Michael Kondoudis

How Long Does It Take To Get A Trademark – ALL YOU NEED TO KNOW

February 8, 2022 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Attorney

This is our complete guide to the Trademark Timeline. If you want to know the answer to the question “How long does it take to get a trademark?” this guide is for you.

In this guide, we’ll review:

How long it takes to get a trademark

The trademark timeline

The trademark registration process

What happens after a trademark application is filed

Ways an application can get delayed

Ways to speed up the trademark registration process

How a trademark attorney can speed up the trademark process

Let’s get started.

How Long Does It Take to Get a Trademark?

IT TAKES ABOUT 1 YEAR from start to finish to get a trademark, on average.

In general, you should budget about a year for the U.S. Patent and Trademark Office to approve your trademark.

After you submit your trademark application to the U.S. Patent and Trademark Office (USPTO), it will usually take between 4-6 months for an examiner to begin reviewing it. During that time, your application goes into a queue for the Examiner to review. There are a limited number of examiners, and the USPTO receives many applications every day. The result is a 4-6 month backlog. Then, after examination, your approved application is published for 30 days and then sent to the printer for the official Registration Certificate. The review and final trademark approval process takes time.

So, when someone asks, ‘how long does it take to get trademark?’ we answer that a helpful time estimate is around 12 months (although the process can certainly be longer or shorter).

Some Good News

The USPTO will give you retroactive protection from the date you filed your trademark application.

So, no matter how long it takes to get your trademark, once the USPTO grants your trademark, you will be entitled to retroactive protection going back to the date you submitted your trademark application.

How long does a trademark take?

A trademark takes between 12 to 18 months. A trademark usually takes between 12 to 18 months to get approved. Understand that the trademarking process is a Federal legal matter that can be complex, technical, and has several stages. Plus, you’re working with the Federal government, which is not known for moving quickly.

How long does it take to get a trademark approved?

There is no definitive answer to this question. The time it takes to get a trademark approved depends on a variety of factors, including:

• the complexity of your application,

• the quality of your application,

• how the USPTO examiner reviews your application,

• the number of office actions that may be required to resolve all issues, and

• whether you respond to the office actions quickly.

Still, a solid time estimate is between 12 to 18 months.

The Trademark Timeline

A typical trademark timeline is about 13 months. The trademark timeline is long because every trademark application is reviewed by the U.S. Patent and Trademark Office (USPTO) and the USPTO receives over 600,000 applications every year. The number of applications results in a trademark timeline of 13 months.

The answer to “how long does it take to get a trademark?” is directly related to the trademark timeline. When the trademark timeline grows, the time it takes to get a trademark increases.

The trademark timeline comprises several steps and phases. The trademark timeline can seem daunting, but understanding the timeline can help to make the trademarking process more manageable.

STEP	TIMELINE
Application is Filed	0 Months
USPTO Reviews Application	6-8 Months
Responding to Examiner Rejection	6 Months
Publication	3 Months
Grant/Registration	2-3 Months

Trademark Process

The trademark process can take between 13-18 months, depending on the circumstances of an application. This trademark timeline is so long because it is, at its core, a federal legal proceeding that involves Federal Statutes and a Federal Agency.

The answer to “how long does it take to register a trademark?” depends on how long it takes to satisfy each step of the trademark process. to the trademark timeline. If an application gets stuck in any one step of the trademark process, the time it takes to get a trademark increases.

The USPTO’s trademark registration process can be complex and time-consuming. However, it is important to understand the timeline in order to avoid any potential legal problems.

The trademark process for every application includes the following six steps:

1. Trademark Search

2. Preparing and Filing Application

3. USPTO Review of the Application

4. Examination + Responding to the Examiner

5. Publication of the Application

6. Grant/Registration of the Approved Application

Step 1: Trademark Search

The trademark registration process begins with a pre-filing trademark search to find any confusingly similar trademarks. Similarity to another trademark is the most common ground of rejection and third-party opposition to an approved application. A search can help ensure that you do not file a trademark application with little or no hope of being approved by the USPTO because your mark is too close to someone else’s.

Step 2: Application is Filed

Presuming the trademark search is favorable, the next step of the trademark registration process is to prepare the trademark application. This is where the DIY application is at a significant disadvantage. There are many technical requirements and interrelated strategic decisions that need to be considered. Mistakes in this step can slow down your application, increase the cost of the process, and even result in outright rejection of your application.

The USPTO encourages electronic filing through its Trademark Electronic Application System (TEAS):

To file a trademark application, you will need to provide: (1) the name and address of the applicant; (2) a precise drawing of the mark; (3) a list of the goods and/or services on which the mark will be used; (4) the filing fee; and (5) a signed declaration that the applicant is the owner of the mark and that there is no other person who has a right to use the mark in commerce.

Here are just a few of the strategic decisions that go into a trademark application:

- Who is the correct applicant?
- Which filing basis is best for your application?
- Should you claim specific color(s) or styles for your trademark (hint: you don’t always have to)?

After the USPTO receives your application, you are ready to move on to the next phase – examination.

Step 3: USPTO review of the application

After your application is filed, it will be assigned to an examining attorney who will review it to ensure it meets all the legal requirements for registration. The USPTO reviews trademark applications to determine whether they meet all legal requirements for registration. Many applications do not and are rejected.

Successfully navigating the review phase comes down to monitoring your application and showing the U.S. Patent and Trademark Office (USPTO) that:

- your application meets the technical rules and requirements
- your trademark is not similar to anyone else’s, so your trademark is not “likely to be confused” with any other registered marks
- your trademark is “distinctive” in a legal, trademark sense

When an examiner identifies any issues, defects, or technical deficiencies in an application, the trademark examiner will issue an Office Action letter. About 80% of all applications receive an initial rejection, according to the USPTO.

If you receive an Office Action, your application moves on to the next phase – response to the USPTO.

Step 4: Responding to the USPTO

When an application does not meet all the requirements, the examining attorney will issue an office action that sets forth the specific issues that need to be addressed. The applicant then has a limited time to respond to the office action and address the issues raised. If the examining attorney is not satisfied with the response or it does not address each and every issue raised in the Office Action, the examining attorney may issue a final rejection.

If the examining attorney is satisfied with the response and there are no remaining issues to address, the application will be approved for publication in the Official Gazette.

Step 5: The trademark application is published by the USPTO

After an application is published in the Official Gazette, anyone has an opportunity to oppose the registration of your mark by filing an “opposition” with the USPTO. An opposition is similar to a trial in federal court and is presided over by a panel of three administrative law judges.

If no one files an opposition, or if the opposition proceeding is decided in favor of the applicant, the application moves on to the final stage – registration.

Step 6: The trademark application is granted

If you complete the examination and publication steps, the trademark registration process concludes with registration. At the end of the 30-day publication, the application is sent back to the examining attorney for a final review. If you have shown the USPTO that you are using your trademark, the USPTO will issue a Registration Certificate and mail it to you. If, on the other hand, you have not yet shown the USPTO that you are using your trademark, the USPTO will give you six months to submit evidence of your use. Then, it will issue the Registration Certificate.

With that registration, you can use Federal law to stop infringers while your brand enjoys exclusive use of your mark, in your industry, in all 50 States.

The trademark process typically takes over a year to complete. However, once your trademark is registered, it will be valid for ten years. You can renew it every ten years if you’re still using it.

What is a typical trademark process timeline?

A typical USPTO trademark timeline for an application that the examining attorney initially approves looks like this:

Examiner approves the application – timeline: between 8 months: It takes the USPTO about 8 months after your application is filed to review it. If the examining attorney does not find any issues, the attorney will approve your application, and the examination step ends.

Publication – timeline: about 3 months: After the examining attorney approves your application, it will be published in the Official Gazette for a 30-day opposition period. This will allow the public to review your trademark and oppose it if there is a trademark reason.

Registration – timeline: about 2 months: If no one opposes your registration or requests an extension of time to oppose it, the USPTO will send your case to a printing contractor to print your official Registration Certificate.

Trademark Process (Infographic)

When should you start your trademark application?

You should start your trademark application as soon as possible.

It is better to file a trademark application as soon as you have settled a name, slogan, logo, or phrase for your product or service. So, once you come up with that perfect trademark for your business or brand, don’t delay in applying with the U.S. Patent and Trademark Office (USPTO). In fact, in many cases, a business will want to start the trademark application as soon as its LLC or corporation is approved.

One reason to start early is that it often takes a year to receive final approval. Plus, by filing for a trademark before launch, you can ensure that your name is protected once you begin commercial sales. Also, by trademarking your name, logo, and slogan first, you prevent anyone else from trademarking it for their business.

Remember: Trademark applications are reviewed on a first-come, first-served basis, which means that the earlier your trademark application is received, examined, and approved, the earlier your trademark will be legally protected and officially yours.

Do you need help with your trademark?

What happens after your file a trademark application?

After submitting your application, it undergoes a multi-stage review process.

The U.S. Patent and Trademark Office (USPTO) reviews all trademark applications to ensure that they meet all legal requirements and do not conflict with any other trademarks. This review process comprises three steps:

Step 1. Review by a USPTO examining attorney

About four to six months after your application is filed, it will be reviewed by a USPTO attorney (“Examiner”). This process is commonly referred to as “examination.” In this step, the Examiner determines whether your trademark poses a potential conflict with any other registered trademark or pending trademark application and if it meets all USPTO standards for trademark registration.

• If the Examiner finds no issues with your application, your application will be approved.

• If the Examiner finds a conflict or any other issue, the Examiner will issue a letter called an Office Action, to which you must respond.

The USPTO gives you six months to respond to the Office Action, but the longer you wait, the longer your application will take.

Importantly, keep in mind that the USPTO Examiner is prohibited from offering anything that comes close to legal advice. This is one of the reasons that the USPTO strongly encourages all applicants to get a trademark attorney.

Step 2. Publication in the USPTO Official Gazette

The USPTO publishes all approved trademark applications in its Official Gazette. This publication begins a 30-day window in which anyone that believes they would be harmed if your trademark is registered can “oppose” registration of your trademark. Opposition is rare.

If there is no opposition, then your application continues to registration.

If an opposition is filed against your trademark application, a particular branch of the USPTO will start an “opposition proceeding” and review the matter. An opposition proceeding is essentially a streamlined trial to determine whether there are valid grounds to deny your application.

If you prevail, your application will move on to registration.

If you do not prevail, your trademark will be denied.

Step 3. Registration

Your trademark is issued. After your application completes the examination and publication stages, the USPTO will register your trademark and mail you an official registration certificate. With that registration, you can use Federal law to stop infringers while your brand enjoys exclusive use of your mark, in your industry, in all 50 States.

Why does a trademark take so long?

There are several reasons it takes so long to get a trademark, including a 4-6 month backlog, applicant delays, and the multi-stage review process that all applications undergo.

The U.S. Patent and Trademark Office (USPTO) receives so many new applications that it takes between 4-6 months just to start to review them. Also, the trademarking process is a complex, multi-stage legal proceeding that involves Federal law and a Federal agency.

What are some of the reasons a trademark application can be delayed?

Three of the most common potential delay the trademark timeline:

• Trademark Office Actions

• Statement of use

• Oppositions

Office Action Delays: 2-6 months

An Office Action is a letter from a USPTO examiner that explains conflict or any other issue that the Examiner finds with your application.

If the examining attorney discovers any issues during the review, the USPTO will send you an Office Action explaining the problems found. The USPTO gives you six months to respond and takes about two months to review your response. So, if you respond at the deadline, you can expect to extend the USPTO trademark timeline by up to 6 months.

The USPTO gives you six months to respond to the Office Action, and the longer you wait, the longer your application will take to register.

Opposition Delays : 1-12 months

An Opposition is essentially a streamlined trial to determine whether there are valid grounds to deny your application.

The length of the delay for opposition depends on whether or not the parties resolve their dispute or if it leads to an actual opposition. If your application is opposed, you may have to go through the whole opposition procedure, which routinely takes 12 months.

Statement of Use Delays: 6 months or more

A Statement of Use is a submission that shows the USPTO that you are using your trademark. If you do not show use during examination, the USPTO will give you six months after publication to do so. Here again, the longer you wait, the longer your application will take to register.

Do you need help with your trademark?

Are There Ways to Speed Up the Trademark Process?

Yes, there are ways to speed up your trademark application.

The U.S. Patent and Trademark Office (USPTO) usually examines trademark applications in the order in which they are received. But, in some situations, where special circumstances exist, a trademark application can be expedited so that registration completes significantly faster. This requires a “Petition to Make Special” requesting special treatment of your application.

What is the best way to speed up a trademark?

The best way to speed up your trademark is to work with an experienced trademark attorney. An experienced trademark attorney can help you before you file, during the application process, and after registration.

What are five ways a trademark attorney can help speed up approval of your trademark application?

1. A trademark attorney can ensure that your pre-filing trader search for similar trademarks is complete and correctly analyzed

2. A trademark attorney can ensure that your trademark application is complete, filed correctly, and requests the protection that you want

3. A trademark attorney can explain USPTO correspondence and ensure sure that you respond completely to any Office Actions

4. A trademark attorney can ensure that your evidence of use is acceptable

5. A trademark attorney can explain your trademark rights and how to enforce them

How We Secure Trademarks for Our Clients

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 character, we invite you to book a FREE brand protection strategy session with us here.

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

How to Trademark a Game: The ULTIMATE Guide

February 2, 2022 by Michael Kondoudis

By Michael Kondoudis, Gaming Trademark Attorney

This is my ultimate guide to trademarking and copyrighting a game. If you want to learn how to trademark a game and protect it from would-be copycats, then this guide is for you.

CONTENTS

This article explores issues that game designers and inventors need to know about trademarks, including:

> HOW TO PROTECT GAMES

> ABOUT GAME TRADEMARKS

> ABOUT GAME COPYRIGHTS

> PROTECTING GAME NAMES

> HOW TO TRADEMARK GAMES

> CONSIDERATIONS FOR BOARD GAMES

> SEARCHING GAME TRADEMARKS

> WORKING WITH A TRADEMARK ATTORNEY

> COPYRIGHTING A GAME

> FREQUENTLY ASKED QUESTIONS

I. PROTECTING GAMES

How Do You Protect A Game From Copying?

The best way to protect a game from copying is to trademark the game name and copyright either the code (for video games) or the game board (for board games). Trademarks and copyrights protect many board games and video games. Trademarks and copyrights are the primary ways to protect the hard work, time, and creativity behind a new game.

What is the Difference Between Trademarks and Copyrights?

Trademarks protect game brands, while copyrights protect the artwork, appearance, and software code behind a game.

II. GAME TRADEMARKS

What Is A Game Trademark?

A trademark is a badge of origin that distinguishes the maker of a game from other makers of games. The most common game trademarks are names, logos, and phrases.

A Federal trademark is an enhanced trademark that has been certified by the U.S. government. It comes with exclusive nationwide legal rights. (more on that below).

Trademarking is the process of securing exclusive rights to a phrase or word so that others can’t use it.

Which Parts Of A Game Can You Trademark?

You can trademark a game name. You can also trademark any logo or slogan used to advertise your game, as well as the characters in the game. Plus, you can trademark the icon that represents your video game in the App Store or Google Play.

Many aspects of a game such as game names, character names, logos, and graphic designs may qualify as trademarks.

Examples of Game Trademarks

Video Game Names

Company Names

Board Game Names

Video Game Names

Company Names

Board Game Names

III. GAME COPYRIGHTS

What Is A Game Copyright?

Copyright is a legal term describing ownership of control of the rights to the use and distribution of artistic and creative works. Examples of creative works that are eligible for copyright protection include books, video, motion pictures, musical compositions, and computer programs.

Which Parts Of A Game Can You Copyright?

You can copyright many aspects of a game, including the design of a game board (for board games), the software code (for video games), the text of the instructions, and artwork on the packaging. (more about copyrighting here).

IV. PROTECTING GAME NAMES

How to Protect a Game Name

Trademarking a game name is the primary way to protect it. The best way to trademark a game name is to apply for a federally registered trademark with the U.S. Patent and Trademark Office (USPTO). The USPTO registers trademarks, including game trademarks.

Most game developers start by applying to trademark a game name.

Can you trademark the name of a video game?

Yes, you can trademark a name of a video game. All major video game franchises are trademarked. But, trademarking is not limited to the games developed by big companies. You can also trademark indie video games.

Can you trademark the name of a board game?

Yes, you can trademark a game name, including board game names. Many famous board games are protected by trademarks.

Can you trademark a card game?

Yes, you can trademark the name of a card game. In fact, trademarking is the primary way that companies protect card games.

Many game developers wonder if they can trademark the names of their games.

To be clear, the answer is YES. You can trademark a game name, and many game developers have! Trademarking the name of your board or video game name is the most effective way to protect it and the brand identity you’re building around it.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

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.

Do I Have To Trademark My Game Name?

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

Do You Need to Trademark a Game Name?

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

Why Should You Trademark A Game Name?

You should trademark a game name for several reasons.

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

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

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

Fourthly, trademarking your game name makes merchandising easier. The most successful games always open opportunities to sell license the name for clothing and other goods.

In the end, You should trademark a game name for several reasons. The main reason is to protect your intellectual property. If someone else starts selling a game with the same name as your game, they could divert sales and damage your business. Another reason to trademark a game name is to prevent others from stealing your ideas. Finally, trademarking a game name can help you build your brand and increase awareness of your game.

Top Reasons to Trademark a Game Name

1. Avoid conflicts with other game trademarks

The U.S. Patent and Trademark Office (USPTO) will only let one game maker trademark a game 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 game trademark, and it is usually the one that trademarks the name first.

3. Protect against copycats

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

4. Easier enforcement

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

5. Brand expansion – Merchandising

When you trademark a game name, it is much easier to license your brand for clothing, apps, and home goods, for example.

6. Make your brand stand out.

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

V. HOW TO TRADEMARK GAMES

How To Trademark A Game Name

You trademark a game name by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking a game name is a legal process that usually takes about 12 months. So, the sooner you start trademarking your game name, the better.

Here’s how to start the process to trademark the name of your game:

1. Select a unique game name and logo. Read more about how to pick a strong trademark here.

2. Check whether your name and logo are available. Read more about how to search trademarks to find out if anyone else has registered or applied to register the 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 game 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.

