application with the USPTO. However, the actual cost will depend on several factors, including the complexity of the application. Ultimately, the cost of trademark registration will vary depending on the specifics of your situation.

VI. SUMMARY

In the United States, you can establish “common law” trademark rights in a logo just by using it to brand your company, products, and/or services. Common law trademark rights are limited and difficult to enforce, however.

The best way to protect a logo is to register it with the U.S. Patent and Trademark Office (USPTO). The process of registering a logo trademark includes filing an application with the USPTO and the USPTO charges a filing fee for every new trademark application. The application fee is currently $250 per class of goods or services that you list in your application. So, there is no such thing as a free trademark registration.

VII. FREQUENTLY ASKED QUESTIONS

1. Can I trademark a logo for free?

No, you can’t register a logo for free, but you can establish a common law trademark for free by using the logo to brand your products. Common law trademarks are free and do not require any paperwork or forms. There is no way to register a logo trademark for free because you will always have to pay at least a small fee that covers the costs of examining and processing your trademark application. There is no way to get a federal trademark for free.

2. What is the least expensive way to trademark a logo?

The least expensive way to trademark a logo is to establish common law rights, which is free.

3. What is the least expensive way to register a logo trademark?

The cost to trademark a logo is between from $250 to $350 per trademark class. This is the cost to submit your trademark application to the USPTO. The easiest way to submit an application to register your trademark is online, through the USPTO’s Trademark Electronic Application System (TEAS).

4. What is the cheapest way to trademark a logo?

There is a free option to get a trademark for your logo. The way to get a free trademark is to establish common law trademark rights by using your logo to brand your business, products, or services. Common law trademark rights have limitations, but they can offer some protection for logos.

5. Can you trademark things for free?

Yes, you can establish common law trademarks and no cost. However, you cannot register a trademark for free. The U.S. Patent and Trademark Office always charges a filing fee.

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Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Arbitrary Trademarks – AN EASY GUIDE with Examples

October 25, 2022 by Michael Kondoudis

An arbitrary trademark is a word that has a dictionary meaning, but that meaning is not related to the product or service its used for. Arbitrary trademarks never describe products or services.

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to arbitrary trademarks.

Arbitrary trademarks are an important part of branding for many businesses. They can be strong trademarks.

By choosing the right arbitrary trademark and taking steps to protect it, you can ensure that your business has the exclusive right to use it.

In this easy guide, we explain arbitrary trademarks, give some tips on choosing the right arbitrary trademark for your business, and show you how to protect your arbitrary trademark.

We’ll also answer frequently asked questions about arbitrary trademarks along the way.

Let’s get started!

CONTENTS

> Arbitrary Trademarks Explained

> How Arbitrary Trademarks Work

> Arbitrary Trademark Examples

> Arbitrary Trademark Advantages

> How to Choose Arbitrary Trademarks

> How to Protect Arbitrary Trademarks

> Condensed Summary

> Frequently Asked Questions

1. About Arbitrary Trademarks

What is an Arbitrary Trademark?

An arbitrary trademark is a word or image with a known meaning, but that meaning is not related to the product or service with which it is used. Arbitrary trademarks are a type of trademark that use words or designs that have no connection to the products or services being offered. So, arbitrary trademarks have dictionary meanings, but those meanings are not associated with the products they brand.

Some well-known examples of arbitrary trademarks are “Nike” for sneakers, “Amazon” for online shopping, and “Apple” for computers. As you can see, these brands have taken words with dictionary definitions and used them in a way unrelated to their products.

When is a Trademark Arbitrary?

A trademark is arbitrary when it can be found in a dictionary and its meaning is unrelated to the product or services with which it is used.

What Makes a Trademark Arbitrary?

The test for whether a trademark is arbitrary is:

Does the mark have a dictionary or commonly known meaning?
Is that meaning connected or disconnected from the product with which it is used?

If a trademark can be found in the dictionary and its defined meaning is unrelated to the products or services it brands, then it is an arbitrary trademark. If a mark is a made-up word or conveys something about the product, it is not an arbitrary trademark.

How Do Arbitrary Trademarks Differ From Other Types of Trademarks?

Arbitrary trademarks seem “out of context” with the products with which they are used, and this “discontinuity” is the hallmark of an arbitrary trademark. Other trademarks are made up words, suggest features of products/services, or describe them.

What is Not an Arbitrary Trademark?

Fanciful Trademarks: words or images that do not have a dictionary meaning. They are “made up” or “invented” for the sole purpose of branding a product or service. They are the strongest trademarks and are entitled to the most protection by courts and the USPTO.

Suggestive Trademarks: words or images that allude to or hint at something about the product or service with which it is used. They require some imagination, thought, or perception to make that connection. They are protectable trademarks and entitled to protection by courts and the USPTO.

Descriptive Trademarks: words or images that directly convey something about the product or service they brand. Descriptive marks are only entitled to protection when the owner can show that consumers recognize them as a brand after some period of exclusive use.

Generic Trademarks: words or images that stand for entire categories or category of products. Generic marks are not protected by trademark law.

Are Arbitrary Trademarks Good?

Yes, arbitrary marks are strong trademarks. Also, they tend to be easier for people to remember and are the second most likely type to pass federal registration standards.

2. How Arbitrary Trademarks Work

Arbitrary trademarks work by creating a unique association between a particular word or logo and your brand. Because the word or logo has no relation to your product or service, consumers will only be able to associate it with your brand. This protects you against competitors trying to use a similar-sounding word or logo.

For example, let’s say you own a clothing company and arbitrarily trademarked the word “Sapphire.” If another clothing company comes along and tries to use the word “Sapphire” for its products, you could take legal action against them because consumers would be confused about which brand is which.

The same would be true if someone tried to use a similar-looking logo. Let’s say your logo is a blue diamond shape. If another company started using a green diamond shape for its own products, you could again take legal action because consumers might confuse the two brands.

For an arbitrary trademark to be fully protected, it must be registered with the U.S. Patent and Trademark Office. Once registered, you will have exclusive rights to use the word or logo for your brand.

3. Arbitrary Trademark Examples

Arbitrary trademarks are a very strong category of trademark. Arbitrary marks are memorable and the second most likely to pass federal registration standards.

These are 20 examples of arbitrary trademarks:

Axe (body spray)
Adobe (software)
Amazon (online marketplaces)
Apple (consumer electronics and tech company)
Canon (cameras and printers)
Coach (luxury accessories)
Camel (cigarettes)
Daisy (BB guns)
Delta (airlines)
Dominos (pizza)
Dove (soap)
Ford (trucks and automobiles)
Gap (clothing)
Google (search engines)
Nike (footwear)
Puma (footwear)
Shell (gas and filling stations)
Subway (sandwiches)
Tide (laundry detergent)
Whirlpool (appliances)

Each of these words can be found in a dictionary. Nonetheless, those dictionary meanings are unrelated to the branded products with which the marks are used.