When Should You Trademark A Game Name?

Most authorities agree that you should trademark the name of your game as early as possible. Ideally, you should trademark a game name as soon as you have settled on it and well before your game is released.

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

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

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

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

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.

Top Tips to Choose Great Title Names for Games

1. Creating a great game title is essential to ensure that potential players are drawn in and want to learn more about your game. Here are seven tips for creating a great game title:

2. Keep it short and simple. A length of 1-3 words is best.Use keywords that people might search for. Ensure the name is optimized for Internet searching with at least one distinctive, unique, and/or memorable word.

3. Make it interesting and catchy. The best names are memorable.

4. Make sure it accurately represents your game. It is always important to increase brand trust.

5. Test out different titles with friends and family to see what they like best. They will likely look at a name differently than you.

6. Make sure that the domain is available.

7. Make sure the name is not already trademarked. Make sure your brand is truly unique by doing a trademark search.

8. Do a Google search to see if there are any similar game names that might be of concern.

VI. BOARD GAME TRADEMARKS

Can You Trademark a Board Game?

Yes, you can trademark a board game. The name, logo, and slogan of a board game can be protected by trademark. The U.S. Patent and Trademark Office (USPTO) accepts trademark applications for board games, board game names, board game logos, and board game slogans.

Trademarking Board Game Names

Trademarked board game names include: MONOPOLY

- CONNECT FOUR
- BATTLESHIP
- LIFE
- SCRABBLE

Trademarking Board Game Logos

Trademarked board game logos include:

- UNO
- SORRY!
- MONOPOLY

Trademarking Board Game Slogans and Catchphrases

Trademarked board game slogans include:

- THE GAME OF GLOBAL DOMINATION (Risk)
- THE WORLDS MOST POPULAR BOARD GAME (Monopoly)
- THE CLASSIC NAVAL COMBAT GAME (Battleship)

Trademarking Other Aspects of Board Games

Other aspects of a board game such as character names can also be protected by trademarks.

Trademarked board game characters include:

- COLONEL MUSTARD (Clue)
- RIGH UNCLE PENNYBAGS (Monopoly)

Read about how to trademark a character here.

Should I Trademark the Name of My Board Game?

Yes, most authorities agree that you should trademark the name of your board game to ensure that no one can use the same or a confusingly similar name for their game. Plus, if you trademark the name of your board game, no one else can trademark it for a competing game.

VII. SEARCHING GAME TRADEMARKS

How Do I Know If a Game is Trademarked?

The best way to find out if a game is trademarked is to do a trademark lookup at the U.S. Patent and Trademark Office (USPTO) using the USPTO’s TESS search system. You can search for game trademarks online using the TESS system.

How To Check If A Game Name Is Trademarked?

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

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 game name is trademarked, you can use the “Basic Word Mark Search.”

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

By searching the U.S. Patent and Trademark Office’s (USPTO) trademark database, you can check if a game name is trademarked.

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 for any trademarks that are close to yours using variations of your trademark (e.g., different spellings, abbreviations, and plurals).

VIII. WORKING WITH AN ATTORNEY

Do You Need A Trademark Attorney To Trademark A Game Name?

No, but the U.S. Patent and Trademark Office strongly recommends that all applicants work with a trademark attorney – for several reasons.

Why Should You Work With A Trademark Attorney To Protect Your Game Name?

Filing an application with the U.S. Patent and Trademark Office (USPTO) to trademark your game name 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%.

Your game name is essential to your online success. Filing a trademark isn’t a simple process, but the protection it affords your brand is worth your time and effort. If you do it correctly, you can secure your brand for years to come.

XI. COPYRIGHTING A GAME

How To Copyright A Game

Copyrighting a game is an essential step to protect it from copycats. Copyright protection is available for all types of games, including board games, video games, and even card games.

How to copyright a board game

To copyright a board game, you need to register it with the United States Copyright Office. The copyright registration process is a relatively straightforward federal legal process and can be done online. However, it requires specific information and navigating a complex online form. Also, you’ll need to submit a photo of the game board or original artwork that you want to protect. It is a federal legal process, so attorney help is advised.

How to copyright a video game

To copyright a video game, you need to register it with the United States Copyright Office. The copyright registration process is a relatively straightforward federal legal process and can be done online. It requires specific information, however, and requires navigating a complex online form. Also, you’ll need to submit the game’s source code or gameplay footage. It is a federal legal process, so attorney help is advised.

Need to trademark a game name?

When Should You Copyright A Game Name?

Like trademarks, most authorities agree that you should copyright your game as early as possible. Ideally, you should copyright a game name as soon as you have settled on the look, original artwork, and game source code before your game is released.

X. FREQUENTLY ASKED QUESTIONS

1. Can you copyright a game?

Yes, you can copyright the artistic aspects of a game such as a game board, game packaging, and playing cards. Names of games and gameplay are not eligible for copyright protection. Game names are protected by trademarks.

2. Which trademark class is for games?

Games, including board games, video games, and card games belong in Trademark Class 28.

3. Are board game names trademarked?

Yes, board game names can be trademarked. Names, includes the names of board games, that are used in branding can be protected with trademarks. The name of a board game must be distinctive and not descriptive of the game. Also, if someone else already has a registered trademark for a game with a similar name, you may not be able to use that name for your own game.

Take the Next Step and Legally

Own Your Game

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Game

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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

How to Do a Trademark Lookup – The COMPLETE GUIDE

January 24, 2022 by Michael Kondoudis

A trademark lookup and a Google trademark search can save you thousands of dollars and BIG legal headaches.

By Michael Kondoudis, Small Business Trademark Attorney

This is our complete guide to trademark lookups. If you need to lookup a trademark or learn all there is to know about trademark lookups this guide is for you.

CONTENTS

I. ABOUT TRADEMARK LOOKUPS

→ What a trademark lookup is

→ Why a trademark lookup is important

→ When to do a trademark lookup

→ Where to do a trademark lookup

II. HOW TO DO A TRADEMARK LOOKUP

→ How to do a trademark lookup in four steps

→ Do you need the help of a trademark attorney?

III. CONDENSED SUMMARY

IV. FREQUENTLY ASKED QUESTIONS

ABOUT TRADEMARK LOOKUPS

What is a Trademark Lookup?

A trademark lookup is a search to check if a trademark is available for you to register, is already registered by someone else, and whether another business is using it. A trademark lookup includes a national search at the U.S. Patent and Trademark Office (USPTO), local trademark searches of various State trademark databases, and the Internet.

What Does a Trademark Lookup Do?

A trademark lookup is a search to make sure that your proposed trademark is distinctive and eligible for trademark registration with the U.S. Patent and Trademark Office (USPTO). Distinctiveness is one of the requirements for every trademark.

The purpose of a trademark lookup is to find marks that are the same or similar to yours and learn whether they have been registered with the USPTO. Similar trademarks can affect your ability to (1) register your trademark with the USPTO and (2) legally protect your trademark.

Why Do a Trademark Lookup?

A trademark lookup can help you avoid costly and time-consuming issues if someone else has already trademarked your name, logo, or phrase. Typically, only one business can own a name, logo, or phrase for an industry and it is almost always the one that trademarks it first. A trademark lookup can make the registration process go more smoothly.

Also, a trademark lookup can help find out if your mark is too similar to any one else’s trademark. When marks are too similar, the risk of trademark infringement grows.

Plus, a trademark lookup can help avoid the most common reason that a trademark is rejected by the U.S. Patent and Trademark Office – similarity to another trademark.

The top reason most common reason a trademark application is rejected by the U.S. Patent and Trademark Office is a “likelihood of confusion” with an existing trademark. A trademark lookup is a way to find roadblocks to your trademark before wasting your time, money, and effort branding your business with it. Also, trademark infringement is avoidable. Conducting a trademark lookup before starting your business can help you avoid these expensive and time-consuming mistakes.

The Top Five Reasons to Do a Trademark Lookup

1. To find out if your trademark is distinctive

2. To find if your trademark is similar to someone else’s

3. To find if your trademark infringes someone else’s

4. To find who owns a specific trademark

5. To make the registration process go more smoothly

Do You Have to Do a Trademark Lookup?

No, you do not have to do a trademark lookup. There is no legal or regulatory requirement that you perform a trademark lookup. A trademark lookup is optional – not required. Still, it is a good idea to do a trademark lookup/search before you use a mark in commerce or attempt to register the mark with the United States Patent and Trademark Office (USPTO).

Why Should You Do a Trademark Lookup?

A trademark lookup gives you a chance to pick a different trademark before wasting your time, money, and effort branding your business.

Looking up trademarks is an important step in protecting your brand and business. A trademark lookup can help you find out if anyone else has registered your trademark or is already using it. This information can help you decide whether to pursue trademark protection for your mark and avoid potentially costly infringement and rebranding.

If you start a business using a name that someone else has already registered or been using, you risk being sued for trademark infringement. Trademark infringement does not require intent – it can be unintentional. You may also be forced to rebrand. These expensive and time-consuming problems can sink a small business or startup.

Suppose you apply to the U.S. Patent and Trademark Office to register your name, and it is not available because someone else has already registered it. In that case, your application will be denied without a refund of the fees. Plus, you could be facing an infringement problem. A trademark lookup can help you avoid these costly problems.

Also, if you plan to apply to register your trademark, a trademark lookup can increase the chance that your application will be accepted.

So, there are many reasons to search a potential trademark, including:

to help determine the availability of your trademark for registration and use
to avoid infringing another business’s trademark
to avoid having to rebrandS

Do you need help with your trademark?

When Should You Do a Trademark Lookup?

You should do a trademark lookup as early as possible after you decide to adopt a trademark, and preferably before you begin using it, according to most authorities – including the United States Patent and Trademark Office (USPTO).

You should perform a trademark lookup before using a mark to avoid any possible trademark infringement claims. If you are forced to rebrand because your new mark infringes on someone else’s, you would lose your investment in your trademark and brand.

Also, you should perform a trademark lookup before you attempt to register the mark with the United States Patent and Trademark Office (USPTO). Adopting a trademark that you cannot legally protect with a trademark registration is not a smart business decision.

In the end, the timing of any trademark lookup or search depends on your particular circumstances. But, in almost all situations, you can never do a trademark lookup too early in the process of developing a product or business.

Pro Tip: Almost all of the time, it is best to do a trademark lookup as early as possible before you begin using a trademark.

Where Do You Do a Trademark Lookup?

You perform a trademark lookup by searching the U.S. Patent and Trademark Office (USPTO) trademark database, state trademark databases, and the Internet.

1. The USPTO Trademark Database – TESS

You start a trademark lookup with the USPTO trademark database, which includes all of trademarks that have ever been registered in the United States, along with marks that are pending or have been refused registration. This database is available via the USPTO’s Trademark Electronic Search System (TESS) located at: https://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk

2. State Trademark Databases

You continue a trademark lookup with each state trademark database, which includes only trademarks registered in that state. Here, it is important to keep in mind that you need to search beyond your state’s database.

3. Google Trademark Search

You complete a trademark lookup with a Google trademark search. Search for the elements that comprise your trademark. This step is critical to find common law trademarks (unregistered trademarks) that may conflict with your mark.

These are free resources, but they take time to visit and some knowledge and skill to search well.

Another option is to hire a trademark search company. This option is easier and faster than the free trademark lookup options but comes with costs, which vary by service provider. However, this trademark lookup option almost always returns better and more complete results than free DIY trademark lookups.

Where Do You Check Availability of a Trademark?

You can search all applied-for and registered trademarks free using the U.S. Patent and Trademark Office’s Trademark Electronic Search System (TESS).

You may also visit the USPTO’s Public Search Facility or a Patent and Trademark Resource Center to look up trademarks. These resources are free to the public.

HOW TO DO A TRADEMARK LOOKUP

How to Do a Trademark Lookup – The Four Steps of Every Trademark Lookup

A trademark lookup is a four-step process that involves a national trademark search, a state-by-state trademark search, an Internet trademark search, and a review of the search results. These four steps are how a trademark lookup is performed:

(1) Start with a USPTO trademark lookup by searching the USPTO’s trademark database using the Trademark Electronic Search System (TESS).

(2) Continue with a state-by-state trademark lookup by searching all 50 state trademark databases.

(3) Follow with a Google trademark search for evidence of use in commerce on websites and social media.

(4) Review the search results looking for any “likelihood of confusion.”

Trademark Lookup Step 1 – A USPTO Trademark Lookup

The Trademark Electronic Search System (TESS) is a database of all registered and applied-for trademarks in the United States. Each record in TESS consists of many searchable elements about each trademark. The chances of the USPTO rejecting your trademark and infringing on someone else’s are higher when shared elements exist.

To run a USPTO trademark search, use the USPTO TESS search engine available on the USPTO website at www.uspto.gov.

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

Beware: 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 for any trademarks that are close to yours using variations of your trademark (e.g., different spellings, abbreviations, and plurals).

Trademark Lookup Step 2 – 50 State Trademark Lookups

To run a state trademark search, use a state’s trademark online search engine available on the state’s government website. The easiest way to find these sites is with an Internet search using the terms “State” and “trademark search.” Below is an example of the Maryland Secretary of State’s trademark search engine:

Enter your trademark into the search field to search for a state’s trademark database.

Be warned: State trademark registrations are only enforceable within a state. State trademark rights are not national like those that come with a USPTO trademark registration.

Do you need help with your trademark?

Trademark Lookup Step 3 – GOOGLE Trademark Search

Conduct a Google trademark search. Input search terms relevant to your trademark, business, product, services, and customers. A Google trademark search can return a high number of results. Pay particular attention to the search results returned by the search that relate to social media.

Surprisingly to some, it can be very effective to Google trademarks. The scope and reach of Google is tremendous. When you Google trademarks, you are using the best search algorithms and the Internet’s widest search tools.

Trademark Lookup Step 4 – Review the Search Results

Trademark searches can sometimes return hundreds of results, so it is important to narrow the results before reviewing them. This key is to identify trademarks that are relevant to your potential trademark, based on any “likelihood of confusion.” Here, it is advisable to consult with a trademark attorney because, as the United States Patent and Trademark Office warns, determinations of “likelihood of confusion” are “complicated.”

If, after searching trademark databases and the Internet, you find that a trademark is already in use for similar or related goods or services to your own, it may be best to opt for another trademark. Similarly, if the trademark isn’t registered but appears likely to conflict with other trademarks under trademark law principles (likelihood of confusion), trademark registration may not be a wise choice.

Do You Need an Attorney for a Trademark Lookup?

Yes. According to the United States Patent and Trademark Office (USPTO), deciding what to search for and interpreting your results can be complicated because there are so many factors to consider in determining any likelihood of confusion. Also, the USPTO is prohibited from (1) telling you how to do a clearance search for your mark, (2) searching for you, or (3) interpreting your search results.

That’s where trademark attorneys come in. We can do all of these things and give you legal advice about your brand.

Plus, the USPTO also warns that “you may wish to consider hiring a U.S.-licensed attorney to advise you throughout the application process.”

Note: If you are a foreign-domiciled applicant, you must have a U.S.-licensed attorney represent you at the USPTO.

In the end, while it may not be mandatory to consult with a trademark attorney when selecting or registering your trademark, it is a good idea. The trademark registration process involves investing time, money, and your brand. A trademark attorney can help you (i) decide whether a trademark is confusingly similar to yours, (ii) can help you with a trademark search, and (iii) help you register the trademark with the USPTO.

CONDENSED SUMMARY

To search for registered trademarks at the USPTO, visit the Trademark Electronic Search System (TESS) website. TESS provides access to registered marks and their respective trademark classes. There are 45 trademark classes, and they are divided into two categories: goods and services. Searches can also be conducted at the Patent and Trademark Resource Center.

When searching for a particular trademark on goods or services, it is important to use the USPTO’s tips to get the most accurate results. For example, when searching for a mark that is used on clothing, it is best to use the word “clothing” in the keyword search instead of just “apparel.” This will help to return all registrations that include the word “clothing” in the description of goods.

It is also important to note that inactive registrations and applications can be found in TESS. Inactive registrations are those that have not been used for five years or more and have not had any recent legal proceedings filed against them. If an individual is interested in using an inactive mark, they should file an application to revive the mark.

After conducting a search through TESS and the Patent and Trademark Resource Center, you may want to do further research on the availability of a trademark. This can be done by searching through state trademark registers and online resources that list common law trademarks.

A common law trademark is one that isn’t registered with the USPTO but is still used in commerce. Common law trademarks arise from the actual use of the mark and provide nationwide protection. The main disadvantage of common law trademarks is that they don’t have the same level of protection as federally registered trademarks. This means that common law trademarks can be challenged more easily.

To do a search for state trademarks, go to the website of the state in which you’re interested. Each state has its own trademark register. The website will usually have a search engine where you can input keywords to find registered trademarks.

There are also several online resources that list common law trademarks. One such resource is the United States Patent and Trademark Office’s (USPTO) database of Registered Trademarks Applied for and Used in Commerce. This database includes marks that are registered with the USPTO and marks that are protected under common law.

FREQUENTLY ASKED QUESTIONS

1. How do I look up trademarks for free?

To look up trademarks for free, you can use the Trademark Electronic Search System (TESS) on the United States Patent and Trademark Office (USPTO) website. You can also visit the USPTO’s Public Search Facility or a Patent and Trademark Resource Center near you. These resources enable you to search for registered or applied-for trademarks by keyword, including design elements if your mark includes one.

Also, they are free to the public.

If you’re not sure how to conduct a search, the USPTO has a number of resources to help you, including online tutorials and guides, and free in-person help at their Public Search Facility and Patent and Trademark Resource Centers.

2. Can I see if a name is trademarked?

Yes, you can see if a name is trademarked by using the trademark name search on the USPTO’s Trademark Electronic Search System. This search will show you all trademarks that include that name. So, if you are not sure if a name is trademarked, do a free search on TESS.

To search the USPTO’s trademark database, go to TESS. Choose a search option. If you are searching for a name, use the trademark name search. If you are searching for a design mark, such as a logo, you will first need to look up your design code using the USPTO’s Design Search Code Manual.

5. TRADEMARKS LOOKUP

What is trademarks lookup?

A trademarks lookup is a search for trademarks at the U.S. Patent and Trademark Office (USPTO). A trademarks lookup is a free way to search for trademarks that might be too similar to your mark. A close similarity between trademarks is one of the most frequent reasons why a trademark application is rejected.

Why do a trademarks lookup?

The main reason to do a trademarks lookup is to avoid the most common reason that a trademark is rejected by the U.S. Patent and Trademark Office (USPTO) – confusing similarity.

If your mark is so similar to a trademark that has already been registered that people are likely to get confused, the USPTO must reject your application.

So, by performing a trademarks lookup before you apply to register a trademark, you can see if someone else already registered that trademark or a similar one.

Why is a trademarks lookup important?

By doing a trademarks lookup can help you avoid wasting time and money on trademark applications that cannot be granted because of similarities to other trademarks. Trademark lookups save you money, time, and frustration.

TAKE THE NEXT STEP

Take the 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 name, logo, or slogan, 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

NFT + Crypto + Metaverse Trademark Filing Tote Board

January 18, 2022 by Michael Kondoudis

By Michael Kondoudis, NFT Trademark Attorney

Last Updated on 5 October 2022

This page is a centralized hub of the latest information relating to NFT, Metaverse, and Crypto trademark filings at the United States Patent and Trademark Office (USPTO).

Here you’ll find:

→ NFTs: a chart and breakdown by month of NFT trademark application filings at the USPTO

→ METAVERSE: a chart and breakdown by month of Metaverse trademark application filings at the USPTO

→ CRYPTO: a chart and breakdown by month of Crypto trademark application filings at the USPTO

If you are interested in learning more about NFT trademarks, we invite you to read our Comprehensive Guide to NFTs and Trademarks.

If you are interested in learning more about trademarks in the Metaverse, read our Comprehensive Guide to Metaverse Trademarks.

NFT Trademark Filings

-BY MONTH–

Thus far in 2022, the USPTO has received over 4600 trademark applications that include or relate to NFTs.

In 2021, the USPTO received 2142 trademark applications that included or related to NFTs.

In 2020, it received just 18.

Here’s the monthly breakdown.

MONTH		APPLICATIONS FILED
September 2022		435
August 2022		512
July 2022		533
June 2022		720
May 2022		743
April 2022		876
March 2022		1064
February 2022		770
January 2022		637
December 2021		534
November 2021		425
October 2021		309
September 2021		140
August 2021		160
July 2021		87
June 2021		161
May 2021		117
April 2021		149
March 2021		78
February 2021		15
January 2021		4

Do you need help with your trademark?

METAVERSE Trademark Filings

-BY MONTH–

Thus far in 2022, the USPTO has received over 4600 trademark applications for Metaverse and/or virtual goods or services.

In 2021, the USPTO received 1890 trademark applications for Metaverse and/or virtual goods or services.

In 2020, it received just 155.

Here’s the monthly breakdown.

MONTH		APPLICATIONS FILED
September 2022		393
August 2022		422
July 2022		388
June 2022		538
May 2022		540
April 2022		574
March 2022		773
February 2022		573
January 2022		417
December 2021		369
November 2021		324
October 2021		149
September 2021		121
August 2021		114
July 2021		103
June 2021		111
May 2021		111
April 2021		121
March 2021		108
February 2021		113
January 2021		54

Do you need help with your trademark?

CRYPTO Trademark Filings

-BY MONTH–

Thus far in 2022, the USPTO has received over 4300 trademark applications for digital or cryptocurrency products or services.

In 2021, the USPTO received 3547 trademark applications for digital and/or cryptocurrency goods or services.

In 2020, it received just 1138.

Here’s the monthly breakdown.

MONTH		APPLICATIONS FILED
September 2022		367
August 2022		335
July 2022		403
June 2022		450
May 2022		549
April 2022		584
March 2022		609
February 2022		539
January 2022		481
December 2021		369
November 2021		324
October 2021		149
September 2021		121
August 2021		114
July 2021		103
June 2021		111
May 2021		111
April 2021		121
March 2021		108
February 2021		113
January 2021		54

Major NFT + Metaverse Trademark Filings

The interest in NFTs is growing all the time and that interest extends over myriad industries. Here’s the breakdown.

Sports

Callaway
Jerry Rice
Kobe Bryant
Muhammed Ali
Shaquille O’Neal

Hendrick MotorSports
UFC
TaylorMade
Cobra
Whitespace (Shaun White)
Draftkings

Celebrities / Pop Culture

Albert Einstein
Marilyn Monroe
Elvis Presley
Jay-Z

Lil Wayne
Andy Warhol
Dr. Oz

Movies / Television

A&E
American Psycho
Blockbuster
Hellraiser
John Wick

Spongebob Squarepants
The Texas Chainsaw Massacre
Star Trek
The History Channel

Beauty

Maybelline
Aveeno
Nutrageena
Clinique
Colgate

Hugo Boss
Kiehl’s
Redken
L’Oreal
Palmolive

Apparel

Athleta
Banana Republic
J. Crew
Old Navy
The Gap
Jack Wolfskin
Bulgari

Hugo Boss
Nike
Fila
Puma
Keds
Hush Puppies

Publishing

Allure
Bon Appetit
Entertainment Weekly
GQ
Self

Sports Illustrated
Vogue
Wired
Vanity Fair

Music

Bob Marley
Coachella
Grandmaster Flash
Kiss
Jay-Z
Lil Wayne
Stratocaster

Fender
The Band
Live Nation
Ticketmaster
Dolly Parton
Gene Simmons
Billie Eilish

Collectables / Toys

Bazooka
Baby Shark
Garbage Pail Kids
Entertainment Weekly

Rubik’s
Marvel Mightys
Hot Wheels
Upper Deck

Retail

Brookstone
Circuit City
Pottery Barn
Saks

Walmart
West Elm
Williams Sonoma
CVS

Food / Beverage / Restaurant

McDonald’s
Chuck E. Cheese
Panera
Panda Expres
Nextlevel Burger

Monster Energy
Slim Jim
Utz

Home Improvement

Scotts
Ortho

Miracle-Gro

Travel / Lesiure

Royal Caribbean International

Celebrity Cruises

Do you need help with your trademark?

List of NFT + Metaverse

Trademark Filings

-updated February 2022-

WORD MARK	OWNER	SERIAL NUMBER
Bob Marley	Fifty-Six Hope Road Music Ltd.	97272481
Old Navy	Old Navy (Apparel), LLC	97271953
Banana Republic	Banana Republic (Apparel), LLC	97271944
Athleta	Athleta, Inc.	97271938
J. Crew	J. Crew International, Inc.	97271870
Celebrity Cruises	Celebrity Cruises Inc.	97268832
Royal Caribbean International	Royal Caribbean Cruises Ltd.	97268772
Cruiseverse	Royal Caribbean Cruises Ltd.	97268715
Circuit City	C&R Holding Group, Corp.	97265984
Colgate	Colgate-Palmolive Company	97264283
Palmolive	Colgate-Palmolive Company	97264277
NYSE	NYSE Group, Inc.	97261560
Matbelline	L’Oreal USA Creative, Inc.	97260006
Kiehl’s Since 1851	L’Oreal USA Creative, Inc.	97255985
Dr. Oz	Oz Property Holdings LLC	97255519
Scotts	OMS Investments, Inc.	97254135
Miracle-Gro	OMS Investments, Inc.	97254133
Ortho	OMS Investments, Inc.	97254132
Star Trek	CBS Studios Inc.	97254052
Bulgari	Bulgari S.p.A.	97253264
Paneraverse	Pumpernickel Associates, LLC	97251535
Panera	Pumpernickel Associates, LLC	97251429
Kobe Bryant	Kobe, Inc.	97244916
Grandmaster Flash	Joseph Sadler	97244525
Blockbuster	Blockbuster L.L.C.	97229845
Pottery Barn Kids	Williams-Sonoma, Inc.	97231083
Pottery Barn Teen	Williams-Sonoma, Inc.	97231082
Pottery Barn	Williams-Sonoma, Inc.	97231081
West Elm	Williams-Sonoma, Inc.	97231080
Williams Sonoma	Williams-Sonoma, Inc.	97231079
Jack Wolfskin	Jack Wolfskin Ausrüstung für Draussen GmbH & Co.	97226225
Callaway	Callaway Golf. Co.	97226094
Draftkings	Draftkings, Inc.	97224577
Brookstoneverse	BKST Brand Holdings LLC	97221920
Gap	Gap (Apparel), LLC	97215886
Crocs	Crocs, Inc.	97212947
Coachella	Coachella Music Festival, LLC	97205715
Lil Wayne	Amschel de Rothschild II	97201507
Muhammad Ali	Muhammad Ali Enterprises LLC	92184622
Walmart	Walmart Apollo, LLC	97197296
The Texas Chainsaw Massacre	Vortex, Inc.	97197245
Jerry Rice	Rice, Jerry	97197064
Hendrick Motorsports	Hendrick Motorsports, LLC	97196519
Sports Illustrated	ABG-SI LLC	97185147
Shaq	ABG-Shaq, LLC	97184867
Marilyn Monroe	The Estate of Marilyn Monroe LLC	97184502
Elvis Presley	ABG EPE IP LLC	97184356
Self	Advance Magazine Publishers Inc.	97183965
Allure	Advance Magazine Publishers Inc.	97183964
Bon Appetit	Advance Magazine Publishers Inc.	97183963
Wired	Advance Magazine Publishers Inc.	97183962
Vanity Fair	Advance Magazine Publishers Inc.	97183961
GQ	Advance Magazine Publishers Inc.	97183959
Vogue	Advance Magazine Publishers Inc.	97183958
Fanatics	Fanatics, Inc.Ê	97156025
Yahoo	Yahoo Inc.	97166859
Estee Lauder	Estee Lauder Inc.	97159546
Nanette Lepore	BR Brand Holdings LLC	97132536
Brookstone	BKST Brand Holdings LLCÊ	97132536
JAY-Z	SC BRANDING LLC	97118641
Clinique	Clinique Laboratories, LLC	97115394
Live Nation	Live Nation Worldwide, Inc.	97089071
Ticketmaster	Live Nation Worldwide, Inc.	97089225
Albert Einstein	The Hebrew University of Jerusalem	97063114
Ring Pop	The Topps Company, Inc.	97072868
Mars Attacks	The Topps Company, Inc.	97072859
Garbage Pail Kids	The Topps Company, Inc.	97072832
Bazooka	The Topps Company, Inc.	97072828
American Psycho	Edward R. Pressman Film Corporation	90796288
Marvel Mightys	Marvel Characters, Inc.	90791278
Saks	Saks.com LLC	90789965
Hellraiser	Park Avenue Entertainment LLC	90780486
Hot Wheels NFT Garage	Mattel, Inc.	90767267
Entertainment Weekly	Entertainment Weekly, LLC	90751600
Life	TI Gotham Inc.	90751564
Kiss NFT	Kiss Catalog, Ltd.	90705581
John Wick	Lions Gate Entertainment Inc.	90688332
UFC	Zuffa, LLC	90667930
Stratocaster	Fender Musical Instruments Corp.	90626105
Fender	Fender Musical Instruments Corp.	90626068
Upper Deck	The Upper Deck Company	90604339
Andy Warhol	The Andy Warhol Foundation for the Visual Arts, Inc.	90602664

I. NFT Trademark Filings (by Month) (jump)

II. Metaverse Trademark Filings (by Month) (jump)

III. Major NFT + Metaverse Trademark Filings (by sector) (jump)

IV. List of NFT + Metaverse Trademark Filings (jump)

Ready to take the next step toward LEGALLY owning your NFT, Metaverse, or Crypto Trademarks?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your NFT, Metaverse, or Crypto trademarks, 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 Restaurant Name: An EASY GUIDE

January 16, 2022 by Michael Kondoudis

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

By Michael Kondoudis, Restaurant Trademark Attorney

This is our ultimate guide to registering a restaurant trademark.

Building a restaurant brand takes hard work, dedication, and investment. That is what makes your restaurant’s name so valuable.

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

That’s where trademarks come in.

In this ultimate guide, we discuss protecting a restaurant brand with trademarks and answer important questions about trademarking a restaurant name. In fact, this is the information that we use to register restaurant trademarks for our clients.

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

Let’s dive in!

Trademark reg. no. 6,378,403 secured by The Law Office of Michael E. Kondoudis for Capitol City Brewing Company

Contents

Part I: HOW TO PROTECT A RESTAURANT NAME

How do you protect a restaurant name?
Protecting a restaurant name and logo Infographic
What is restaurant branding?
What is a restaurant trademark?
Do restaurants have trademarks?

Part II: HOW TRADEMARKS PROTECT RESTAURANTS

Do restaurants need trademarks?
How does a trademark protect a restaurant name?
Why should you trademark a restaurant name?

Part III: HOW TO TRADEMARK A RESTAURANT

Which parts of a restaurant brand can you trademark?
How long does it take to get a restaurant trademark?
When should you trademark your restaurant name?
How do you trademark a restaurant name?
The trademark class for restaurants

Part IV: RESTAURANT TRADEMARK SEARCHING

Why should you conduct a trademark search?
How do you do a trademark search?
How do you look up trademarks for restaurant names?

Part V: TIPS TO GET THE BEST RESTAURANT TRADEMARK

Part VI: DO YOU NEED TO WORK WITH A TRADEMARK ATTORNEY

Do you need a trademark attorney?
Reasons why you should consult with a trademark attorney

PART VII: FREQUENTLY ASKED QUESTIONS

How do you search for trademarked restaurant names?
Do you need an attorney to trademark a restaurant name?

I. How to Protect a Restaurant Name

How Do You Protect a Restaurant Name?

The best way to protect a restaurant name is to trademark the name (and any logo you might use to promote your restaurant). Trademarks protect brands, including restaurant brands. Trademarking your restaurant name is the most effective way to protect it because a trademark prevents competitors from using the same or similar name.

Also, when you trademark a restaurant name, you confirm your legal ownership of it, as well as your exclusive rights to it.

Can you legally protect your restaurant name?

Yes, you can legally protect your restaurant name with a trademark. Trademarking your Restaurant Name is official confirmation from the U.S. Government that you legally own it. Legal ownership of your restaurant name ensures name recognition and helps create a unique and recognizable brand.

Can you trademark a restaurant name?

The answer is YES. You can trademark a restaurant name, and many names of restaurants are trademarked! Trademarking the name of your restaurant (or bar) is the most effective way to protect it and the brand identity you’re building.

How do I protect my restaurant name?

You protect your restaurant name by trademarking it. Trademarking a restaurant is the best way to protect it. A restaurant trademark will protect your restaurant name and logo throughout the U.S. and ensure that they remain exclusively yours to use. Restaurants are prime candidates for trademark protection.

You trademark a restaurant name by submitting an application to the U.S. Patent and Trademark Office (USPTO). To qualify for a U.S. trademark for your restaurant’s name, you will need to show that no one else has already trademarked it and that you are using it in commerce.

Protecting A Restaurant Name and Logo

(click to download)

What is Restaurant Branding?

A restaurant brand is what your restaurant is all about. Restaurant brands are how your patrons and customers will remember you. The best restaurant branding:

• expresses your restaurant’s identity and personality
• creates an emotional connection with patrons and guests
• invites new guests to your brand through marketing

What is a Restaurant Trademark?

A restaurant trademark is a badge of origin that tells your customers that your restaurant services come from you and not your competitors.

A trademark can be any word, phrase, symbol, or design that identifies you as the source of your products or services. Brand names, slogans, and logos are all examples of trademarks.

A restaurant trademark:

• Confirms your legal ownership of your restaurant name
• Identifies you as the source of your restaurant services
• Prevents anyone else from trademarking the same or similar restaurant name for their business
• Is a strong tool to stop copycats and keep your restaurant name uniquely yours.

Trademarks prevent consumer confusion by ensuring that other restaurants and restaurant-related businesses do not use the same or similar name or symbol.

What is a federal trademark?

A Federal trademark is an enhanced trademark that has been certified by the U.S. government. It comes with exclusive nationwide legal rights.

A federally registered trademark, such as “Panera” or “McDonald’s,” is one that has been approved by the US Patent and Trademark Office (USPTO), and is often indicated with the ® trademark symbol.

Do Restaurants Have Trademarks?

Yes, restaurants have trademarks.

The name of your restaurant serves as a trademark.

The logo that you use to promote your restaurant serves as a trademark.

The slogan that you use to promote your restaurant serves as a trademark.

The names of your food and beverage items serve as trademarks, so long as they are unique.

II. How Trademarks Protect Restaurants

Do Restaurants Need Trademarks?

Yes, restaurants need trademarks. Whether you’re opening a new restaurant or already own one, you need to register your trademark with the United States Patent and Trademark Office (USPTO). You can ensure that your restaurant name, logo, slogan, and brand stay yours with a trademark. Without a trademark, anyone can copy your restaurant name, concept, and brand. These are just some of the reasons you need a trademark for your restaurant.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

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.

How Does a Trademark Protect a Restaurant Name?

Trademarking a restaurant name protects it in four ways:

1. A trademark will help prevent any other restaurant from using your restaurant name. This is an essential step in building your restaurant brand.

2. Also, trademarking a restaurant name confirms YOUR legal ownership of it and how it is used. This means that no one can take it from you, and no one will be able to force you to rebrand.

3. Plus, trademarking your restaurant name prevents anyone else from registering it for their restaurant. This makes trademarking great insurance against having to rebrand.

4. Lastly, trademarks are essential for restaurants looking to franchise or open additional locations.

Remember: If you don’t trademark your restaurant name, you won’t have exclusive rights. Other restaurants could use your name and logo or ones that are really close.

Is trademarking important for a restaurant with just one location?

Yes. Restaurants with a single location are less likely to survive a forced rebrand if someone else registers their name or logo and takes it. This can and does happen. Plus, most regional and national restaurant chains started with a single location. Trademarking a restaurant name becomes very important for expansion into multiple locations or franchising.

Why Should You Trademark a Restaurant Name?

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

III. How To Trademark A Restaurant

Which Parts of a Restaurant Brand Can You Trademark?