4. Arbitrary Trademark Advantages

There are many advantages to having an arbitrary trademark. First, because they are not descriptive or suggestive, they are entitled to a broad scope of protection. This means that you can prevent others from using your trademark for similar goods or services even if they are not identical. Second, arbitrary trademarks are often very strong and distinctive. Because they are not descriptive or suggest any connection to the underlying goods or services, customers are likely to remember them better and associate them with a single source. Finally, arbitrary trademarks can be very valuable because they can last indefinitely as long as you continue to use them in commerce and take steps to protect them from infringement.

5. How to Choose Arbitrary Trademarks

How to Choose a Suggestive Trademark

Picking the right arbitrary trademark is essential for your business. There are a few key factors to consider when choosing an arbitrary trademark. First, you want to make sure that the trademark has a commonly known meaning or can at least be found in a dictionary. Second, you want to ensure that the meaning of your mark does not convey or even hint at a feature or quality of your product. Third, you want to ensure that the trademark is not too similar to anyone else’s. This could result in a likelihood of confusion and could lead to your trademark being invalidated.

Hierarchy of Trademarks

The sole functions of a trademark are to identify the source of a product or a service and to distinguish them from the competition. A distinctive trademark performs this function. A distinctive trademark is strong.

It turns out that some marks have a natural tendency to be distinctive. Courts and the U.S. Patent and Trademark Office (USPTO) judge this tendency using the following hierarchy of trademarks:

Fanciful: (most distinctive) a term without a dictionary meaning that is invented for the sole purpose of branding a product or service. They are the strongest trademarks and are entitled to the most protection by courts and the USPTO.

Arbitrary: (highly distinctive) a term with a dictionary meaning that is not related to the product or service with which it is used. They are strong trademarks and entitled to broad protection by courts and the USPTO.

Suggestive: (distinctive) a term that alludes to something about the product or service with which it is used and requires some imagination, thought, or perception to make that connection. They are trademarks and are entitled to protection by courts and the USPTO.

Descriptive: (potentially distinctive) a term that directly conveys something about the product or service they brand. Descriptive marks are only entitled to protection if the owner can show that consumers recognize them as a brand after some period of exclusive use.

Generic: (never distinctive) the common name for a category of product – cannot be trademarked.

As a general rule, distinctive trademarks are preferable because they tend to be stronger and easier to register and protect.

What Are the Five Categories of Trademarks?

These five categories are:

- Arbitrary trademarks
- Fanciful trademarks
- Suggestive trademarks
- Descriptive trademarks
- Generic trademarks

6. How to Protect Arbitrary Trademarks

Are Arbitrary Marks Protected?

Yes, arbitrary marks are protected. Federal courts have found that arbitrary marks are entitled to protection under Trademark Law.

How to Make Sure Your Arbitrary Trademark is Fully Protected

There are a few steps that you can take to make sure that your arbitrary trademark is protected. First, you should register it with the U.S. Patent and Trademark Office. This will give you the complete protection that you are entitled to under trademark law. Second, you should use your trademark in commerce. This will help put the public on notice of your trademark ownership. Finally, you should monitor for unauthorized use of your trademark. If you see someone using it without your permission, you can take steps to stop them.

Can You Register an Arbitrary Trademark?

Yes, you can register an arbitrary trademark with the USPTO.

To be eligible for registration, an arbitrary trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services. Read about more of the trademark requirements here.

Arbitrary marks are generally registrable. They belong to the category of strong trademarks known as inherently distinctive marks. Assuming all other conditions for registration are satisfied, an inherently distinctive mark is registrable without a showing of acquired distinctiveness.

Are Arbitrary Trademarks Inherently Distinctive?

Yes, arbitrary trademarks are “inherently distinctive,” meaning their distinctiveness is legally presumed. Arbitrary trademarks are considered distinctive enough to function as trademarks through proper use alone, without evidence of how well consumers recognize them.

Do Arbitrary Trademarks Need Secondary Meaning?

No, arbitrary trademarks do not need secondary meaning because they are inherently distinctive. They can be registered and protected without proof that customers identify with a particular company through use over time.

Arbitrary marks are registrable without a showing of acquired distinctiveness, assuming all other conditions for registration are met.

The Benefits of Registering an Arbitrary Trademark

There are several benefits to registering an arbitrary trademark. First, it allows you to protect your trademark fully. Second, it gives you the exclusive right to use your trademark. This means that no one else can use it without your permission. Third, it will prevent a competitor from registering the trademark and taking it from you. Fourth, it ensures that your trademark does not infringe on anyone else’s trademark. Fifth, it puts the public on notice of your trademark ownership, which helps deter others from trying to use it.

Read about all of the advantages that come with federal trademark registration here.

7. Condensed Summary

An arbitrary trademark is a word or phrase that has no relationship to the product or service it’s used for. For example, Apple is an arbitrary trademark for computers and other electronics. Other examples of arbitrary trademarks include Amazon (online retail), Mercedes (automobiles), and Nike (athletic apparel).

The reason companies choose arbitrary trademarks is because they are easy to remember and they stand out from the crowd. When you hear an arbitrary trademark, you’re likely to remember it long after you’ve heard it.

There are several benefits that come with having an arbitrary trademark. First, as we just mentioned, these types of trademarks are easy to remember. This is important because it helps customers remember your brand and come back to you when they need your products or services.

Second, since these trademarks are so distinctive, they can act as a powerful marketing tool. They can help you stand out from your competitors and make your brand more recognizable. And last but not least, arbitrary trademarks are very strong from a legal standpoint.

8. Frequently Asked Questions

1. Is Apple an arbitrary trademark?

Yes, Apple is an arbitrary trademark because the word apple has a dictionary meaning (a fruit), and that meaning is not related to technology devices and/or a technology company.

2. Is Nike an arbitrary trademark?

Yes, Nike is an arbitrary trademark because the word Nike has a dictionary meaning (the Roman god of war), and that meaning is not related to footwear and/or sports equipment.

3. Can a trademark be arbitrary?

Yes, a trademark can be arbitrary. Arbitrary trademarks are one of five categories of trademarks. They are generally very strong, protected by courts, and eligible for registration by the U.S. Patent and Trademark Office. Arbitrary trademarks are a good choice to represent any brand.