Several parts of a restaurant brand are eligible for trademark protection. You can trademark your restaurant name, product names, a logo, and any slogan you use to promote your foodservice business. Examples of restaurant trademarks are:

Brand Names

Product Names

Slogans

McDonald’s

Big Mac

I’m Lovin’ It

• Brand names like McDonald’s

• Product names like Big Mac

• Slogans like I’m Lovin’ It

• Logos like the Golden Arches

How Long Does It Take to Get a Restaurant Trademark?

It takes between 8-12 months to get a restaurant trademark, in most cases. The trademarking process for restaurant names is a legal process that takes about a year. The first step is applying to the USPTO, where an examining attorney examines whether your restaurant’s name qualifies for registration. Your restaurant name may not qualify if another restaurant is already using it or has registered it. If the application qualifies, it will be “published for opposition” for 30 days to give potential opponents a chance to oppose.

When Should You Trademark a Restaurant Name?

Most authorities agree that the best time to trademark a restaurant name is BEFORE opening.

The US is one of the few countries that allow you to protect your restaurant’s trademarks before you begin using them. Trademarking restaurant names BEFORE opening is an opportunity to:

• reserve a restaurant name and avoid having to change your name later

• confirm that your restaurant name does not infringe on another restaurant with a registered trademark

• complete an important branding task before operations begin.

If your restaurant is already open for business, you should start the process to trademark a restaurant name as soon as possible. If you don’t trademark your restaurant name, someone else could trademark it and force you to rebrand and start all over. Plus, the trademarking process can take about a year, so if you find a copycat, you could have to wait almost 12 months to stop them. When it comes to restaurant trademarks, sooner is better.

How To Trademark a Restaurant?

You trademark a restaurant name by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking a restaurant name is a legal process that usually takes about 12 months. So, the sooner you start the process to trademark a restaurant name, the better.

How to Trademark a Restaurant Name in 5 Steps

Want to trademark your restaurant name but aren’t sure how to begin? Here are 5 steps to trademark your restaurant’s name.

(1) Pick a unique name for your restaurant.

(2) Do a trademark search for your restaurant name.

Find out if anyone else has registered your restaurant name (or anything close) by searching the USPTO’s database of all registered and pending trademarks (more on that below).

(3) Prepare your restaurant trademark application.

Collect the required information and build a brand protection strategy for your restaurant trademark.

(4) Complete and file your restaurant trademark application with the U.S. Patent and Trademark Office (USPTO).

You can file your restaurant trademark application online using the USPTO’s Trademark Electronic Application System (TEAS). Read our Complete Guide to TEAS Plus here.

(5) Monitor the progress of your restaurant trademark application.

Navigate the trademark examination process and work with the trademark examiner.

The USPTO will add your restaurant trademark to the list of Federal (registered) trademarks IF your application satisfies all of the requirements of the Federal Trademark Statute.

What is the Trademark Class for Restaurants?

The USPTO categorizes all products and services into 45 separate classes. The trademark class for restaurants is International Class 43. Class 43 is for Restaurant and Hotel Services and includes restaurant-related products and services. And, because the trademark class for a restaurant name is Class 43, an application to register a restaurant name should be filed in that trademark class.

IV. Restaurant Trademark Searching

Why Should You Conduct a Trademark Search for Your Restaurant’s Name?

You should do a trademark search for your restaurant’s name for several reasons.

(1) You should do a trademark search for your restaurant’s name because it can help you avoid picking a name that someone else has already trademarked and is already taken. If you use a restaurant 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 restaurant’s 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 after investing money in signs, menus, websites, and advertising.

(3) You should do a trademark search for your restaurant’s name because it will help you pick a name for your restaurant that you can own and protect with a trademark. If you use a restaurant name that other restaurants 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 restaurant name.

When starting a new restaurant, it is important to ensure that your restaurant name is unique and that no one else is already using it. Otherwise, you risk costly litigation and potentially having to rebrand, which can be financially devastating.

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

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

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.

How Do You Do a Trademark Search for Trademarked Restaurant Names?

The best way to do a restaurant trademark search is to follow this four-step process:

(1) search the Internet using search engines
(2) search the U.S. Patent and Trademark Office trademark database
(3) search social media
(4) search State trademark and corporation databases

1. Search Internet

This is the easiest search tool and a good place to start. A series of Google searches of the exact restaurant name you want (and similar variations) can be very effective. After all, almost all restaurants have a website. Plus, Internet search engines can find them for you, even if they are far away from your restaurant location.

2. The U.S. Patent and Trademark Office (USPTO) trademark database

The USPTO maintains a searchable online database of all registered trademarks and pending applications. The USPTO’s website allows for searching by name and class, and through it, you can investigate:

• Trademarks currently registered with the USPTO
• Trademarks that are in the application process
• Old trademarks that are no longer registered

Pro Tip: The USPTO website permits simple word searches and more targeted searches using “classes,” which are USPTO categories for products and services. It is often advantageous to include the service category for restaurant trademarks, which is Class 43 (Restaurants and Hotels) in searches. Use this search parameter to return the more relevant search reports.

3. Social media

Social media is another way to find smaller restaurant-related businesses that might already be using your restaurant name.

4. State corporation commission databases

Every state maintains an online database of all corporations, limited liability companies, partnerships formed or registered to do business in the state, including those that operate restaurants. These databases usually include DBAs and fictitious names as well. These business formation databases are usually searchable through the Secretary of State website for a state.

Pro Tip: Restaurant names do not need to match exactly to conflict. The legal standard for trademark infringement is something called “confusing similarity,” which is based on whether potential customers might mistakenly believe that two different businesses are related or affiliated. This means that:

1. a restaurant trademark search should include more than just other restaurants. ANY other company involved in food, food service, or hospitality might be relevant to your search. For this reason, be sure to search for restaurant-related businesses, such as bakeries, bars, caterers, coffee shops, food manufacturers, and maybe even grocery stores.

2. a restaurant trademark search should look for more than just exact matches to your restaurant name. For example, a restaurant named Bob’s Pizza could conflict with a business operating under the name Robert’s House of Cheeses.

How Do You Lookup Trademarks for Restaurant Names?

You can look up trademarks, including trademarks for restaurant names, on the U.S. Patent and Trademark Office’s (USPTO) website at www.uspto.gov. You can search trademark names for restaurants online using the USPTO’s Trademark Electronic Search System (TESS) on its website. This is how to search trademark names for restaurants. This is best way to check if a business name is trademarked.

The USPTO’s TESS system allows you to search for business names in:

• Trademarks that are currently registered with the USPTO

• Trademarks that are in the process of being registered

• Old trademarks that are no longer registered

IF you find your business name in (1) or (2), then there is a good chance that your business name is taken. You should investigate the trademark owner.

IF you do not find your name in (1) and (2), or only in (3), then there is a good chance that your business name is not taken.

V. Tips To Get The Best Restaurant Trademarks

If you’re a restaurant owner, you should definitely consider trademarking the name of your restaurant.

A restaurant trademark protects your restaurant’s name and logo and prevents competing restaurants from copying or using them. Also, a restaurant trademark boosts customer awareness and helps you stand out from the competition. Plus, getting a trademark for a restaurant comes with the peace of mind that you legally own your brand. So, there are many reasons that you should want to trademark a restaurant name.

Getting a restaurant trademark is not easy, however. Read on to learn about our tips for how to get the best restaurant trademark.

Tips to Get the Best Restaurant Trademark

1. Understand the Differences Between Trademarking and Copyrighting

2. Appreciate How a Restaurant Trademark is Valuable

3. Understand the Basics of How to Trademark a Restaurant Name

4. Work with a Trademark Attorney

Tip #1 Understand the Differences Between Trademarking and Copyrighting

Understanding the differences between trademarks and copyrights is important when it comes to protecting your restaurant name.

Trademarks identify and distinguish a business and its services from other companies. The best restaurant trademark is a registered Federal trademark. Registered trademarks are administered by the United States Patent and Trademark Office (USPTO) and are designated with the ® symbol.

Copyrights protect creative works like TV shows, books, photographs, and music by prohibiting others from copying them. The best copyrights are registered copyrights. Copyrights are administered by the Library of Congress. Copyrights do not protect restaurant names because restaurant names are not creative works.

Tip #2 Appreciate How a Restaurant Trademark is Valuable

When you trademark a restaurant name with the USPTO, you become the official, legal owner of your brand. No one can take it from you, and you won’t have to worry about being forced to rebrand. Also, your trademark will block applications filed by other restaurants for the same or similar trademarks.

A restaurant trademarking is even more important if you are considering expanding to multiple locations or franchising your restaurant concept.

Tip #3 Understand How to Trademark a Restaurant Name

Starting the process to trademark a restaurant name is fairly straightforward. Here are the most essential steps to start the process to trademark a restaurant name:

1. Check with the USPTO to see if your intended name is already registered or pending by performing a preliminary search for your restaurant name in the USPTO’s database of all registered and pending trademarks.

2. Identify which products and services you can protect with a trademark.

3. Make strategic decisions about whether to apply based on “actual use” or “an intent to use” and whether to seek broad or narrow protections.

4. File your application online using the USPTO’s Trademark Electronic Application System (TEAS).

5. Pay your application fee, which is currently $350 per class of products and services.

6. Follow up and monitor your application. The trademarking process can take up to a year or more. If the USPTO makes any rejections, you will have six months to respond to them.

VI. Do You Need A Trademark Lawyer

Do You Need a Trademark Attorney to Protect a Restaurant Name?

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.

Need to trademark a restaurant name?

Why Should You Work With a Trademark Attorney to Protect Your Restaurant Name?

Filing a trademark application with the USPTO to register your restaurant 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%.

If you own a restaurant, it’s probably in your best interest to trademark your restaurant name. Filing a trademark isn’t a simple process, but the protection it affords your brand is worth your time and effort. If you do it correctly, you can secure your brand for years to come.

VII. Frequently Asked Questions

1. Why should you protect your restaurant name and brand?

Protecting your restaurant’s name is important for several reasons, including:

- Solid branding and control over your brand
- Easier expansion/franchising
- Fewer disputes over time

Solid Branding: The goal of a unique name and branding is to distinguish your brand and stand out. The legal rights that come with trademark registration mean that you can control who uses your brand and how it is used. Legally protecting your restaurant name and brand is the surest way to protect what makes your restaurant yours.

Easier Expansion Later: While this may seem hard to imagine for a brand-new restaurant business, most franchises started as a single location — and you set yourself up for growth down the line when you protect your name. When your name is protected now, it’s also protected later when you expand and open additional locations. Remember, the primary legal right that you are granting to your franchisees is the right to use your trademarks to market and sell the goods or services under your brand.

Fewer Copycats: There’s nothing more discouraging than having your ideas stolen. When you don’t take the necessary precautions to protect your Restaurant Name and Brand, you make it all too easy for someone else to steal them. The legal protections that come with trademarks tend to scare away imitators.

2. How do you protect a restaurant name and brand?

The simplest and best way to protect your Restaurant Name and Brand is to acquire nationwide rights as early as possible by trademarking them.

3. What is a trademark?

Trademarks are badges of origin. They identify and distinguish the products or services of one enterprise from those of another.

Any word, phrase, symbol, or design that identifies you as the source of your products or services can be a trademark. Brand names, slogans, and logos are all examples of trademarks.

A trademark:

- Identifies you as the source of your goods or services.
- Provides legal protection for your brand.
- Helps you guard against counterfeiting and fraud.

Read more about trademarks here.

4. Why do you want to trademark a restaurant?

Trademarks identify your business, They are how customers recognize you in the marketplace and distinguish you from your competitors, which is important to establishing a foothold in any market. They help ensure that all of your marketing is to your benefit and not to the benefit of a copycat.

Trademarking your Restaurant Name and Brand would give you the exclusive right to use it and stop others from marketing identical or similar products under the same or a confusingly similar mark. So, for example, only one company can open a Shake Shack, a Taco Bell, or a Jimmy John’s.

Additionally, Nationwide trademark protection is great insurance against have being forced to rebrand.

These protections, and others, help restaurants franchise their brands.

5. What other parts of restaurant brand can you trademark?

Several parts of a restaurant brand are eligible for trademark protection. You can trademark your restaurant name, product names, a logo, and any slogan you use to promote your business. Whether you own a restaurant, a food truck, or an online food delivery service, these brand elements are the face of your brand should be protected.

Brand Names:

McDonald’s, Domino’s Pizza, Dairy Queen, Blue Apron

Product Names:

Big Mac (McDonald’s), Blizzard (Dairy Queen), $5 foot long (Subway)

Logos:

The golden arches (McDonald’s), the red, white and blue domino (Domino’s Pizza), the DQ logo (Dairy Queen) and the blue apron (Blue Apron)

Slogan:

I’m Loving It (McDonald’s), We have the meats (Arby’s), Eat Fresh (Subway)

6. What parts of a restaurant brand cannot be trademarked?

Not everything that makes up your restaurant brand can be trademarked. Recipes cannot be trademarked, although the names of the recipe might. Business models and operating procedures also cannot be trademarked.

7. When should you trademark your restaurant?

Most authorities agree that the best time to trademark a Restaurant Name and Brand is BEFORE opening.

We are one of the few countries that allow you to protect your restaurant’s trademarks before you begin using them. Filing for registration before opening is an opportunity to:

- reserve a name and avoid having to change your name later
- confirm that your name does not infringe on another restaurant with a registered trademark
- complete an important branding task before operations begin.

8. How do I trademark a restaurant name?

Here’s how to start the process to trademark a Restaurant Name and Brand:

Select a unique name and logo. Read more about how to pick a strong trademark here.
Check whether anyone else has registered or applied to register the name and logo
Collect the required information and decide on a trademarking strategy
Prepare and file your new application (correctly) with the U.S. Patent and Trademark Office, or “USPTO,” for short.
Navigate the USPTO application review process, which takes several months.
Use the correct trademark symbol with your channel name. Read more about trademark symbols here.

9. Can you copyright a restaurant name?

No. You cannot copyright a restaurant name. You can trademark it, however.

Copyrights protect creative works like books, films, or artwork, and prohibits copying without permission. Since restaurant names aren’t creative works, you don’t need to worry about knowing how to copyright your restaurant’s name. Instead, you need to register your trademark with the United States Patent and Trademark Office (USPTO) as soon as possible to set the table for success.

10. Do you trademark or copyright a restaurant name?

You trademark restaurant’s name. The name for your restaurant serves as a trademark, which identifies the source of a service, including restaurant services, and distinguishes them from those provided by others.

Take the Next Step and Legally

Own Your Trademark

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Trademark

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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

Trademarks and the Metaverse: The ULTIMATE GUIDE

January 12, 2022 by Michael Kondoudis

By Michael Kondoudis, Metaverse Metaverse Attorney

This is a COMPLETE guide to trademarks and the Metaverse.

Most business owners and entrepreneurs know the importance of trademarks. But how do you legally protect those trademarks in the Metaverse?

This guide has the answers.

So if you want to:

Understand the basics of the Metaverse
Why businesses need to prepare for the Metaverse
How to use the Metaverse for profit
How to prepare and safeguard your brand for the Metaverse
Learn about trademarking brands
Discover how to leverage trademarks in the Metaverse

Then this guide is for you.

Let’s get started.

CONTENTS

I. THE BASICS OF THE METAVERSE

II. HOW BUSINESSES CAN USE THE METAVERSE

III. HOW TO PROTECT YOUR BRAND IN THE METAVERSE

IV. HOW TO PREPARE FOR THE METAVERSE

PART I: THE BASICS OF THE METAVERSE

In this section, we’ll explore the Metaverse and what makes it so important to the future of business.

What does the word “metaverse” mean?

The term “metaverse” literally means “beyond the universe.”

What is the Metaverse?

At its most basic level, the Metaverse will be a virtual and immersive world that parallels our own. It will be inhabited by digital representations of people, places, and things, and users will be able to experience digital lives that mirror their real lives in many respects. Users will communicate, share, and work with others and interact with elements in the virtual world – just like we do in the physical world.

Features of the Metaverse

The potential of the Metaverse will only be limited by technology – for now. In the future, the only limits will be users’ imaginations. The primary features of the Metaverse ensure this limitless potential.

Some of the features of the Metaverse are:

1. Persistence: The Metaverse will always be “on.” It won’t be reset, rebooted, or unplugged. Users will enter and leave it at will, and content will always be available. This constant availability will provide a continuity that will enhance users’ experiences.

1. Immersion: Users in the Metaverse will experience a new level of immersive and interactive experiences on par with the real world. As VR and AR technologies improve, so too will users’ sensory experiences. There will be a time when the Metaverse will engage users’ senses as much as in the real world.

1. Decentralized: In contrast to today’s social media companies, no single entity or entities will have control over the Metaverse. It will be more like the Internet and less like social media platforms.

1. Virtual Marketplaces and Economies: The Metaverse will permit users to participate in virtual marketplaces – including those of ideas, culture, art, and business. These marketplaces will allow users to buy, sell, and share digital assets like NFTs, virtual real estate, event tickets, information, and virtual goods. This is the future importance of digital currencies.

1. Amplified social experiences: The Metaverse will empower users to build social links with users and AI entities. Through these links, users will share information, content, and ideas and “co-experience” virtual events.

1. Boundless opportunities: Because it will be virtual, the Metaverse will not suffer from the limitations and barriers of the real world. It will be an endless virtual space with extreme accessibility from anywhere at any time.

Why should businesses care about the Metaverse?

Businesses should care about the Metaverse because retail will be one of the largest sectors in it, with social experiences a close second.

Businesses should also care about the Metaverse because it will impact their marketing and branding. For example, information and analytics collected from the Metaverse can be leveraged to increase sales in the real world. Plus, the Metaverse will be a new market for products and services.

The Metaverse will impact marketing because it will be an opportunity (1) to reach customers in an entirely new dimension and (2) to collect consumer information based on how users behave and act in the Metaverse. These new connections and information can then be leveraged to increase sales and brand awareness in both the real world and the virtual world of the Metaverse.

Think about it. The Metaverse will be a world that exists in parallel to our own. It will be inhabited by users living second lives – wholly digital lives – that parallel their real lives. Users will interact with other users, engage in commerce, travel, learn, and consume content – just like in the real world. It will be an untapped market with digital users ready to buy your products and services.

The Metaverse will impact branding. As the Metaverse grows and matures, branding and advertising opportunities will increase. Examples of the opportunities that await in the multiverse include:

- virtual retail stores (signage and displays)
- virtual popups (special events to engage and network)
- virtual training/classes (branded content and sponsorships)
- metaverse events (concerts and performances)
- digital products (NFTs and virtual clothing for user avatars)
- product placements (branded products in games and virtual billboards).

Basically, anywhere we can use branding in the real world will have a digital partner in the Metaverse.

Who is trademarking brands for the Metaverse?

It seems that everyone is getting ready for the Metaverse. The number of brands applying to trademark their brands for Metaverse grows every month. Here are just a few of the first:

Footwear

• Nike

• Converse

Entertainment Brands

• Ticketmaster

• Elvis Presley Enterprises

Sports

• Jerry Rice

• Hendrick Motorsports

Toy Brands

• Hot Wheels

• Bazooka

Retail

• Walmart

• Saks

Publishing

• Sports Illustrated

• Vanity Fair

Do you need help with your trademark?

When can we expect to see the Metaverse?

Authorities estimate that it may not be until 2030 for Metaverse to really take off. Still, aspects of the Metaverse currently exist. Ultra-fast broadband speeds, virtual reality headsets, and persistent always-on online worlds are already up and running, even though they may not be accessible to all. Plus, forward-thinking companies are already preparing their brands for the Metaverse.

PART II: HOW BUSINESSES CAN USE THE METAVERSE

In this section, we’ll explore some of the ways businesses can use the Metaverse to increase revenue and expand brands.

The Metaverse will provide increasingly immersive experiences as it matures and evolves. But, in some ways, the Metaverse is already here, and forward-thinking companies are already offering more and more Metaverse-like experiences.

Examples of Metaverse-like experiences

The National Football League (NFL) has opened a virtual store in the online video gaming platform Roblox. The NFL’s virtual store sells virtual team jerseys and helmets to Roblox players.

• Nike has also opened a new world on the Roblox gaming platform. This digital realm, named Nikeland, offers Roblox users official digital Nike-branded clothing for their avatars, along with mini-games and other “co-experience” events.

• Gucci has turned to the Roblox gaming platform to host a virt100th-anniversary celebration event.

• Burberry has ventured into the Metaverse by collaborating with the video game Honor of Kings to place digital Burberry designs into the gameplay.

Top 7 ways a business can use the Metaverse

The opportunities that will be available in the Metaverse are seemingly infinite, and many haven’t even been conceived of – yet. Still, the Metaverse offers important opportunities for today and in the near future.

These are the top seven ways businesses can leverage the Metaverse:

1. Selling virtual goods – It is estimated that more than $100 billion was spent on virtual products in 2021. More importantly, this $100 billion reflects just a sample of the growing opportunity for businesses to generate revenue in the Metaverse.

2. Virtual Showrooms or vStores – vStores allow customers to take tours of showrooms and interact with all kinds of objects, including products. This ability to visualize and interact with products, such as furniture, cars, fashion, and NFT assets, can happen entirely in the Metaverse – without the burden of a brick-and-mortar footprint.

3. Product Sales Training – The Metaverse will offer “co-experience” events, including training and education seminars. Repetitive training, such as product demos and sales techniques, can be held in the Metaverse at almost no cost.

4. Customizers + Configurators – Because the Metaverse will be immersive, businesses will be able to show their customers “virtual demos” of customized products, such as furniture, automobiles, homes, and commercial spaces.

5. Reducing Returns and Higher Sustainability – With virtual tours and reveals, customers can better visualize products before buying them, which reduces returns and exchanges. Fewer returns lowers overhead and is good for the environment.

6. Lowered Research and Development Costs– Virtual prototypes in the Metaverse will reduce the need for physical prototypes and samples.

7. Advertising – The Metaverse will offer endless opportunities for brand placement in games, signage in virtual stores, and digital products.

PART III: HOW TO PROTECT YOUR BRAND IN THE METAVERSE

In this section, we’ll go over the basics of the trademarking process and how to trademark NFTs

How do you protect a brand in the Metaverse?

The best way to protect a brand in the Metaverse is to trademark the name, logo, and any phrase or slogan that you use to promote your virtual products and services. Trademarks protect brands, including brands in the Metaverse. Trademarking your brand’s name, logo, and phrase for virtual goods and services is the best way to protect it.

Can you legally protect your brand in the Metaverse?

Yes, you can legally protect the name and logo of your virtual products and services with a trademark. Trademarking your virtual product name is official confirmation that you legally own it.

How do you legally protect your brand in the Metaverse?

The most effective way to protect the name of your virtual product or service is to trademark it. Trademarking your virtual product name will protect it by giving you exclusive rights to use it and preventing others from using the same or similar name in the Metaverse.

Trademarks in the Metaverse = Protection for virtual goods and services

What exactly is a trademark?

A trademark is a distinctive word, symbol, or phrase that differentiates the source of goods (or services) from one enterprise from those of others. Trademarks represent brands and protect brands, including brands in the Metaverse. Buyers use trademarks to pick among brands of products and services.

What can you trademark for the Metaverse?

The most common Metaverse trademarks are words (names), phrases, logos, and designs.

Should you apply for a Metaverse trademark?

Yes, if you have a trademark, you should file for a Metaverse trademark. Filing for your trademark in the Metaverse right now is the best way to prevent anyone else from trademarking it for their Metaverse business. Plus, getting a Metaverse trademark ensures that your mark is protected in the virtual world. So, you should file for Metaverse trademarks.

How do trademarks protect brands in the Metaverse?

Trademarks protect a company’s identity and the reputation that it builds in its brand, including in the Metaverse. Also, trademarking your brand is a powerful way to identify and distinguish it from the competition, which:

- makes it easier and less expensive for customers to find your products

- reduces the cost of marketing

- builds your brand identity

Brand identity and distinction will be critical in the immersive world of the Metaverse.

Top three reasons to trademark a brand for the Metaverse

Trademarking your brand for the Metaverse will prevent anyone else from trademarking the brand and taking it from you.

1. It will prevent anyone else from registering the same or similar name for their brand in the Metaverse

2. It will increase customers confidence in your brand, which increases trust and value

3. It is a powerful tool to stop unauthorized use of your brand by copycats in the Metaverse

Where do you get a Metaverse trademark?

You get a Metaverse trademark from the U.S. Patent and Trademark Office (USPTO). To get a trademark for the Metaverse, you need to apply to the USPTO and then navigate an examination process. Metaverse trademarks are granted by the USPTO.

How to get trademark protection in the Metaverse?

Filing for a Metaverse trademark at the U.S. Patent and Trademark Office (USPTO) has four main steps:

1. Clearing the trademark through a professional trademark search,

2. Preparing and applying a strategically crafted trademark application,

3. Navigating the application examination process at the United States Patent and Trademark Office (USPTO), and

4. Properly using your trademark on your digital products and services.

When should you trademark your brand for the Metaverse?

Most authorities agree that in most situations, it is best to file new trademark applications early – even before a business begins selling or marketing in the Metaverse.

Firstly, the trademarking process can take up to 12 months in most cases. So, starting as early as possible will reduce unprotected sales in the Metaverse.

Secondly, filing early reduces the chance that another business has applied to trademark your brand for the Metaverse. Most businesses don’t know that every day of delay is a risk that someone else might apply to register a trademark similar to theirs. If that happens, the USPTO may refuse to register your Metaverse trademarks. Thousands of new applications are filed every day, so waiting for as little as a few weeks can become a risk.

If you have a trademark, you should file for a Metaverse trademark as soon as possible. Filing for your trademark in the Metaverse right now is the easiest way to avoid a costly legal fight over ownership of your trademark in the Metaverse. So, you should file for a Metaverse trademark right now.

What are some products to include in a trademark application for the Metaverse?

• virtual goods

• goods for use in online environments, virtual online environments, and extended reality virtual environments

• downloadable software for users to search, browse, view, and purchase virtual goods,

• retail store services featuring virtual goods

• entertainment services, namely, providing online, non-downloadable virtual goods

• virtual reality software for interactive entertainment and virtual reality gaming

• software for the creation, production, and modification of digital designs and characters, avatars, digital overlays, and skins

Do you need help with your trademark?

How can you check if a brand is trademarked for the Metaverse?

The best way to check whether a brand is trademarked for the Metaverse is to use the USPTO’s trademark registration database via the Trademark Electronic Search System (TESS).

In the BASIC WORD MARK SEARCH function, you can type a brand name and see the products and services for which it has been trademarked. Brands trademarked for products and services such as virtual goods, goods for use in online environments, retail store services featuring virtual goods, and software related to the sale of virtual goods or modifying digital goods.

5 Steps to Protect Your Brand in the Metaverse

1. Register your trademarks: Brand owners are strongly encouraged to register their trademark with the USPTO and foreign equivalents. In the United States, doing so creates a rebuttable presumption that the owner owns the exclusive right to use its trademark in connection with its goods or services and puts the owner in a much better position to enforce against any unauthorized use of its mark in either the virtual world or the real world.

2. Consider subscribing to a trademark watch service: A trademark owner can’t monitor and track every infringing use in the Metaverse. Trademark watch services allow the trademark owner to monitor relevant markets and Internet content for possible infringing activity. Consider designating outside counsel to review these reports as they come in. By working with a watch service, owners can be notified of infringing activity sooner rather than later and can take swift action as these issues arise.

3. Immediately notify platforms and infringers of infringing activity: When infringing activity is detected in the Metaverse, brand owners should report this infringement to the platform. Many of these entities do not want to be liable for any contributory infringement, so they have mechanisms in place to remove infringing content once they become aware of it.

4. Establish a metaverse presence: Finally, brand owners should consider establishing a metaverse presence of their own. Aside from the benefits that come with leveraging the Metaverse as an alternate means of reaching consumers and building brand awareness via a thriving and growing market, it also provides an opportunity to monitor activity, and it may even help thwart trademark infringement by bad-faith actors.

5. Use your trademarks correctly and with the correct trademark symbol: In the Metaverse, users will encounter your brand digitally, much as they do now on a website. Using a trademark symbol conditions customers to recognize your brand names and logos and to start associating them with your business. Read more about trademark symbols here.

PART IV: HOW TO PREPARE FOR THE METAVERSE

In this section, we’ll discuss a strategy that any business can follow to prepare for the Metaverse.

The Metaverse is coming, and it will offer tremendous business opportunities in the near future. The key is to prepare in advance so that you don’t lose your brand in the Metaverse and execute your marketing strategies effectively.

How can you prepare for the Metaverse?

Businesses can prepare for the Metaverse in many of the same ways that they prepare to sell their products and services in a new “real world” market. The Metaverse will be a new virtual market for your products and services. And, like any other new market, businesses need to consider how they present their brand and target their ideal customers.

4 ways a business can prepare for the Metaverse

If your company is developing a digital product or service, or one that can be sold or advertised in the Metaverse, then you need to prepare for the Metaverse. Here are four ways t get ready:

1. Identifying a target customer base for your product

2. Develop a strategy to promote and advertise your brand and products in the multiverse

3. Build a presence in the multiverse by opening a virtual retail shop

4. Ensure that your trademarks are registered for digital and virtual reality products. This is the key to protecting a brand in the Metaverse

TAKE THE NEXT STEP

Take the next step toward LEGALLY owning your brand for the Metaverse!

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your trademarks for use in the Metaverse, 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

NFTs and Trademarks: THE ULTIMATE GUIDE

December 20, 2021 by Michael Kondoudis

By Michael Kondoudis, NFT Trademark Attorney

This is the ultimate guide to NFTs and trademarks.

Interest in non-fungible tokens (NFTs) is increasing. So too are the number of companies that have filed trademark applications for their NFT brands. In 2020, the U.S. Patent and Trademark Office received just 20 trademark applications for NFT brands. In 2021, that number was over 1400! NFTs are not just for fine art and collectibles anymore.

So, if you’re ready to learn about NFTs, trademarks, and how to protect NFT brands, this guide is for you.

CONTENTS

PART I: THE BASICS OF NFTs AND TRADEMARKS

What NFTs are and what they do
Examples and uses of NFTs
NFT trademarks

PART II: INTELLECTUAL PROPERTY AND NFTs

How Trademarks apply to NFTs
How Patents apply to NFTs
How Copyrights apply to NFTs

PART III: PROTECTING NFTs WITH TRADEMARKS

How to protect an NFT
Why trademarking an NFT is a good idea
Which parts of an NFT brand can be trademarked

PART IV: HOW TO TRADEMARK NFTs

When to trademark an NFT
Where to trademark an NFT
The NFT trademarking process
The common trademark classes for NFTs

PART 5: FREQUENTLY ASKED QUESTIONS

1. THE BASICS OF NFTs + TRADEMARKS

What does NFT mean?

NFT stands for “non-fungible token.”

Non-fungible means, more or less, that something is not interchangeable. Instead, it is one-of-a-kind, individual, and not replaceable. So, for example, a Picasso painting is “non-fungible” because it is one-of-a-kind and irreplaceable. In contrast, a $1 bill is fungible because someone can swap one for another that is essentially the same.

What is a Non-Fungible Token?

A non-fungible token or NFT is a digital asset that can be used to represent unique, one-of-a-kind assets – usually crypto-properties. An NFT can technically contain anything digital, including drawings, animated GIFs, songs, or items in video games. NFTs can also represent a wide range of property assets that exist in the real world property such as a piece of art, a song, videos, collectibles, and even real estate.

NFTs cannot be copied because their digital ownership is tracked with blockchain technology, and it is one-of-a-kind uniqueness that makes an NFT valuable.

Purchasing an NFT is akin to buying an original Jackson Pollack painting. While prints may be available, only you own the original.

What do NFTs do?

NFTs allow you to buy and sell ownership of unique digital and physical items and keep track of who owns them using the blockchain. Blockchain records cannot be forged because they are maintained by thousands of computers worldwide.

NFTs can have only one owner at a time, and blockchain technology secures their ownership information. This prevents the easy copying of digital assets, which historically reduced the market for digital assets. In this way, NFTs ensure the authenticity of unique properties, especially collectible digital properties (crypto-collectibles).

Now, because NFTs can ensure the uniqueness and ownership of digital assets, the markets for digital assets are skyrocketing.

Do you need help with your trademark?

How is an NFT different from a cryptocurrency?

An NFT is built on the same technology as cryptocurrencies, but they differ in one crucial aspect – interchangeability. Cryptocurrencies are “fungible,” meaning they are interchangeable. In contrast, an NFT cannot be exchanged or swapped.

What are some examples of NFTs?

Theoretically, NFTs can be used for any property that is (1) unique and (2) needs provable ownership. So, NFTs can represent almost any physical or virtual property, including:

- Digital artwork
- A limited run of sneakers
- An essay
- Digital collectibles
- Domain names
- Tickets
- Debts
- Parcels of real estate

How are companies using NFTs?

The most immediate uses for NFTS include brand control, increased revenue, brand awareness, and enhancing trust/authenticity.

Authentication: Many brands leverage blockchain NFT technology to create an authentication system for their customers. For example, luxury brands are issuing serial numbers for their products and using NFTs to provide authentication services. Trust in the authenticity of high-end items protects the market for those items and their marketability.

Brand Awareness: More and more companies and organizations are creating brand awareness by licensing their brands through the release of NFT packages. NFTs for bespoke footwear, clothing, and artwork are increasingly sold at auctions.

New streams of revenue: More and more companies and organizations are creating new revenue channels by licensing their brands and authenticating digital products by NFT packages. Music bands, for example, may license their branding or images to release exclusive digital content for their fans.

Brand Protection: Only the owners of trademarks can use them, this includes the owners of NFT trademarks. When you trademark the name of your NFT, you are the only one who can use that name for NFTs and crypto-properties.

What is a trademark?

A trademark is a badge of origin that distinguishes the source of goods (or services) from one enterprise from those of others. The most common trademarks for NFTs are names and logos.

Trademarks prevent consumer confusion by ensuring that competitors cannot use the same or similar name or symbol. This exclusivity is particularly valuable when it comes to NFTs because their value is based on authenticity and trust.

A Federal trademark is an enhanced trademark that has been certified by the U.S. government. It comes with exclusive nationwide legal rights.

What do trademarks protect?

Trademarks protect brands, including NFT brands and properties represented by NFTs.

Can an NFT be trademarked?

Yes. NFTs can be trademarked. Trademarking an NFT is the best way to protect your NFT brand. NFTs can definitely be trademarked.

What is an NFT trademark?

An NFT trademark is a trademark for a non-fungible token that represents digital media, virtual goods, digital collectibles, and other crypto-assets that can be bought, sold, exchanged, and transacted using blockchain technology. Examples of a trademark for an NFT would be a footwear brand trademarking its name for:

• Downloadable digital media namely, digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs)

• Provision of an online marketplace and registry for buyers and sellers of digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs)

• Digital assets and digital collectibles sold as non-fungible tokens (NFTs)

See U.S. trademark application no. 97212947 filed by Crocs, Inc.

2. INTELLECTUAL PROPERTY AND NFTs

NFTs are a new technology and are the cutting edge of digital and e-commerce. So, it should be no surprise then that NFTs and digital commerce raise many intellectual property (IP) law questions. The creation, monetizing, promotion, selling, trading, transferring, and storage of NFTs come with important trademark, patent, and copyright implications.

How does Trademark apply to NFTs?

To be clear, trademark protection definitely apples to an NFT. Trademarks protect brands, including NFT brands. Trademarking an NFT ensures that no one else can use the same or similar name or logo for their NFT. Trademarking an NFT ensures that no one else can use your name or logo, which keeps them distinctive. Trademark protection is a must for any brand owner who wants to protect their NFTs. That’s how trademarks apply to NFTs.

Trademark = protection for names and designs for your NFT

How do you get the most trademark protection for an NFT?

To get the most trademark protection for an NFT, a brand owner should review its existing trademarks and, if needed, apply for additional trademarks for digital assets, crypto-assets, and virtual goods authenticated by NFTs. This is how to get the most protection for the name of an NFT.

How do Patents apply to NFTs?