4. What is an example of an arbitrary trademark?

Examples of arbitrary trademarks include TIDE (for laundry detergent) and WHIRLPOOL (for home appliances). Any trademark that has a dictionary meaning that is disconnected from goods/services for which it is used is an arbitrary trademark.

An arbitrary trademark is one that has a meaning with no connection to the product or service it represents.

5. Can arbitrary trademarks be registered?

Yes, arbitrary trademarks can be registered. Arbitrary marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register arbitrary trademarks. Arbitrary marks are considered inherently distinctive and are given some of the broadest protections by courts and the USPTO.

6. What type of trademark is Nike?

The Nike trademark is a fanciful mark because it is found in a dictionary and does not describe or convey anything about sports gear, for example.

TAKE THE NEXT STEP

Ready to LEGALLY own your trademark?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your trademark, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

COMPLETE GUIDE TO TEAS PLUS

October 21, 2022 by Michael Kondoudis

The TEAS Plus option is faster and less expensive than the regular filing option, but has more requirements and potential pitfalls, especially for the first time filer.

By Michael Kondoudis, Trademark Attorney

This is our COMPLETE guide to TEAS Plus, one of the two trademark application filing options offered by the U.S. Patent and Trademark Office through its online filing system.

The TEAS Plus option is faster and less expensive than the regular filing option, but has more requirements and potential pitfalls, especially for the first time filer. Also, not every application qualifies for this streamlined option.

If you want to quickly learn the ins and outs of TEAS Plus, then this guide is for you.

Let’s get started.

CONTENTS

> About TEAS

> The Requirements for TEAS Plus

> TEAS Plus vs TEAS Standard

> The Benefits of TEAS Plus

> When to Use TEAS Plus (and when not)

> Whether You Need a Lawyer to File In TEAS

> Frequently Asked Questions

1. About TEAS

What is TEAS?

“TEAS” stands for “Trademark Electronic Filing System.” The U.S. Patent and Trademark Office (“USPTO”) encourages all applicants to file their trademark applications online, and TEAS is the USPTO’s online application filing system. TEAS offers two filing options: TEAS Plus and TEAS Standard. Both options provide a pathway to seek registration, but the USPTO designed the TEAS Plus application to provide a less expensive and more streamlined option.

What is TEAS Plus?

TEAS Plus is one of two filing options offered in the USPTO’s Trademark Electronic Filing System (“TEAS”). The other is TEAS Standard. TEAS Plus has more up-front requirements than the TEAS Standard option when initially applying to the USPTO but also requires reduced fees per class of goods or services.

TEAS Plus has the lowest filing fee but comes with more requirements than TEAS Standard.

What is a TEAS Plus application?

A TEAS Plus application is a new trademark application filed using the TEAS Plus filing option. TEAS Plus applications register faster than those filed using other options but have more initial filing requirements.

What is TEAS Standard?

TEAS Standard is one of two filing options offered in the USPTO’s Trademark Electronic Filing System (“TEAS”). The other is TEAS Plus. TEAS Standard has fewer up-front requirements than the TEAS Plus option when initially applying to the USPTO but requires higher fees per class of goods or services.

TEAS Standard has a higher filing fee but fewer requirements than TEAS Plus.

What is a TEAS Standard application?

A TEAS Standard application is a new trademark application filed using the TEAS Standard filing option. TEAS Standard applications are more flexible and have fewer initial filing requirements than those filed by TEAS Plus.

2. The Requirements for TEAS Plus

There are two main requirements for TEAS Plus. The two main requirements for TEAS Plus are:

(1) provision of all of the information required by the application form, including the applicable additional statements; and

(2) an accurate description of your goods/services using only pre-approved entries from the USPTO Trademark ID Manual.

3. TEAS Plus vs TEAS Standard

There are several differences between the TEAS Plus and TEAS Standard filing options. These are the main differences:

1. Cost/Filing fees

2. How you identify goods and services

3. When you pay the filing fees

4. Additional technical statements

1. Cost/Filing Fees

The USPTO charges application filing fees for TEAS Plus applications at $250 per class of goods/services. For TEAS Standard applications, the rate is $350 per class of goods/services.

2. How You Identify Goods And Services

Every trademark application must include an accurate listing of the goods and/or services for which registration is sought. A TEAS Plus application filed using the TEAS Plus filing option requires that you build your listing from entries in the USPTO’s Acceptable Identification of Goods and Services Manual (also known as the “ID Manual”).

When you file a TEAS Plus application, you are limited to the options in the Trademark ID Manual to build your listing of goods/services.

When you file a TEAS Standard application, you can use your own words to build your listing of goods/services.

3. When You Pay The Filing Fees

Every trademark application must be accompanied by an application filing fee, which is based on the number of classes of goods/services implicated by the listing of goods/services in the application.

For TEAS Plus applications, you must pay all application filing fees with your initial application.

For TEAS Standard applications, you can pay the application filing fee for just one class with your initial application and pay the rest later during the examination process.

4. Additional Technical Statements

A TEAS Plus application must include certain relevant additional statements when they apply to your trademark. You must provide additional statements when:

- Your mark includes non-English words (you must include an English translation).
- Your mark includes non-Latin characters (you must include a transliteration and either an English translation or a statement that the transliterated term has no meaning in English).
- Your mark includes color (you must include a claim that color is a feature of the mark and a statement naming the color and describing where the color appears on the mark).
- You have previously registered the same mark (you must state that you claim ownership of the prior registration).
- Your mark includes the name or likeness of a living person (you must identify the individual and provide the individual’s consent).

A TEAS Standard application filed using the TEAS Standard option permits an applicant to make these statements later – when they apply.

4. The Benefits of TEAS Plus

It is your choice whether to use the TEAS Plus option or the TEAS Standard option. A TEAS Plus application lowers your filing fee and increases the likelihood of your application moving more quickly toward publication and registration. Also, the success rate of TEAS Plus applications is higher than TEAS Standard applications. So, the TEAS Plus option is a way to decrease the risk of refusal of your application by the USPTO.

5. When to Use TEAS Plus

When to use TEAS Plus

You should file a TEAS Plus application using the TEAS Plus filing option when you can:

(1) provide all of the information required by the application form, including the additional statements; and

(2) accurately describe your goods/services using pre-approved entries from the USPTO Trademark ID Manual.

If you can make all required additional statements and your goods/services in the USPTO’s Trademark ID Manual, then TEAS Plus is probably the better filing option.

When not to use TEAS Plus

You should not file a TEAS Plus application using the TEAS Plus filing option when:

(1) The USPTO’s Trademark ID Manual does not include an accurate pre-approved listing for your goods/services; and

(2) You don’t have all the information required by the application form, including the additional statements required by the TEAS Plus option.

If you are unsure whether additional statements are required or need a customized listing of goods/services, then TEAS Standard is probably the better filing option.

Which Types of Trademarks Qualify for TEAS Plus

Only applications for trademarks and service marks seeking registration on the Principal Register are eligible for TEAS Plus.

If you are filing an application for any of the following types of trademarks, you must use the TEAS Standard option:

(1) certification marks

(2) collective trademarks and service marks

(3) collective membership marks

(4) Applications for registration on the Supplemental Register

6. Searching the USPTO’s Trademark ID Manual

What is the USPTO’s Trademark ID Manual?

The USPTO’s Trademark ID Manual is a searchable database of pre-approved identifications of goods and services.

How to Search the USPTO’s Trademark ID Manual

You can Searching the USPTO’s Trademark ID Manual by following these four steps:

1. Navigate to the Manual at https://idm-tmng.uspto.gov/id-master-list-public.html

2. Enter your search terms in the search box and select the search icon

3. Review the search results. ID Manual displays search results in a table format.

4. Sort the search results by clicking on the various column headers of the results table (optional).

7. Do You Need a Trademark Lawyer?

Do You Need a Trademark Attorney to Use TEAS Plus?

No, but the U.S. Patent and Trademark Office strongly recommends that all applicants work with a trademark attorney – for several reasons. (see below).
Remember, the trademarking process is much more than just filling out online forms (that’s the easiest part of the process). The USPTO will only grant your application after meeting all of their many legal and procedural requirements.

Do you need help with your trademark?

Why Should You Consult a Trademark Attorney to File Your Application With TEAS?

Filing a trademark application with the USPTO to register your trademark starts a legal process that can get complicated, expensive, and confusing. Working with a trademark attorney can make the process smoother, faster, and result in better protection.

Also, studies show that working with a trademark attorney can increase your chances of successfully trademarking your brand by over 50%.

8. Frequently Asked Questions

1. Should I file TEAS plus or standard?

TEAS Standard is the better option if you need a custom description of your goods and services. TEAS Plus is the better option for first-time or inexperienced applicants who can describe their goods and services using the U.S. Patent and Trademark Office’s Trademark ID manual.

2. Can I use TEAS Plus for intent to use?

Yes, you can file intent to use applications using the TEAS Plus application option.

3. What is TEAS in USPTO?

TEAS stands for the Trademark Electronic Application System, which is the U.S. Patent and Trademark Office’s online filing system. TEAS permits you to submit application forms directly to the USPTO over the Internet and pay application filing fees by credit cards, electronic funds transfer, or through an existing USPTO deposit account.

4. What does TEAS stand for trademark?

TAKE THE NEXT STEP

Take next step toward LEGALLY owning your Trademark!

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your brand, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Incontestable Trademarks – AN EASY GUIDE

October 20, 2022 by Michael Kondoudis

After five years or more straight years of use, the owner of a registered trademark can apply to make their trademark immune from most legal attacks by filing a Declaration of Incontestability.

By Michael Kondoudis, Trademark Attorney

This is our COMPLETE guide to incontestable trademarks.

In this guide, we explore what incontestability means for a trademark, when and how to gain incontestable status, and the advantages the incontestable trademarks enjoy.

So, if you need to quickly learn about incontestable trademarks, read on – this guide is for you.

CONTENTS

> Trademarks + Incontestability

> Section 15 Declarations of Incontestability

> Why Incontestability Matters

> Condensed Summary of Incontestability

I. TRADEMARKS + INCONTESABILITY

What is a Trademark?

A trademark is an exclusive right that a business or individual has to use a name, logo, slogan, or other symbol to identify products and services. Trademarks help protect a brand’s identity from competitors who may try to copy it while also preventing confusion among consumers. Trademarks protect brands.

What is a Registered Trademark?

A registered trademark is a trademark that has been registered with the United States Patent and Trademark Office (USPTO), which grants exclusive and nationwide rights to use the trademark.

How Do You Get a Registered Trademark?

You get a registered trademark by applying to the USPTO (United States Patent and Trademark Office). After registration, trademark owners may display the ® symbol to indicate it is protected by federal law.

What is an Incontestable Trademark?

An incontestable trademark is a special type of trademark that is immune from challenge in court under normal circumstances. When a mark is declared incontestable, it can only be challenged on specific, limited grounds.

What Does Incontestability Mean?

In trademarks, incontestability means immunity from most legal challenges. Incontestable trademarks can only be challenged when they are no longer in use, were obtained by lying to the USPTO (U.S. Patent and Trademark Office), or have become generic (e.g., Aspirin and Jacuzzi).

What are the Advantages of an Incontestable Trademark?

Incontestability enhances and strengthens trademark rights by making it harder to challenge them.

The primary advantage of having an incontestable trademark is its substantial legal protection against potential challenges. If someone accuses you of infringing on their mark, it’s much harder for them to prove their case if your trademark is incontestable. Incontestable trademarks are well protected against common legal attacks should any disputes arise.

Trademark incontestability solidifies your trademark rights and makes them more robust. Incontestability carries significant weight in court.

® Want help with your trademark?

What Does It Mean to Have an Incontestable Trademark?

Having an incontestable trademark means that many aspects of a registered trademark cannot be challenged in court. Some of the aspects of an incontestable trademark cannot be attacked:

The Validity and Registration of your mark (the trademark must be presumed to be valid and enforceable)

Your Ownership (the trademark registration must be presumed to be accurate)

Your Exclusive Rights to Use the mark for the goods and services in the registration

Incontestability also means that a registered trademark can only be challenged in three ways:

The registration was obtained through fraud

The trademark is abandoned (no longer in use)

The trademark is generic for a type or entire category of products

Thus, incontestability strengthens a registered trademark by limiting attacks against it in a dispute.

How Do You Get an Incontestable Trademark?

You file a Section 15 Declaration of Continued Use with the USPTO (U.S. Patent and Trademark Office).

To get an incontestable trademark, a trademark owner must file a Declaration of incontestability (also known as a “Section 15 Declaration”) with the U.S. Patent and Trademark Office. Also, the trademark owner must pay a fee.

When Should You Get an Incontestable Trademark?

According to most authorities, you should get an incontestable trademark as soon as your trademark is eligible. Since you can seek incontestability for your registered trademark at any time after five years of continuous use, most trademark owners seek incontestability on the “five-year” anniversaries of their trademark registrations.

II. SECTION 15 DECLARATIONS OF INCONTESTABILITY

What is a Section 15 Declaration?

A Section 15 Declaration, also known as a “Declaration of Incontestability,” is a sworn statement filed by the trademark owner and placed on the USPTO’s (U.S. Patent and Trademark Office’s) Principal Register of trademarks.