Patent protection applies to NFTs. Patents protect inventions, including crypto and blockchain-related inventions. A patent makes it illegal for anyone else to use your invention. Examples of crypto and blockchain inventions include methods of authenticating and transferring NFTs and new ways to mint cryptocurrencies. That’s how patents apply to NFTs.

Blockchain patents are increasing in number and value, and the U.S. Patent and Trademark Office is granting more and more of them.

Patent = protection for crypto and blockchain inventions

How does Copyright apply to NFTs?

Copyright applies to NFTs. Copyrights protect from copying creative works and software, including NFTs and the assets that they authenticate. For example, a one-of-a-kind collectible, authenticated using blockchain technology, can be copyrighted.

Copyright = protection from copying of your digital/crypto-asset

3. PROTECTING NFTs WITH TRADEMARKS

How do you protect an NFT?

The best way to protect an NFT is to trademark the name and logo you use to brand the NFT. Trademarks protect brands, including NFT brands. Trademarking your NFT name is the best way to protect it.

• Can you legally protect your NFT name?

Yes, you can legally protect the name of your NFT with a trademark. Trademarking your NFT name is official confirmation that you legally own it. Confirming the legal ownership of the name of your NFT enhances customer trust in the authenticity of the asset represented by your NFT.

• How do you protect your NFT name?

The most effective way to protect the name of your NFT is to trademark it. Trademarking your non-fungible token name will protect it by giving you exclusive rights to your token name and preventing others from using the same or similar name for their NFTs.

• Many brand owners wonder if they can trademark the name of their NFT.

To be clear, the answer is YES. You can trademark an NFT name, and an increasing number of businesses have applied to trademark their non-fungible token names! In fact, the U.S. Patent and Trademark Office is seeing a surge in trademark applications for NFTs.

- - 2020 – 20 applications
  - 2021 – 1400+ applications

Trademarking the name of your NFT is the most effective way to protect it and the brand identity you’re building in your brand of properties represented by your non-fungible tokens.

Why should you trademark your NFT name?

Yes. NFTs ensure the authenticity of a unique item. But, to be of value, buyers must have faith in the NFT. That is where trademarks come in.

Trademarking the name of your NFT (or logo) will:

1. prevent anyone else from registering the same or similar name for their NFT and taking the name from you
2. increase customers confidence in your NFT brand, which increases NFT trust and value
3. protect against unauthorized use of your NFT brand by copycats, which could undermine trust in the authenticity of your NFTs

Trademarking your NFT brand prevents anyone else from trademarking the brand and taking it from you.

Remember: The value of an NFT is in the trust that it represents authentic ownership of a unique item. Trademarks promote consumer confidence by preventing copycats and confusion from using similar names. In short, trademarks let customers know that they are buying a genuine article when they buy your NFT.

Example

A toy company wants to sell in-game items, such as skins, avatars, and powers. To help increase sales, the company decides to authenticate these digital assets with NFTs using their brand. As a result, customers are more inclined to buy NFT secured in-game items. This is what Mattel Inc. is planning on doing with its HOT WHEELS NFT GARAGE trademark (U.S. Trademark Application No. 90767267).

NFT trademarks also protect against the unauthorized use of brand names and logos for someone else’s NFT. This keeps your NFT brand unique and makes your NFT item more valuable.

EXAMPLE

A luxury retailer wants to sell high-end digital products. To ensure that they can maintain premium pricing for their physical inventory and retail store operations, the retailer decides to authenticate its digital products with NFTs. This is what Saks LLC is planning on doing with its SAKS trademark (U.S. Trademark Application No. 90789965).

Trademarking an NFT name and logo also protects against the use of your brand by the competition. This protection reduces confusion and dilution of the uniqueness of a brand.

What parts of an NFT can you trademark?

You can trademark the name and logo you use to promote your NFT or the property represented by your NFT.

You can also trademark services related to NFTs. Some examples include:

financial services such as non-fungible token trading
issuance of digital tokens
providing online non-downloadable virtual goods, namely, digital art, photographs, videos, or audio recordings featuring
creation of online retail stores for others to create hosted crypto collectible and blockchain-based non-fungible token stores

Do you need help with your trademark?

Examples of NFT Trademarks

The surge in NFT trademark applications is fueled primarily by small businesses and individuals. Still, big brands are increasingly taking note and are applying to trademark their brands for NFTs. Naturally, businesses are curious about what an NFT trademark looks like. Here is list of recent applications for an NFT trademark:

1. Bazooka (U.S. TM App No. 97072828)
2. Brookstone (U.S. TM App No. 97130320)
3. Clinique (U.S. TM App No. 97115394)
4. Converse (U.S. TM App No. 97107367)
5. Entertainment Weekly (U.S. TM App No. 90751600)
6. Fanatics (U.S. TM App No. 97156019)
7. Garbage Pail Kids (U.S. TM App No. 97072832)
8. Hot Wheels NFT Garage (U.S. TM App No. 90767267)
9. Jay-Z (U.S. TM App No. 97118641)
10. John Wick (U.S. TM App No. 90688332)
11. Live Nation (U.S. TM App No. 97089071)
12. Saks (U.S. TM App No. 90789965)
13. Stratocaster (U.S. TM App No. 90626105)
14. Ticketmaster (U.S. TM App No. 97089225)
15. UFC (U.S. TM App No. 90668412)
16. Warhol (U.S. TM App No. 90602664)

If you want to know about the latest NFT trademark filings at the USPTO, we invite you to visit our US NFT Trademark Application Information Hub, where we break down the latest NFT trademark applications by month, industry, and major brands.

• Updated Daily •

Who is trademarking NFTs?

A wide range of companies in many industries are trademarking their NFTS. Companies that have filed trademark applications for NFTs include Nike, Puma, Panera, McDonald’s, Willaims-Sonoma, and Pottery Barn. Personalities who have filed trademark applications for NFTs include Kobe Bryant, Shaquille Oneal, Muhammad Ali, and Jay-Z. Here is a list:

Cosmetics and Fashion

- Clinique Laboratories, LLC
- Converse Inc.
- Estee Lauder Cosmetics Ltd.
- Nike Inc.

Toys and Collectables

- Mattel Inc.
- The Topps Company, Inc.
- The Upper Deck Company

Entertainment

- Legend Pictures
- Park Avenue Entertainment LLC
- Entertainment Weekly Inc.
- Lion’s Gate
- Kiss Catalog, Ltd.
- Live Nation Worldwide, Inc.
- Fender Musical Instruments Corporation
- SC Branding LLC (Jay-Z)

4. HOW TO TRADEMARK NFTs

Should you trademark your NFT?

Yes, you should trademark the name of your NFT. Competition in the NFT space is fierce. Trademarking your NFT will ensure that your NFT name and logo:

are available for your exclusive use do not infringe anyone else’s trademarks, which saves you legal headaches
stay unique so that they stand out in the marketplace over time, which keeps your NFT brand recognizable and more trusted
stay legally yours so that you never have to rebrand, so you can invest and promote your NFT with confidence.

These benefits protect your profits.

Top reasons why you should trademark the name of your NFT

Trademarking your NFT ensures that your NFT name and logo do not conflict with any existing registrations. Trademarking involves research to make sure that no one else has trademarks that are the same or similar to your NFT name and logo. Plus, the USPTO only registers trademarks that do not conflict with existing registrations. So, the trademarking process confirms that your NFT name and logo: (1) do not infringe any existing registered trademarks for NFT and (2) are available for your exclusive use

Trademarking your NFT will prevent anyone else from trademarking the same or similar name for their NFT. As a general rule, only one person can own a trademark in an industry, including NFTs. So, by trademarking the name of your NFT, you ensure that no one else can trademark it and take it from you. This makes trademarking great insurance against ever having to rebrand.

Trademarking your NFT will increase its value and the value of the property it represents. Trademarks ensure authenticity, which increases trust in your brand.

Trademarking your NFT name and logo gives you legal permission to use the ® trademark symbol with them. The ® symbol is “public notice” that the name and logo for your NFT are protected under federal law. This enhances your brand credibility and warns competitors to stay clear of your marks, both of which promote trust in the authenticity of your NFT.

Remember: Once you have registered your trademark, it will be officially yours and no one else can use it (or anything similar) without your permission.

How do you trademark an NFT name or property?

You trademark the name of your NFT or crypto-property by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking with the USPTO name is a legal process that usually takes about 12 months. So, the sooner you start trademarking your NFT and crypto trademarks name, the better.

Here’s how to start the process to trademark the name of an NFT or crypto-property:

Select a unique name and logo. Read more about how to pick a strong trademark here.
Search the USPTO trademark database to confirm that no one has registered or applied to register the name and logo
Collect the required information and decide on a trademarking strategy
Prepare and file your new application (correctly) with the U.S. Patent and Trademark Office, or “USPTO,” for short.
Navigate the USPTO application review process, which takes several months.
Use the correct trademark symbol. Read more about trademark symbols here.

When should you trademark an NFT name?

Most experts agree that you should trademark your NFT brand sooner rather than later. So, if you are serious about using NFTs to make something marketable, you should trademark the NFT name as soon as possible.

Is it too late to trademark your NFT?

No, it is not too late to trademark an NFT and protect your NFT brand. Non-fungible tokens (NFTs) and NFT brands are growing in popularity. As a result, the U.S. Patent and Trademark Office (USPTO) is receiving an increasing number of new trademarks for NFT brands and virtual goods authenticated by NFTs. Still, far less than .5% of all trademark applications are for NFTs and NFT brands.

Which international classes should you include in your NFT trademark application?

The U.S. Patent and Trademark Office registers trademarks for various NFT-related products and services. Applicants should consider including the following classes in their applications to register an NFT trademark:

- International Class 009 (downloadable media, computer software)
- International Class 035 (business services)
- International Class 036 (financial, banking, and real estate)
- International Class 041 (education and entertainment)
- International Class 042 (scientific and technical services)

Do you need help with your trademark?

What are some examples of NFT-related products and services that can be trademarked?

International Class 009

- Fungible and non-fungible token-based goods for use online and in online virtual worlds
- Downloadable electronic data files featuring artwork, text, images, audio, video, and non-fungible tokens
- Digital media, namely, digital collectibles, digital tokens, and non-fungible tokens (NFTs)
- Downloadable multimedia files authenticated by non-fungible tokens (NFTs)
- Digital tokens; Non-fungible tokens; Digital tokens based on blockchain technology
- Non-fungible tokens used with blockchain technology; non-fungible tokens used with blockchain technology to represent a collectible item

International Class 035

- Provision of an online marketplace for buyers and sellers of NFTs of digital art, music, sports, collectibles, and documents
- Provision of an online marketplace for buyers and sellers of digital properties authenticated by non-fungible tokens (NFTs)
- Providing an online marketplace for the peer-to-peer exchange of personal or digital property and Non-Fungible Tokens (NFT’s)

International Class 036

- Financial services such as non-fungible token trading; Issuance of digital tokens
- Issuance of tokens of value; Issuance of tokens of value, namely, digital tokens for use by members of an online community via a global computer network

International Class 041

- Providing online non-downloadable virtual goods; Providing online non-downloadable virtual goods authenticated by NFTs
- The provision of downloadable virtual goods authenticated by blockchain technology

International Class 042

- Creation of online retail stores for others to create hosted crypto collectible and blockchain-based non-fungible token stores
- Creation of online retail stores for others in the nature of web-based service that allows users to create hosted cryptocurrency and blockchain-based non-fungible token stores

5. FREQUENTLY ASKED QUESTIONS

1. When can you use the registered trademark ® symbol with an NFT?

Once you have a trademark registration from the U.S. Patent and Trademark Office, you can start using the registered trademark symbol ® with your NFT trademark. Read more about trademark symbols here.

2. How do you get a trademark registration?

You get a trademark registration by submitting an application to the U.S. Patent and Trademark Office (sometimes called the “USPTO”). The USPTO is an agency of the federal government, and it administers trademark registrations.

3. How important is it to trademark your NFT?

Very. According to the USPTO, there has been a substantial surge in trademark filings for NFT trademarks. In 2021 alone, over 1400 applications have been filed. This surge represents increased competition in a soon-to-be crowded space.

4. Where do NFTs come from?

NFTs are created on any blockchain that supports smart contract programming. The Ethereum blockchain is a prime example because it supports cryptocurrencies like bitcoin and NFTs. Other blockchain options include:

• Cosmos
• EOS
• Flow by Dapper Labs
• Polkadot
• Tezos
• Tron

Once your NFTs are created and ready for sale, you will need to submit them to a marketplace. Popular marketplaces for Ethereum include OpenSea, Rarible, and Mintable.

5. Can NFTs be trademarked?

Yes. NFTs can be trademarked, and the number of trademark filings for NFT brands at the USPTO is increasing.

6. How do you get an NFT trademark?

You get an NFT trademark by applying to the U.S. Patent and Trademark and successfully navigating the trademark examination process.

TAKE THE NEXT STEP

Take the next step toward LEGALLY owning your NFT brand?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your NFT trademarks, 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 Use Trademark Symbols: The ULTIMATE Guide

November 17, 2021 by Michael Kondoudis

This is my complete guide to how to use symbols for trademarks.

Over my 20+ years of practicing trademark law, misuse of trademark symbols is one of the most consistent trademark mistakes I’ve come across. I hope to change that.

In this all-new guide, you’ll learn:

• What the three trademark symbols TM, SM, ® mean

• Whether you are required to use a trademark symbol

• Where you put a trademark symbol

• When to use a trademark symbol with your mark

• Why it’s a good idea to use a trademark symbol

Plus, along the way, we’ll answer frequently asked questions (FAQs) about using trademark symbols.

So if you need to quickly learn how to use trademark symbols, read on – this guide is for you.

Let’s get started.

PART I: Basics of Trademark Symbols

• In this part, I’ll briefly discuss the basics of trademarks and review the three trademark symbols.

• In parts II and III, we’ll cover how to use trademark symbols and where to put them.

• But, for now, let’s review the basics of trademark symbols.

What is a trademark?

Trademarks are badges of origin. They distinguish your products or services from the competition. They can take many forms, including names, phrases, symbols, and logos.

Some of the most famous trademarks are:

- GOOGLE®
- Nike’s JUST DO IT®
- the letters IBM®
- the Apple Logo

What is a symbol for a trademark?

A symbol for a trademark (a trademark symbol) is a visual cue that the name, logo, phrase, or character next to it is a trademark.

There are three trademark symbols in the US: Circle R (®), TM, and SM. These symbols provide “trademark notice” that identifies your trademark and that you claim rights in it.

The answer to the question “What is the proper trademark symbol?” depends on whether you are selling a good or a service and the status of a trademark application with the US Patent and Trademark Office. Read about how to pick the right trademark symbol for your brand here.

What do trademark symbols look like?

The three symbols are:

• the capital letter R, which is usually shown in a circle (®);

• the capital letters TM, which are usually shown in superscript (™); and

• the capital letters SM, which are usually shown in superscript (℠).

What do the trademark symbols mean?

The TM and SM symbols indicate that your trademark is not yet registered with the U.S. Patent and Trademark Office. In contrast, the ® symbol means that your trademark is registered. The ® is only for trademarks that have been federally registered with the U.S. government. This means that you have filed an application with the U.S. Patent and Trademark Office and have received a trademark registration certificate.

Let’s explore each of the symbols in more detail.

TM symbol meaning

TM stands for trademark. Trademarks are marks used with goods, such as cell phones, clothing, software, and juice. More specifically, the letters TM mean that a name, word, logo, or phrase is an unregistered trademark. If you are selling goods, you should use the TM trademark symbol to identify your unregistered trademark, including names, logos, and phrases.

Who can use the TM symbol? Any trademark owner may use the TM symbol at any time and even if the USPTO refuses an application to register the mark.

When can you use TM? The answer is: you can use the TM symbol immediately – as soon as you start using a trademark to brand a product. This means you can use the TM symbol the first time you use your trademark. You do not have to wait to use the TM symbol.

SM symbol meaning

SM stands for service mark. Service marks are marks used with services, such as legal, dental, restaurant, and entertainment services. More specifically, the letters SM mean that a name, word, logo, or phrase is an unregistered service mark. If you are offering services, you should use the SM trademark symbol to identify your unregistered service mark, including names, logos, and phrases.

Who can use the SM symbol? Any trademark owner may use the TM symbol at any time and even if the USPTO refuses an application to register the mark.

When can you use TM? The answer is: you can use the SM symbol immediately – as soon as you start using a service mark to brand a product. This means you can use the SM symbol the first time you use your service mark. You do not have to wait to use the SM symbol.

® or “R” symbol meaning

® (or “R” in a circle) stands for registered trademark. Registered trademarks are enhanced trademarks that come with increased protections and rights. More specifically, the registered trademark symbol means that a name, word, logo, or phrase has been registered with the US Patent and Trademark Office.

When can you use the registered trademark “R” symbol? Use of the registered trademark symbol “R” is reserved for Federal trademarks only and can only be used after you have a Federal trademark registration. This means you’ve filed an application and received a registration certificate from the US government.

What are some trademark symbol examples?

Examples of the registered trademark symbol for names and phrases

• Twitter®

• America runs on Dunkin’®

• Pepsi®

Examples of the registered trademark symbol for logos

Do you have to use a Trademark Symbol?

No, there is no legal requirement to use a Trademark Symbol. The use of Trademark Symbols is entirely optional. You do not need to use a Trademark Symbol, and not using a Trademark Symbol will not invalidate your trademark rights. However, there are many good reasons to use Trademark Symbols.

Why should you use a Trademark Symbol?

Every time you use your trademark, you have the option to use a symbol with it. There is no requirement to use Trademark Symbols. Still, it’s a good idea to use Trademark Symbols for several reasons.

1. Using Trademark Symbols conditions consumers to start looking at your trademark as your brand. This is a meaningful way to introduce your brand to consumers.

2. Using Trademark Symbols lets the competition know you’re claiming the trademark as yours. This is an effective way to ward off potential copying by competitors.

3. If you do not use a trademark symbol, you can lose out on certain money damages like lost profits.

If you have a Federal trademark registration for your brand, you should definitely use a Trademark Symbol because it lets consumers and competitors alike know that you have a Federal trademark, which is the highest level of brand protection.