A Section 15 is a declaration filed with the U.S. Patent and Trademark Office to secure incontestable status for your registered trademark. A Section 15 declares your rights to a registered trademark to be incontestable and states that all requirements for incontestability have been met.

Section 15 Declarations can be filed online at the USPTO Website.

Do You Have To File a Section 15 Declaration of Incontestability?

No, a trademark owner is never required to file a Section 15 Declaration. Section 15 Declarations of Incontestability are not mandatory.

While not mandatory, a Section 15 Declaration provides important legal and practical advantages for your trademark. This declaration, once approved, renders your trademark incontestable and significantly strengthens it.

Section 15 Declarations: Requirements and Timing

Filing a Section 15 Declaration comes with specific requirements and timing considerations.

1. The trademark must be used in interstate commerce: For a trademark to be registered, it must be used in interstate commerce. This means that the trademark must be used in connection with the sale of goods or services that cross state lines.

2. The trademark must be registered with the USPTO: Only trademarks registered on the USPTO’s Principal Register are eligible for incontestable status.

3. The trademark must be distinctive: For a trademark to be registered, it must be distinctive (i.e., not generic). This means that the trademark must be capable of distinguishing the goods or services of one company from those of another company.

4. The trademark must have been in continuous use for five years: For a trademark to be incontestable, it must have been in continuous use for five years. This means that the owner of the trademark must have been using the mark continuously during that time period.

5. There must be no evidence that the trademark is generic or has been abandoned: For a trademark to be incontestable, there must be no evidence that the mark is generic or has been abandoned. A mark is generic if it refers to a class of goods or services. A mark is abandoned if its use has been discontinued with no intention of resuming such use in the future.

6. There must be no challenges to the validity of the registration: For a mark to be incontestable, there can be no adverse decisions or pending proceedings challenging the validity of the registration in a court or other judicial body.

7. The trademark owner must file a Section 15 Declaration of Incontestability with the USPTO: Incontestability is not automatic.

We make trademarks easy!

What Is The Cost to Get an Incontestable Trademark?

Currently, the U.S. Patent and Trademark Office charges a fee of 200 USD per class of goods or services.

III. WHY INCONTESTABILITY MATTERS

Should I Get an Incontestable Trademark?

Yes. Most authorities agree that trademark owners should seek incontestable status for their trademarks. There are significant benefits to incontestable status. Incontestable trademarks come with enhanced protections that make enforcing trademark rights easier and less expensive if there is a dispute. For example, many common legal defenses are barred by incontestability, such as challenges of descriptiveness.

If you meet the requirements to make your trademark incontestable, you will have a strong defense against any challenges to your mark.

Why Incontestable Trademarks Matter for Small Business Owners

Having an incontestable trademark as a small business owner is essential:

Legal protection: It offers a robust defense against accusations of trademark infringement, which can be expensive and time-consuming.

Brand reputation: An incontestable trademark maintains your brand’s reputation by preventing competitors from challenging your right to use it.

Proof of ownership: Owning an incontestable trademark is conclusive proof of ownership, simplifying legal disputes that may arise.

IV. CONDENSED SUMMARY

After five years of consecutive use from the date of federal registration, a trademark may be declared incontestable. An incontestable mark is immune from most legal challenges except when it has become generic or abandoned for nonuse or if the registration was acquired fraudulently. To secure incontestability, a trademark owner must file a Declaration of Incontestability with the U.S. Patent and Trademark Office. Declarations of Incontestability are usually filed sometime between the fifth and sixth anniversaries of federal trademark registration.

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Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Can You Trademark Clothing Design?

October 17, 2022 by Michael Kondoudis

Clothing designs are not eligible for trademark protection. But that doesn’t mean that you can’t use trademarks to protect your clothing brand.

By Michael Kondoudis, Clothing Trademark Attorney

This is our quick guide to trademarking clothing designs.

> Can you trademark clothing design

> Why clothing designs are not trademarked

> What a clothing company can trademark

If you need to know whether you can trademark your fashion or clothing design, this guide is for you.

Can I Trademark a Clothing Design?

No, you cannot trademark a clothing design because clothing designs are schematic instructions to make garments. Trademarks protect names, logos, and phrases used to identify the brands of garments. So, clothing designs are not trademarked.

Why Can’t I Trademark Clothing Design?

A trademark tells customers which products come from your business. A trademark identifies your garments and differentiates them from the competition. The most common trademarks are names, logos, and slogans because they can effectively identify companies, products, or services.

Clothing designs are like assembly instructions for garments. They do not tell customers which clothing products come from your company. Also, clothing designs do not individualize or differentiate your garments from the competition. For these reasons, clothing designs are not eligible for trademark protection.

What Can a Clothing Company Trademark?

A clothing company can trademark those things that identify and differentiate its brand and clothing.

If you are starting a clothing line, you’ll want to consider trademarking your clothing brand name, logo, and any slogan that you will use to identify your products. Trademarking your clothing brand name, logo, and slogan will prevent competitors from using them and give you exclusive rights to use them. Also, you will have the option to seek federal trademark registration for them as well.

Company Logos

Designers can also trademark their logos when they are used in branding. Designers can trademark their logos to differentiate their clothing from other clothing brands. This can help to protect the designer’s brand and ensure that other designers do not copy their logo. By registering a trademark, the designer can take legal action if another company attempts to sell garments with similar logos.

Trademarked designer logos include the HILFIGER flag, the DOLCE & GABBANA “G&B” and CHANNEL “double C’s.”

Designer Brand and Company Names

Designers can trademark their company names to prevent other businesses from using the same or similar name. This protects the designer’s brand and ensures that consumers can distinguish between products. Trademarking a company name also helps to build customer loyalty and create a stronger connection between the consumer and the designer.

Examples of trademarked brand names include FENDI, LACOSTE, and PRADA

So, if you want to avoid legal issues down the road, it is best to trademark your clothing line’s brand name and logo. Read our quick guide to all of the reasons to register a trademark.

TAKE THE NEXT STEP

Ready to LEGALLY Own Your Trademark?

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Taylor Swift Trademarks: A COMPLETE GUIDE

October 6, 2022 by Michael Kondoudis

By Michael Kondoudis, Registered Trade Mark Attorney

This is our COMPLETE guide to Taylor Swift’s trademarks.

If you want to learn about Taylor Swift’s trademarks, what products and services she protects, and Ms. Swift’s trademarking strategy, then this guide is for you.

CONTENTS

> Introduction

> Taylor Swift’s Trademarking Efforts

> The “Taylor Swift” Trademark

> Taylor Swift’s Trademarks

> Taylor Swift’s Trademarking Strategy

1. Introduction

Over the years, Taylor Swift has established herself as a force to be reckoned with in the music industry. She has become one of the most popular recording artists in the world. In addition to her success as a recording artist, she is also known for her savvy business acumen. Recently, she has been making headlines for her trademarking efforts.

Along with her successful music career, she has also built a successful brand, trademarking phrases like “this sick beat” and “nice to meet you, where you been?” In addition to trademarking her name, Swift has also trademarked several of her song titles, including “Shake It Off” and “We Are Never Ever Getting Back Together.”

By trademarking them, she is ensuring that they can only be used in association with her products and services. In a competitive industry like the music business, trademarking is a smart way to protect one’s brand and maintain control over one’s image. Taylor Swift is a master of both music and marketing.

RELATED: What is a trademark?

2. Taylor Swift’s Trademarking Efforts

Taylor Swift, individually and through her company TAS Rights Management, currently owns over 200 U.S. trademarks.

How many trademarks does Taylor Swift have?

Taylor Swift has about 50 trademarks and owns over 200 federal trademark registrations for them. Ms. Swift started using her trademarks in 2001 and started registering them in 2008.

When did Taylor Swift start filing trademarks?

Taylor Swift first began filing trademark applications in 2007. Since then, Taylor Swift has filed over 350 trademark applications.

What does Taylor Swift trademark?

Taylor Swift has filed trademarks for:

Her name, her initials, and her signature
The names of her albums and fan club
Song titles and lyrics
The names of her concert tours and music festivals

3. The Taylor Swift Trademark

The TAYLOR SWIFT trademark covers a wide range of merchandise, including clothing, stationery, and toys. The trademark has been used extensively by Taylor Swift and her team to promote her brand and sell merchandise. In 2014, the trademark was featured on the cover of TIME magazine. The Taylor Swift trademark is a valuable asset for Taylor Swift and her team, and it has helped her to build a successful career in the music industry.

Is the Taylor Swift name trademarked?

Yes, the name Taylor Swift is trademarked. Taylor Swift trademarked her name in 2007 and currently owns more than thirty trademark registrations for her name.

U.S. Trademark No. 3,439,210 for TAYLOR SWIFT

When was Taylor Swift trademarked?

Ms. Swift filed her first trademark applications for TAYLOR SWIFT in March of 2007. The applications were granted by the U.S. Patent and Trademark Office, and they are now registered.

What does the Taylor Swift trademark cover?

The TAYLOR SWIFT trademark registrations cover:

Clothing;
Entertainment services including live musical performances by an individual;
Series of musical sound recordings; pre-recorded audio cassettes, compact discs, DVD’s and video tapes featuring performances by an individual;
Digital media including downloadable audio files and downloadable audio and video recordings featuring musical entertainment;
Downloadable video and musical sound recordings

…and more

Is Taylor Swift copyrighted or trademarked?

The name Taylor Swift is trademarked because it is a brand. Names, including the names of recording artists like Taylor Swift, are eligible for trademark protection.

Copyrights protect creative works, such as music, songs, lyrics, and album covers. Copyrights do not protect names such as Taylor Swift.

Related: Trademarks vs. Copyrights

4. What are Tylor Swift’s Trademarks?

Taylor Swift has trademarked her name and image to prevent others from using them without her permission. She has also trademarked several phrases from her songs, such as “This Is Why We Can’t Have Nice Things” and “Swish Swish.” This is an effort to protect her brand and ensure that she receives all the profits from any products or services that bear her name or likeness.

How many trademarks does Taylor Swift own?

Taylor Swift owns over 200 U.S. trademark registrations.

What did Taylor Swift trademark?

Some of the things that Taylor Swift has successfully trademarked over the years include her name, her stage name (“Taylor Swift”), certain phrases associated with her (“this sick beat,” “nice to meet you,” “wherever you are”), and even her cats’ names (“Meredith” and “Olivia”).

The Taylor Swift trademark list

The Taylor Swift trademark list includes trademarks for:

Her name: TAYLOR SWIFT
Her initials: T.S.
The names of her tours: THE 1989 WORLD TOUR
The names of her Albums: FEARLESS. 1989
The name of her fan club: SWIFTIES
Song titles: SHAKE IT OFF, AND I’LL WRITE YOUR NAME
Selected song lyrics: PLAYERS GONNA PLAY

She’s even trademarked her signature!

Here’s the full Taylor Swift trademark list:

MIDNIGHTS MAYHEM WITH ME
TAYLOR SWIFT MIDNIGHTS
FEARLESS TAYLOR’S VERSION
RED TAYLOR’S VERSION
SWIFT
TAYLOR SWIFT EVERMORE ALBUM
REPUTATION TAYLOR’S VERSION
1989 TAYLOR’S VERSION
SPEAK NOW TAYLOR’S VERSION
RED TAYLOR’S VERSION
TAYLOR SWIFT TAYLOR’S VERSION
FEARLESS TAYLOR’S VERSION
TAYLOR’S VERSION
TAYLOR SWIFT EVERMORE ALBUM
CHRISTMAS TREE FARM
TS
FOLKLORE ALBUM
FOLKLORE
LOVER FEST
A GIRL NAMED GIRL
SWIFTMAS
LOVER FEST EAST
LOVER FEST WEST
TAYLOR SWIFT TOURING
LOVER
MEREDITH, OLIVIA & BENJAMIN SWIFT
THE OLD TAYLOR
MEREDITH & OLIVIA SWIFT
TS
BIG REPUTATION
TAYLOR NATION
… READY FOR IT?
THE OLD TAYLOR CAN’T COME TO THE PHONE RIGHT NOW
LOOK WHAT YOU MADE ME DO
REPUTATION
TAYMOJI
SWIFTIES
SWIFTIE
TAYMOJI
SWIFTMAS
BLANK SPACE
AND I’LL WRITE YOUR NAME
THE 1989 WORLD TOUR
NICE TO MEET YOU. WHERE YOU BEEN?
COULD SHOW YOU INCREDIBLE THINGS
CAUSE WE NEVER GO OUT OF STYLE
THIS SICK BEAT
S.
T.S. 1989
1989
PLAYERS GONNA PLAY
SHAKE IT OFF
WELCOME TO NEW YORK, IT’S BEEN WAITING FOR YOU
1989
TAYLOR SWIFT
SPEAK NOW
TAYLOR SWIFT FEARLESS
REPUTATION
TAYLOR SWIFT

5. Taylor Swift’s Trademarking Strategy

Taylor Swift and her team have carefully cultivated and protected an expansive brand comprising a variety of trademarks. Some believe she may be planning to start a merchandising empire similar to what Beyoncé has built. But, whatever her reasons, by trademarking her name and other brand elements, Swift has protected her brand and prevented others from using her work without permission. As a result, she has maintained control over her image and her career, cementing her place as one of the top recording artists in the world.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Can You Trademark Food Names? – A COMPLETE GUIDE

October 4, 2022 by Michael Kondoudis

If you want to trademark your food name but aren’t sure how to begin, just follow our five steps to food trademark protection.