The advantages of trademark symbols are explained in my Easy Guide to Trademark Symbols.

PART II: Where to Put Trademark Symbols

• In this part, we’ll discuss where to put a trademark symbol together with a trademark.

• In part III, we’ll cover when to use trademark symbols in various media.

• But, for now, let’s go over where to put trademark symbols with word marks and logos or designs – with some examples.

Where to put a trademark symbol?

You may put a trademark symbol anywhere around your trademark. There is no one right place. Instead, there is some flexibility. You may place TM, SM, or ® anywhere around your trademark. Still, it is customary to place a trademark symbol after the trademark and on the right side.

Where is the best place to put a trademark symbol?

The best place to put a trademark symbol is close to your mark, regardless of whether your trademark is a name, word, phrase, or logo.

Where exactly does a trademark symbol go?

For names, words, and phrases: The most common place to put a trademark symbol for a name, word, or phrase is in the upper-right corner. In fact, in nearly all cases, trademark symbols (whether it is TM, SM, or ® ) are placed at the top right corner of a trademark. Also, it is common to use superscript for a trademark symbol.

For logos and designs: The most common place to put a trademark symbol for a logo or design is at the logo is in the lower right corner.

Where do you put a trademark symbol on a logo?

For logos, it is best to place the trademark symbol on the right side of the logo. It is best to locate the TM, SM, or ® directly after the mark and near the bottom of the logo. Alternatively, you can put the TM, SM, or ® in the logo.

Where do you put a trademark symbol with a name or phrase?

For word marks, including names and slogans or catchphrases, it is customary to place the trademark symbol on the right side of the mark. Also, it is best to locate the TM, SM, or ® directly after the mark and at the upper right in superscript.

How should you use a Trademark Symbol in writing?

If your mark is a company or product name, you can put the Trademark Symbol immediately after the name. Here, representing the symbol in superscript is very common because it looks like the symbol is at the upper right of the name.

If your trademark is a logo, you can put the Trademark Symbol in the upper right corner of the logo or at the upper right side of the logo.

How should you use a Trademark Symbol on a product?

If your mark is a company or product name, you can put the Trademark Symbol immediately after the name. Here, representing the symbol in superscript is very common because it locates the symbol at the upper right of the name.

If your trademark is a logo, you can put the Trademark Symbol in the logo or at the upper right side of the logo.

To summarize the correct placement of trademark symbols

Proper trademark symbol usage involves two main rules.

First, pick the correct trademark symbol.

Second, put the symbol in the right place so that it (1) identifies your trademark and (2) notifies the public that you claim ownership of your trademark.

Location matters for trademark symbols.

TM symbol placement

You put the TM symbol to the right side of your trademark and either in the:

• upper-right corner if your trademark is a word; or

• lower-right corner if your trademark is a logo.

R symbol placement

You put the R symbol to the right side of your trademark and either in the:

• upper-right corner if your trademark is a word; or

• lower-right corner if your trademark is a logo.

PART III: When to Use a Trademark Symbol

In this part, we’ll explore when to use a trademark symbol with your trademark and how often you need to use a symbol.

When to use a trademark symbol?

You should use a trademark symbol when you want to let consumers and competitors know that you claim ownership of your mark. They provide public notice or “trademark notice” and serve as visual cues that help identify your trademarks. Also, you can use a trademark symbol every time you use your trademark.

You may use a trademark symbol anywhere around your trademark, although most trademark owners put the symbol in a superscript or subscript to the right of their trademark.

You can use “TM” for goods or “SM” for services. After you have registered your trademark, you can use an ® with the trademark (regardless of whether you sell goods or services).

Do you have to use a trademark symbol every time you use a trademark?

No. You are not required to use a trademark symbol every time you use a trademark. Instead, you can usually focus on using the symbol the first time the mark appears, in the most prominent place the mark is used (e.g., in a heading), or both. Repeated use of trademark symbols can become cluttered. A Trademark Symbol does not have to be used every time a trademark is used.

How often should you use a Trademark Symbol?

As a general rule, it is best to use a Trademark Symbol in the first prominent mention of a trademark in the text of a web page or written documents like articles, press releases, promotional materials, and the like. It is not necessary to use a Trademark Symbol every time used every time the mark appears. This avoids distraction and clutter.

When exactly should you use a Trademark Symbol?

You should use a Trademark Symbol at the first or most prominent mention of a trademark. Again, it is not necessary to use a Trademark Symbol every time used every time you use your trademark. One good, conspicuous use of the proper Trademark Symbol is usually all that is required.

Use of a trademark symbol in text

1. In print materials (press releases, articles, and company reports)

For shorter printed materials (closer to 1-2 pages), using a trademark symbol with the first instance of the mark is sufficient. For extended printed materials, it is typically advisable to use the trademark symbol at least once per page in which the mark appears. Also, if there is an opportunity to use the trademark symbol with the trademark in a header or footer, all the better.

1. In websites and mobile apps

On the web, it is typically advisable to use a trademark symbol in the header or footer on every page that relates to your product or service.

1. On social media

The guidelines for using trademark symbols on social media are usually more relaxed. Most businesses only use a trademark symbol in their username/bio, cover image, or thumbnail.

Ready to take the next step toward LEGALLY owning your brand?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting the trademarks that represent 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

How to Trademark A Clothing Brand – 5 Things You Must Know

November 9, 2021 by Michael Kondoudis

As a fashion designer, you are an artist. But as the owner of a Clothing Brand, you’re an entrepreneur. And, as any entrepreneur will tell you, it takes time, skill, bravery, and some luck to succeed. You’ll need to put hours and hours into designing, creating, and branding your products. You’ll also need to protect that investment from copycats that imitate your products and steal away customers.

But how do you safeguard your clothing brand and all of the hard work that went into it? How do you protect a Clothing Brand?

That’s where trademarks come in.

In this article, we will explore 5 important considerations about trademarking a Clothing Brand by answering several of the most often asked – and important – questions about how to trademark a Clothing Brand, including:

• Why should you trademark your Clothing Brand trademarks?

• What parts of your Clothing Brand should you trademark?

• What types of names can you trademark for a Clothing Brand?

• When should you trademark your Clothing Brand?

• Should you work with a trademark attorney to trademark your Clothing Brand?

Why should you trademark your Clothing Brand trademarks?

Trademarks protect a clothing company’s identity, and the goodwill that it has built up because you’ve delivered quality products under its brand. That is what makes brand identity so important in the clothing business.

The trademarks that represent your Clothing Brand are valuable in many ways. For example, trademarking your brand is a powerful way to identify and distinguish it from the competition, which:

- makes it easier and less expensive to identify your clothing products

- lowers the cost of marketing

- establishes your brand identity

Additionally, protecting a trademark keeps it strong, and strong trademarks:

- deter copycats, imitators, and counterfeiters, which protects your hard work and creativity

- protect the reputation and goodwill you’ll build in your brand

- encourage your customers to pay a premium for your products because they are confident that they are buying your genuine products

- prevent competitors from trademarking a similar name, logo, or phrase

The clothing business is competitive. Without strong trademarks, you risk confused customers buying garments from another company. You’ll lose sales, and other businesses will benefit from the goodwill you’ve built.

If you want to protect your efforts and investments in the design, marketing, and sales of your garments, then you’ll want to trademark your Clothing Brand.

How do you protect trademarks for your Clothing Brand?

The best way to protect the trademarks for a Clothing Brand is to get Federal trademark registrations for them. Federally registered trademarks come with the strongest and most useful protections.

Why is trademark registration the best way to protect a Clothing Brand?

EVERY successful clothing label is based on at least one registered trademark. Why? Because registered trademarks are powerful legal tools that protect brands, including Clothing Brands.

Registration is official confirmation that you own your brand. So, registering your Clothing Brand trademarks with the USPTO is the best insurance against ever having to rebrand. If you don’t register your trademarks, a competitor could, and THEY will own the exclusive right to use the brand nationally. You’ll have to rebrand or face expensive legal work.

Also, trademark registration comes with the exclusive right to use your name + logo + phrase. This means YOU are the only one who can use them to represent your brand and your registration blocks other clothing companies from registering any trademarks similar to yours.

If you don’t do this to your Clothing Brand trademarks, then anyone can use them. You won’t be able to stop competitors from using your brand.

What parts of your Clothing Brand should you trademark?

Almost every aspect of a brand, including a Clothing Brand, is eligible for trademarking. The most popular trademarks are names, logos, and phrases. For Clothing Brands, examples of trademarks include:

• Logos (like the Chanel “Double C” symbol and Nike’s “Air Jordan Silhouette”)

• Names of clothing lines (Wrangler® jeans and Champion’s “Power Blend” hoodies)

• Names of designers (Calvin Klein® and Dior®)

• Company names (Abercrombie & Fitch® and Reebok®)

In most cases, it is a good idea to start by trademarking the name or logo that identifies your clothing line.

If you market your clothing line under a name, consider trademarking the “plain text” version of the name. For example, Coca-Cola is often presented in red script but has been trademarked as COCA-COLA (no color or script). This approach covers ALL colors and fonts – that’s broad and flexible protection.

If you market your clothing line with a logo, consider trademarking a black and white version of the logo instead of specific colors. This approach covers all color combinations, which is far broader and more practical than trademarking the specific colors in your logo.

After the name and logo, consider any phrase that you use with your Clothing Brand. For example, Levi’s “Quality never goes out of style,” and Nike’s famous “Just Do It” are two phrases that are as effective as the company names themselves. These are often overlooked valuable brand assets.

What types of names can you trademark for a Clothing Brand?

Clothing Brand names are as varied as the styles themselves. Still, when it comes to trademarking Clothing Brand names, certain rules about trademarks apply. The best trademarks, including Clothing Brand trademark, are

- unlike anyone else’s,
- do not just describe your garments, and
- aren’t the names of entire types/classes/categories of clothing (i.e., generic).

When it comes to trademarks, the name of the game is to be unique. So, trademarks, including Clothing Brand names, need to be different from everyone else in the market. This is why it’s important to choose a unique name that can’t be confused with another clothing brand. If your name is not unique, your brand won’t stand out.

Also, your name should not be descriptive of your garments. For example, terms like “strong,” “blue,” and “rugged” for blue jeans are descriptive because they convey aspects of the garment.

Relatedly, avoid generic terms like “jeans,” shirts, “childrenswear,” and “company.” These terms are generic because they describe entire types, categories, or classes of garments and do not reflect any brand. Consequently, the U.S. Patent and Trademark Office (USPTO) will not register them.

Learn more about how to pick a strong trademark.

When should you trademark your Clothing Brand?

You should register Clothing Brand trademarks as soon as you have decided on a name, logo, or phrase, according to most authorities. There are important reasons why.

Firstly, if there are obstacles to registration, it is better to discover them early. In the U.S., Clothing Brand trademarks are reviewed by the U.S. Patent and Trademark Office (USPTO) to make sure that they meet all of the legal requirements for registration. One of the most important requirements is that a Clothing Brand trademark is not too similar to another registered trademark. If the USPTO finds a registered trademark similar to yours, you may not be able to register the trademark for your Clothing Brand.

Secondly, it can take up to a year to complete the registration process and starting sooner means that you can avoid selling clothing under a trademark that does not have the protections that come with Federal trademark registration (or at least minimize the time you sell without them).

How long does it take to register a Clothing Brand trademark?

The trademarking process timeline can vary depending on how quickly you are able to gather the information needed to apply to register your trademark, how complex the trademark is, and whether or not the trademark examiner finds issues that must be addressed. Generally, however, the trademarking process can take about 10-12 months.

Registering trademarks, including Clothing Brand trademarks, isn’t quick. It takes time to make it through all the stages of review. So, it’s important to get it right from the start.

Should I file my trademark application before or after I use my mark in commerce?

Many clothing brand owners struggle over whether to file their applications as soon as possible or wait until they begin selling garments. The truth is that there is no “right” answer to this question. It is a judgment call. That being said, waiting to file trademark applications for Clothing Brands has some risks.

The main benefit of waiting until after you start selling clothing is that you can submit evidence of use with your new application. The USPTO requires proof that you are using your trademarks on clothing, and that you are using them properly. These requirements can be satisfied at the time of filing if you are selling clothing.

But, what many clothing brand owners don’t know is every day of delay is a risk that someone else might apply to register a trademark that is similar to theirs. If that happens, the USPTO may refuse to register their Clothing Brand trademarks. Thousands of new applications are filed every day so waiting for a little as a few weeks can become a risk.

So, most authorities agree that in most situations, it is safer to file new trademark applications early.

Should you work with a trademark attorney to trademark your Clothing Brand?

Yes. According to the Wall Street Journal, working with a trademark attorney improves your chances of approval by over 50%. Plus, you’ll be more likely to secure more protection and not overpay Official USPTO fees.

Here are just a few reasons why:

It’s a Federal legal proceeding

When you apply for a Federal trademark, you start a Federal legal proceeding – and it can get complex in a hurry. The many decisions you will need to make are interrelated, and some wrong choices can sink your application from the start – without you even knowing it. It is very easy to submit a fatally defective application and not know it.

80% of all applications face some initial refusal

The USPTO refuses most trademark applications, initially. This is because trademark applications are only approved after the USPTO determines that all of the many legal and procedural requirements are met. Trying to respond to the USPTO on your own fails more often than it succeeds. Plus, it is very easy to make a problem much worse if you don’t know exactly what you are doing. That’s where an experienced trademark attorney really helps.

The USPTO will not give you legal advice

The U.S. Patent and Trademark Office (USPTO) will not answer your legal questions or give you legal advice. The USPTO forbids it. So, if you have a legal question, or face a legal rejection, you’ll be on your own, unless you have a trademark attorney. Worse, you will still be required to meet every rule and requirement, even if you don’t know or understand them. The USPTO cannot (and will not) give you a break.

It’s easy to overpay non-refundable USPTO filing fees

Every trademark application requires a filing fee, which is calculated based on the number of “classes” of products and services in the application. These filing fees are not refundable and can amount to $1000 or more – depending on the products and services listed in your application. An experienced trademark attorney can make sure that you only pay for approved classes and that you avoid paying for those the Examiner rejects.

Also, while some companies try to make it seem simple, trademarking your Clothing Brand is actually complicated. The U.S. Patent and Trademark Office recommends that you hire an attorney who specializes in trademarks. While it may be tempting to trademark your Clothing Brand yourself, trademark registrations are complex and difficult for non-lawyers. Working with a trademark attorney can shorten the time it takes to register your Clothing Brand trademarks.

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 Register Clothing Brand Name Trademarks – THE ULTIMATE GUIDE

November 9, 2021 by Michael Kondoudis

When it comes to clothing, registered brands matter.

By Michael Kondoudis, Clothing Brand Trademark Attorney

In this post, I’ll show you EXACTLY how to register clothing brand name trademarks so that you can safeguard your clothing brand, maximize your clothing brand’s value, and protect yourself from infringement.

In fact, this is the information that we use to register clothing brand name trademarks for our clients.

So, if you want to learn how to register a clothing brand name (or logo), this new guide is for you.

CONTENTS

This information applies equally to other kinds of fashion brands, including Jewelry Brands and Fashion Accessories.

Let’s get started!

Registering trademarks for clothing brands can be challenging, but it’s worth the effort. Brands matter in the clothing industry, and registering the trademarks that represent your Clothing Brand is the best way to protect it. That’s why anyone starting a new clothing line needs to understand the basics of trademarks and trademark registration.

The process of registering trademarks for Clothing Brands (names, logos, and phrases) can get complicated. It’s a Federal legal proceeding that involves a Federal agency. Even most attorneys avoid them!

But don’t worry!

This article will walk you through how to register clothing brand name trademarks so that you can safeguard your clothing label, maximize your clothing brand’s value, and protect yourself from infringement. Along the way, we’ll answer important questions, including:

This information applies equally to other kinds of fashion brands, including Jewelry Brands and Fashion Accessories.

Let’s get started!

1. THE BASICS OF TRADEMARKS FOR CLOTHING BRANDS

What is a Trademark?

A trademark is a badge of origin that identifies your garments and distinguishes them from the competition. The most common trademarks are words (names), phrases, logos, and some designs.

The primary reason for trademarks is to prevent consumer confusion by making sure that competitors can’t use your name, logo, or phrase to market their products.

What is a Registered Trademark?

A Federal trademark is a supercharged trademark that has been certified by the U.S. government. It comes with enhanced legal protections such as the national legal right to use the mark. Plus, a registered trademark will prevent anyone else from registering anything similar for your industry.

What Does It Mean to Register a Trademark?

Trademark registration is the process of registering your trademarks with the U.S. Patent and Trademark Office in Washington DC. Registered trademarks get more protections than unregistered marks and legal rights that extend nationwide.

What Parts of a Clothing Brand Can be Registered as a Trademark?

Clothing brands, fashion lines, and designers all have trademarks. These are just a few examples of clothing brand trademarks that can be registered with the U.S. Patent and Trademark Office:

- The name of your company is a trademark.
- The logo you use to identify and promote your clothing garments is a trademark.
- The name of your product, if it is distinctive, is a trademark.
- The slogan that you use to promote your clothing brand is a trademark.
- The name of your store is a trademark.

Examples of What You Can You Register as a Clothing Brand Name

The most common clothing brand trademarks are:

- Company Names: LULULEMON and PRADA
- Product Names: 501 Jeans and AIR JORDAN
- Store Names: URBAN OUTFITTERS and OLD NAVY
- Designer Names: VERSACE and RALPH LAUREN
- Slogans: “JUST DO IT” and “QUALITY NEVER GOES OUT OF STYLE”

In most cases, names and logos are the cornerstones of clothing brands.

2. ALL ABOUT TRADEMARK REGISTRATIONS FOR CLOTHING BRANDS

Who Should Register Their Clothing Brand Name Trademarks?

Anyone who is serious about building and protecting a distinctive clothing brand should register a clothing brand name and logo.

Registering clothing brand names (or logos) can be challenging, but it’s worth the effort. Brands matter in the clothing industry, and registering the trademarks that represent your Clothing Brand is the best way to protect it. That’s why anyone starting a new clothing line needs to understand the basics of trademarks and trademark registration.