By Michael Kondoudis, Restaurant Trademark Attorney

This is our COMPLETE guide to food name trademarks.

Building a food brand is hard work. It takes creativity and luck because the food industry is competitive and crowded. You need a recognizable brand to stand out from the crowd. A strong brand is the key to success in the food industry.

But how do you safeguard this valuable asset? How do you protect a food name and brand?

That’s where trademarks come in. This guide discusses protecting a food brand with trademarks and answers important questions about trademarking food names. In fact, this is the information that we use to register food trademarks for our clients.

So, if you’re ready to learn about food trademarks and how they can help protect a food brand, this guide is for you.

Let’s dive in!

Trademark reg. no. 6,853,760 secured by The Law Office of Michael E. Kondoudis for Regal Meat LLC

CONTENTS

→ I. About Food Trademarks

→ II. Why Trademark Food Names?

→ III. When to Trademark Food Names

→ IV. Requirements for Food Trademark Protection

→ V. How to Trademark Food Names

→ VI. Choosing Strong Food Trademarks

→ VII. Searching Food Trademarks

1. FOOD TRADEMARKS

What is a Trademark?

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of the goods of one party from those of others. In other words, it sets your product or service apart from your competitors.

What is a Food Trademark?

A food trademark is a name, logo, or phrase used to brand and distinguish a food product from similar food products made by other companies.

There are different types of trademarks that can be used for food products. The most common food trademarks are names, logos, and phrases.

For something to be considered a food trademark, it must be used to brand a food product. Also, a food trademark must be used to brand a food product to be registered with the U.S. Patent and Trademark Office (USPTO).

Food trademarks registered with the U.S. Patent and Trademark Office (USPTO) come with enhanced protections, including exclusive nationwide rights. There are many benefits to federal trademark registration.

A food trademark is a name, logo, or phrase that distinguishes a food product from one company from those of the competition. Food trademarks distinguish food products from different companies to prevent confusion.

What is Trademarking?

Trademarking is the legal process of protecting a word, logo, or phrase that you use to represent your brand. Trademarking protects your brand and ensures that no one else can use a similar name for their products. When you trademark the name for your food product, you’re ensuring that no one else can use that name or a similar one for competing food products.

What is Trademark Registration?

Trademark registration is the process of applying for a Federal trademark from the U.S. Patent and Trademark Office (USPTO). The USPTO administers trademark registrations. There are many benefits to federal trademark registration. Read more about why you should register your trademark.

Can Food be Trademarked?

No. Food cannot be trademarked, but food names can be trademarked. Foods cannot be trademarked because they do not represent a brand. However, food names can be trademarked because they identify a company’s food product and represent brands. Product names, including the names of food products, are eligible for trademark protection when used in branding. Trademarking a food name is the best way to protect your food brand. Food names can be trademarked.

Can Food Names be Trademarks?

Yes, food names can be trademarks when they are used to brand a food product. Food names are eligible for trademark protection. In fact, trademarking a food name is the best way to protect it for your food brand. When you trademark a food name, you reserve it for your exclusive use. The U.S. Patent and Trademark Office (USPTO) accepts applications to trademark a food name as a food trademark. It is possible to trademark the name of a food product when the name is used in branding and marketing.

Which Parts of a Food Brand Can Be Trademarked?

Names, logos, and slogans can be trademarked to brand and market food products.

2. WHY TRADEMARK FOOD NAMES?

Why Should You Trademark Food Names?

There are several reasons to trademark food names.

Firstly, you should trademark your food name because it will confirm your legal ownership of it and how it is used. Both are essential to building a unique food brand.

Secondly, you should trademark your food name because it will help keep anyone else from using your name for their food products. This ensures that your food name remains distinctive. If someone else starts selling a food product with your name, they can steal sales from you.

Thirdly, you should trademark your food name because it will prevent anyone else from trademarking it (or anything similar) for their food products. If someone else trademarks your name, they will own it, and you will need to rebrand.

The Benefits of Trademarking Food Names

There are many benefits to trademarking your food products. For one, it can help you build a strong and recognizable brand. Customers are more likely to buy products from brands they know and trust, so a trademark can boost your business significantly. Moreover, a trademark can also help you stop others from using your ideas without permission. If someone tries to pass off your product as their own, you can take legal action against them.

There are several benefits to obtaining a food trademark. First, it can help you to build brand recognition and customer loyalty for your food product. If customers know that they can only get your specific product from your company, they are more likely to continue buying from you in the future. In addition, having a trademark can help you to enforce your rights if another company attempts to copy your product. Finally, obtaining a trademark can also make it easier to license or sell your food product in the future.

When you trademark a food name, you give yourself exclusive rights to use that name. This means that no one else can produce or sell a food product with the same name. Trademarks also give you the right to take legal action against anyone who uses your trademarked name without permission.

Another benefit of trademarking food names is that it can help you build goodwill with customers. If customers know that they can trust your brand because a trademark backs it, they are more likely to buy from you again in the future. Trademarks can also help you differentiate your products from the competition. A strong and distinctive brand can be a significant advantage in a crowded marketplace.

A food trademark helps create a unique and recognizable brand and increases customer awareness. A food trademark ensures that the name of your food product stays yours. A food trademark prevents anyone else from trademarking the same or similar name for their food product. A food trademark helps avoid future legal disputes, which can be costly.

Top Reasons to Trademark a Food Name

1. Avoiding conflicts with other food trademarks

The U.S. Patent and Trademark Office (USPTO) will only let one food maker trademark a food name. If you get the trademark, that is OFFICIAL legal confirmation that your trademark is unique.

2. Legal ownership and exclusive use

A federal trademark comes with significant legal rights, including the right to use a trademark in all 50 states. Also, only one business can own a food trademark, and it is usually the one that trademarks the name first.

3. Protection against copycats

Trademark registration protects your food name from people who would copy it and use it for their food products. The fact is that a food name is less likely to get imitated if you trademark the name.

If you don’t trademark your food product name, nothing stops another company from creating a similar-sounding name for their product. This could confuse customers and lead to lost sales.

4. Easier enforcement

Trademarking your food name helps avoid costly litigation. But, if you are forced into court in a dispute over your food brand, having a trademark is a great advantage because it is legal confirmation of your ownership of your food marks and that they are valid and enforceable.

If someone does infringe on your trademarked name, you have the legal right to take action against them. This includes ordering them to stop using the name and/or pay damages.

5. Make your brand stand out

Having a unique name for your food product helps create brand recognition and differentiation from other products on the shelf. A strong brand can lead to customer loyalty and repeat purchases. If customers know that they can only get your specific product from your company, they are more likely to continue buying from you in the future.

The food marketplace is crowded. A trademark is an efficient communication tool for capturing user attention and making your brand and products stand out.

6. It protects your investment in your brand

If you have spent time and money developing a strong brand identity, you don’t want someone else to be able to cash in on that by using your name. Trademarks also make it easier for customers to find your products and distinguish them from similar products on the market.

Do You Have To Trademark A Food Name?

No, trademarking a food name is not mandatory. But, if you don’t trademark your food name, you won’t have exclusive rights to it. Other companies would be free to use your foods name for their food products.

Do you need to trademark a food name?

Yes, if you want to protect it from being copied by someone else. If someone else copies your food name, they could potentially damage your business or even steal your customers. If you spend a lot of time and money developing a food product, protecting your work from being copied by someone else is vital. By getting a food name trademark, you can prevent others from using it and create a stronger association between your food product and its name.

3. WHEN SHOULD YOU TRADEMARK FOOD NAMES?

How Long Does It Take to Trademark Food Names?

In most cases, it takes more than 12 months to get a food trademark. The trademarking process for food names is a legal process that takes about a year.

When Should You Trademark Food Names?

Most authorities agree that you should trademark food names as early as possible. Ideally, you should trademark a food name as soon as you have settled on it and before your food product is offered for sale.

Getting trademark protection for your food name as quickly as possible is crucial to prevent other companies from copying. The trademarking process typically takes more than 12 months and starting early means that your food name will have maximum protection against imitators and knock-offs.

Also, the U.S. Patent and Trademark Office (USPTO) will let you trademark your food name up to three years before your food product is even released.

Simply put, the sooner you file your trademark application, the better.

4. REQUIREMENTS FOR FOOD TRADEMARK PROTECTION

A trademark is only eligible for trademark protection when specific trademark requirements are met. There are two trademark requirements, and you must meet them to qualify for trademark protection. There are two basic requirements for trademark protection:

(1) the mark must be distinctive

(2) the mark must be in use

Read our guide to requirements for trademark protection.

What are the Requirements to Trademark a Food Name?

For a food to be eligible for trademark protection, it must be distinctive and not confusingly similar to any other existing trademarks. The food name must also be in use in commerce. Read how to pick a distinctive trademark below.

5. HOW TO TRADEMARK FOOD NAMES

Where Do You Trademark Food Names?

You trademark a food name by applying to the U.S. Patent and Trademark Office (USPTO) in Washington DC and getting your application approved for registration.

How to Get a Trademark for The Name of a Food Product

Registering a trademark, including a food trademark, is not an automatic process. To qualify for trademark protection, a food name must be able to meet certain requirements. Also, you need to file an application with the U.S. Patent and Trademark Office (USPTO) and successfully complete the application process. But once you have it, you‘ll have peace of mind knowing that your products are protected.

Here’s how to start the process of trademarking a food name:

(1) Choose a unique food name and logo. Read more about how to pick a strong trademark here.

(2) Check whether your food name is available. Read more about how to search trademarks to find out if anyone else has registered or applied to register your food product name.

(3) Collect the required information and decide on a trademarking strategy. Many strategic decisions go into a high-quality application.

(4) Prepare and file your new application (correctly) with the U.S. Patent and Trademark Office (USPTO).

(5) Work with the USPTO examiner and navigate the USPTO application review process.

(6) Use the correct trademark symbol with your food name and logo. Read more about trademark symbols here.

The USPTO will grant your application and add your trademark to the list of Federal (registered) trademarks IF your application meets all of the requirements of the Federal Trademark Statute. If the USPTO does not initially grant your application (which happens over 80% of the time), you would need to respond to the reasons for the rejection.

6. CHOOSING STRONG FOOD TRADEMARKS

How to Choose a Distinctive Name For Your Food Product

When choosing a food trademark, it is important to select something that is not already in use by another company. It is also important to select a mark that is distinctive and easy to remember. A good food trademark should be able to identify the source of the product without being descriptive of the product itself.

Make sure not already in use: Before applying for a trademark, you’ll need to make sure that the name isn’t already being used by someone else. To do this, you can search the USPTO’s database of registered trademarks. Read about trademark searching below.

7. SEARCHING FOOD TRADEMARKS

Why You Should Do a Trademark Search for Your Food Product Name

You should do a trademark search for your food name for several reasons.

(1) You should do a trademark search for your food name because it can help you avoid picking a name that someone else has already trademarked and is already taken. If you use a food name that is already trademarked and in use, you might be charged with infringing someone else’s trademark.

(2) You should do a trademark search for your food name because it can ensure that you will not be forced to rebrand in the future. No one wants to receive a cease and desist letter from another business.

(3) You should do a trademark search for your food name because it will help you pick a name that you can own and protect with a trademark. If you use a food name that other companies are using, you won’t be able to trademark it for yourself. You won’t legally own it and won’t be able to stop anyone from copying the food name.

Your food name will function as a trademark, which identifies the source of your food product and distinguishes it from the competition. It is critical that the name of your food product is unique and that no one else is using it. A trademark name search is the only way to ensure that your food name is unique and protectable.

How To Do a Trademark Search for Food Name Trademarks?

To check if someone has already trademarked a food name, you can search the USPTO’s trademark database. Go to the USPTO’s Trademark Electronic Search System (TESS) and choose a search option. You can use the “Basic Word Mark Search” option to search a name or phrase. You will need to use the “Word and/or Design Mark Search” option to search a logo, graphic, or design.

1. Go to the USPTO’s Trademark Electronic Search System (TESS) available on the USPTO website at www.uspto.gov.

2. Select a search option. If you are checking if a food name is trademarked, you can use the “Basic Word Mark Search” option.

3. Enter your food name into the search field to search the USPTO’s trademark database.

You can check if a food name is already trademarked by searching the U.S. Patent and Trademark Office’s (USPTO) trademark database.

Caution: The USPTO will reject your trademark application if there is “a “likelihood of confusion” with another registered mark. So, it is a good idea to search for exact matches and any trademarks close to yours using variations of your trademark (e.g., different spellings, abbreviations, and plurals).

TAKE THE NEXT STEP

Take next step toward LEGALLY owning your food trademark and brand!

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your food name, logo, and brand, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).