Remember: People have relationships with brands, not products.

Do Clothing Brands and Designers Need Trademarks?

Yes, clothing brands need trademarks. Whether you’re starting a new clothing line or opening a new clothing store, you need to register your trademark with the United States Patent and Trademark Office (USPTO). You can ensure that your clothing brand name, logo, slogan, and brand stay yours with a trademark registration. Without a trademark registration, anyone can copy your clothing brand name and concept. These are just some of the reasons you need to register your clothing brand names and logos.

Why You Should Register Clothing Brand Name Trademarks

You should register your clothing brand name because trademark registration it is the highest level of protection you can get for any trademark, including trademarks for clothing.

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

Second, you should register a clothing brand name because it will help keep anyone else from using your name for their clothing line. This ensures that your clothing brand name remains distinctive. If someone else starts selling clothing with the same name as yours, they can steal sales from you.

Third, you should register a clothing brand name because it will prevent anyone else from registering it (or anything similar) for their clothing line. If someone else trademarks your clothing brand name, they will own it, and you will need to rebrand.

Fourth, you should register a clothing brand name because it will make it easier and less expensive to enforce your trademark rights against copycats.

Fifth, you should register a clothing brand because it will confirm that your mark does not infringe on anyone else’s trademark. The U.S. Patent and Trademark Office investigates only registers clothing brand names that do not infringe. So, when you register your trademark, you get the peace of mind that you do not infringe anyone else’s trademarks.

Do You Have to Register a Clothing Brand Name Trademark?

No, you do not have to register a clothing brand name trademark, but there are many advantages to registering it. Plus, there are many risks if you do not register a clothing brand trademark. For example, if you don’t register your clothing brand trademark, you won’t have exclusive rights to it. Other clothing companies would be free to use your clothing brand trademarks for their clothing lines. Also, the cost of registering a clothing brand trademark is far less than the losses you might incur if you do not register. So, while you do not have to register a clothing brand trademark, registering is a good idea.

Do You Need to Register Your Clothing Brand Name?

Yes, you need to register your clothing brand name. The best way to protect a Clothing Brand is to trademark the name, logo, and any phrase that you use to promote or identify your clothing and clothing line. A trademark registration for your Clothing Brand is LEGAL confirmation that you own your brand. No one can take it from you. Plus:

- - Registration protects your good name and reputation and prevents counterfeiting.
  - Registration increases the value of your Clothing Brand if you ever decide to sell it
  - Registration comes with the right to use your trademarks nationwide.
  - Registration prevents registration of similar marks by competitors
  - Registration allows you to use the ® symbol

Registering your trademarks is the best way to ensure that you’ll never have to rebrand and that you’ll be able to stop imitations. Plus, you’ll prevent competitors from registering any marks even similar to yours. Simply put – trademarking your Clothing Brand is the best way to protect it.

How Long Does It Take to Register a Clothing Brand Name?

The process to register a clothing brand name takes over a year – typically 13-18 months. Remember, you’re working with the Federal Government!

When Should You Register Your Clothing Brand Name Trademark?

Most experts agree that you should register a clothing brand name as early as possible because the process takes over a year. So, the earlier you start, the sooner you’ll have confirmation that you own your brand and that it is protected. Plus, if you encounter any obstacles to registration, you will have more time to address them.

Also, you do not need to wait until you start using your clothing brand name as your trademark. The U.S. Patent and Trademark Office will let you start trademarking a brand for clothing as soon as you decide to use it. In fact, about 50% of all trademark applicants take advantage of these provisions.

Starting early will help you:

- Identify potential roadblocks early. The USPTO reviews every trademark application. The earlier you file, the faster you’ll receive word about possible conflicts with any registered trademarks or other brand issues need to be addressed.

- Discourage competitors from adopting similar trademarks. The USPTO adds every new application to the Federal trademark database, where it will be found in trademark searches. More importantly, from the very day your application is filed, it will start blocking your competitors’ applications for similar trademarks!

- Start the clock towards “incontestability” of your clothing brand trademarks. After five years of use, your Federal trademarks can only be challenged in very limited ways, which makes your trademark protections even stronger. S

Where Do You Register Clothing Brand Name Trademarks?

You register a clothing brand name by filing an application with the U.S. Patent and Trademark Office (USPTO). The USPTO accepts applications to register clothing brand names online via its Trademark Electronic Application System (TEAS).

3. HOW TO REGISTER CLOTHING BRAND NAME TRADEMARKS

How Do You Register a Clothing Brand Name?

You register a clothing brand name by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking a clothing brand name is a legal process that usually takes about 12 months. So, the sooner you start registering your clothing brand name, the better.

Here’s how to register a clothing brand name trademark:

1. Pick a unique clothing brand name and logo. Read more about how to pick a strong trademark here.

2. Check whether your clothing brand name and logo are available. Read more about how to search trademarks to find out if anyone else has registered or applied to register the 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 your clothing brand name in commerce.

7. Use the correct trademark symbol with your game name and logo. Read more about trademark symbols here.

1. Pick a unique name (and logo)

One of the most important factors in registering a clothing brand name is to start with a unique and protectable name (i.e., one that is trademarkable). This name should distinguish your garments, store, or clothing related services from other others on the market. It should also be easy for customers to remember and pronounce.

Beware: Trademarks are not created equal. There are different kinds, and some are more effective and easier to protect than others.

To ensure uniqueness, avoid names that are too similar to existing trademarks. (More about that in step #2)

To ensure protectability, the best option is to invent a word or phrase or get creative with spellings. Another option is to use words that are unrelated to your garments.

A third option if you’re looking to register a clothing brand name, is to brainstorm terms and phrases that suggest features, aspects, ingredients, or results of your garments.

Avoid using descriptive or generic names or terms. They are difficult to trademark and tend not to be unique by their very nature. (think: “warm” for a jacket or “light” for camping gear).

If you aren’t sure whether your mark is protectable (i.e., strong), you may be better off consulting an experienced trademark attorney.

2. A professional trademark search

The process begins with a comprehensive trademark search to find out if a competitor has already registered your trademark or a mark substantially similar, which may prevent you from registering your trademark.

Here, you can benefit from the help of an experienced trademark attorney. Trademarks are compared using a 12-factor legal test. Plus, search engines and basic trademark search tools (like the one provided by the United States Patent and Trademark Office) aren’t likely to turn up similar names, alternate spellings, and other instances that could cause the USPTO to reject your trademark application.

After your trademark search comes back all clear (i.e., no conflicts), you are ready to move to the second phase – preparing the application. A lot of Internet resources say you can file your application yourself – and that’s true. But, the savvy business person should stop and ask why they are taking that risk.

3. Collect Information and Decide on a Trademarking Strategy

The preparation of a new trademark application begins by making some tactical decisions about the protection for which you will want to apply.

When you apply for a federal registration for your product name, you start a federal legal proceeding – and it can get complex in a hurry. The Federal trademarking process involves making dozens of legal decisions and judgment calls. Plus, these decisions and judgment calls are interrelated, and some wrong choices can sink your application from the start – without you even knowing it. So, the most successful applicants start the application process with a strategy.

For starters, you’ll need to decide:

- what is the best format for your mark – is a composite mark better than standard characters? Will you need a “drawing”?;
- which products/services you should include in your application and which ones should be excluded; and
- what is the correct filing basis for their application?

If you don’t understand the legal consequences of each of these options, you’re very likely to get one or more of them wrong, which will impact your brand protection.

Also, every application must be filed in the name of the owner of the mark. The owner may be an individual, a corporation, a partnership, or an LLC. The right choice depends on several factors. If you get this wrong, you’ll need to refile the application and start again.

Further, you’ll also be required to swear to the truth of specific statements about the choices in your application. If you get any of them wrong, your application may be unenforceable.

These are just some of the reasons why DIY applications are 50% less likely to succeed at the USPTO.

4. Preparing and filing a trademark application

After your searches have confirmed that your trademark is unique, it’s time to file your trademark application online through the Trademark Electronic Application System (TEAS). If you want to learn more about TEAS, we have a guide here.

A trademark application is not a DIY project. It’s much more than just filling out online forms. That is the easiest part of the process. The Federal trademarking process involves making dozens of legal decisions and judgment calls – and you’re not likely to make all of the right choices.

If you file your trademark application yourself, you’ll probably make a mistake. Most mistakes cannot be fixed. The USPTO’s rules are specific, unforgiving, and severely limit how you can change your application after it’s filed. So, it has to be right from the start.

Learn why working with an attorney can increase your chances of registration by 50%

Here are just a few of the strategic decisions that go into a trademark application for a clothing brand:

- - Who is the correct applicant?
  - Which filing basis is best for your application?
  - Should you claim specific color(s) or styles for your trademark (hint: you don’t always have to)?
  - How will you show your use of your trademark in a non-decorative/non-ornamental manner (more on that below)?

After your application is successfully submitted to the U.S. Patent and Trademark Office, you are ready to move onto the next phase – examination.

5. Navigating the examination process at the USPTO

After submitting the application, it is important to check the status every few months using the USPTO’s Trademark Status and Document Retrieval (TSDR) system using the serial number provided to you. Failing to do so might cause you to miss an important deadline.

Successfully navigating the examination phase comes down to monitoring your application and showing the U.S. Patent and Trademark Office that:

- - your application meets the technical rules and requirements
  - your trademark is not similar to anyone else’s so that your trademark is not “likely to be confused” with any other registered marks
  - your trademark is “distinctive”
  - you are correctly using your trademark to brand garments

Meeting the technical rules and requirements

Examination starts with the USPTO assigning a Trademark Examining Attorney to your application. That Trademark Examining Attorney will first review your application to make sure that it meets all of the many rules and legal requirements.

No similarity to other trademarks

The Examiner will search for similar existing registrations to determine if any are so close to your trademark that consumer confusion is likely to result. Your trademark is not “likely to be confused” with the marks of other registrations or pending applications. This is one major reason why a professional trademark search before filing is so important.

Distinctiveness = Trademark Strength

Next, your trademark has to be able to indicate a brand. Only “distinctive” trademarks are brand indicators. The USPTO grades trademark distinctiveness on a sliding scale. The more distinctive your trademark, the stronger it will be, and the easier it will be to register.

Read more about trademark distinctiveness here.

An experienced trademark attorney will be better than you at correctly judging the distinctiveness of your trademark and its eligibility for trademark protection.

6. Proper use in commerce

The USPTO requires that a trademark owner use their marks “in commerce” and as a brand before it will grant you a federal trademark registration. But, the use of a trademark for clothing or jewelry is not always easy to sort out.

Here, it is important to understand that not every use of a name, logo, or slogan is “used as a trademark.” Too often, companies make the mistake of using a logo, for example, as ornamentation and not in a way that indicates a source of a garment.

The USPTO has specific guidelines for determining which uses of a trademark on clothing indicate a brand and which uses are just decorative or “ornamental.”

Which Trademark Classes Should You Register Clothing Brand Name In?

Most applications to register clothing brand name trademarks include classes 025 and 035. Some applications also include class 040.

The U.S. Patent and Trademark Office (“USPTO”) classifies clothing and apparel in Class 025, which is often abbreviated as “IC025.”

Trademark class 025 covers clothing, headwear, footwear, and apparel. If you have a clothing brand or fashion line, then you’ll want a class 025 trademark.

Additionally, the USPTO classifies retail stores and online retail stores in Class 035, which is often abbreviated as “IC035.”

Trademark class 035 covers advertising and business services. If you are going to sell your clothing, apparel, headwear, or footwear through your own store, then you’ll want a class 035 trademark.

Still further, the USPTO classifies tailoring, alterations, and dressmaking in Class 040, which is often abbreviated as “IC040.”

Trademark class 040 mainly includes services not included in other classes.

What is an Acceptable Specimen of Use for a Clothing Brand or Clothing Line?

Using trademarks on clothing is both technical and a bit complex. There are some general rules, however, to ensure that you can show the USPTO proper usage of your trademark on clothing. Some examples are:

- - Including your trademark on a hangtag
  - Including your trademark on a hem tag inside of the collar
  - Adhering a sticker with the trademark to the garment
  - Using packaging with the trademark on it

How Do You Check If a Clothing Brand Name is Already Registered?

Start with searching the U.S. Patent and Trademark Office’s (USPTO) trademark database to see if anyone else has registered a similar trademark in the hobby and games market.

To run a USPTO trademark search, use the USPTO TESS search engine available on the USPTO website at www.uspto.gov.

Enter your trademark into the search field to search the USPTO’s 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 for any trademarks that are close to yours using variations of your trademark (e.g., different spellings, abbreviations, and plurals).

Beware: These searches aren’t as straightforward as inputting your product name and hitting search. Exact and similar trademarks used by other businesses are relevant to the Federal registration of your trademark. So, too, are misspellings, similar-sounding words and spellings, and foreign translations.

For all of these reasons (and others), it’s usually best to have an attorney run your trademark search.

Do you need to hire an attorney to register a clothing brand name?

The short answer is no. You are not required to hire an attorney to help you. The better answer is that you should strongly consider it because an experienced trademark attorney will make the process go faster and easier. Plus, you’ll get a better result. These, by the way, are the reasons the USPTO recommends you work with a trademark attorney.

Should You Hire a Trademark Attorney to Register Your Clothing Brand Name?

Working with an experienced trademark attorney often makes the difference between success and failure when it comes to trademark registration. Studies of USPTO data show that applicants who work with a trademark attorney are 50% more likely to register their product names. That makes hiring a trademark attorney an excellent investment, regardless of whether you have previously trademarked a name or this is your first time going through the registration process to trademark a name.

Why?

Trademark attorneys are skilled in navigating the trademarking process, a federal legal proceeding involving an agency of the Federal government. Trademarking a product name is complex and requires a working knowledge of federal trademark law and the U.S. Patent and Trademark Office’s rules and regulations. Trademark lawyers understand the process, the pitfalls, and strategies that can help register your product name. Also, a trademark attorney can (1) help decide what to search for and (2) correctly interpret your search results. Trademarks do not need to be identical to conflict!

Every application starts a Federal legal proceeding involving countless U.S. Patent and Trademark Office rules and regulations. These rules and regulations impact EVERY aspect of a new Federal trademark application. And, you’ll be required to comply with them even if you don’t know or understand them.

Also, the application system uses trademark jargon and “terms of art,” which are words that have specific meanings only in the world of trademarks.

The USPTO recommends hiring a trademark attorney!

The U.S. Patent and Trademark Office recommends applicants work with trademark attorneys:

“we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you throughout the application process.”

www.uspto.gov

There are several reasons why the U.S. Patent and Trademark Office (USPTO) recommends hiring a private attorney. First, an attorney is familiar with the USPTO’s procedures and can ensure that the application is filed correctly. Second, an attorney can help search for existing trademarks to avoid potential conflicts. Third, if there are any objections to the application, an attorney can represent the applicant in proceedings before the USPTO.

Beware: Not all trademark applications result in trademark registrations. The USPTO severely limits the changes you can make to an application after it is filed. So, mistakes during submission can quickly sink an application.

How To Protect a Clothing Brand Name

A unique product name is a valuable asset. Think about it. There is something about CHICKEN MCNUGGETS, a CHEVY CORVETTE, or a SONY PS5, for example. Product names matter. Here’s how to protect them.

1. Register your clothing brand name trademarks: Trademarking clothing brand names leads to legal ownership and brand security. Plus, a trademark owner is in a much better position to enforce trademark rights.

2. Consider subscribing to a trademark watch service: A trademark owner can’t monitor and track every infringing use. Trademark watch services allow the trademark owner to monitor relevant markets and Internet content for possible infringing activity. Consider designating outside counsel to review these reports as they come in. By working with a watch service, owners can be notified of infringing activity sooner rather than later and can take swift action as these issues arise.

3. Immediately notify infringers of infringing activity: When infringing activity is detected, brand owners should report this infringement to the infringer and the platform/outlet where the infringement took place. Many of these entities do not want to be liable for any contributory infringement, so they have mechanisms in place to remove infringing content once they become aware of it.

4. Use your trademarks correctly and with the correct trademark symbol: Using a trademark symbol conditions customers to recognize your brand names and logos and to start associating them with your clothing brand.

TAKE THE NEXT STEP

Take the next step toward LEGALLY owning your clothing brand?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your Clothing 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).

How Long Does It Take to Get a Trademark?

Some Good News

How long does a trademark take?

How long does it take to get a trademark approved?

The Trademark Timeline

Trademark Process

Step 1: Trademark Search

Step 2: Application is Filed

Step 3: USPTO review of the application

Step 4: Responding to the USPTO

Step 5: The trademark application is published by the USPTO

Step 6: The trademark application is granted

What is a typical trademark process timeline?

Trademark Process (Infographic)

When should you start your trademark application?

What happens after your file a trademark application?

Step 1. Review by a USPTO examining attorney

Step 2. Publication in the USPTO Official Gazette

Step 3. Registration

Why does a trademark take so long?

What are some of the reasons a trademark application can be delayed?

Office Action Delays: 2-6 months

Opposition Delays : 1-12 months

Statement of Use Delays: 6 months or more

Are There Ways to Speed Up the Trademark Process?

What is the best way to speed up a trademark?

What are five ways a trademark attorney can help speed up approval of your trademark application?

How We Secure Trademarks for Our Clients

Ready to legally own your trademark?

> HOW TO PROTECT GAMES

> ABOUT GAME TRADEMARKS

> ABOUT GAME COPYRIGHTS

> PROTECTING GAME NAMES

> HOW TO TRADEMARK GAMES

> CONSIDERATIONS FOR BOARD GAMES

> SEARCHING GAME TRADEMARKS

> WORKING WITH A TRADEMARK ATTORNEY

> COPYRIGHTING A GAME

> FREQUENTLY ASKED QUESTIONS

How Do You Protect A Game From Copying?

What is the Difference Between Trademarks and Copyrights?

What Is A Game Trademark?

Which Parts Of A Game Can You Trademark?

Examples of Game Trademarks

Video Game Names

Company Names

Board Game Names

Video Game Names

Company Names

Board Game Names

What Is A Game Copyright?

Which Parts Of A Game Can You Copyright?

How to Protect a Game Name

Can you trademark the name of a video game?

Can you trademark the name of a board game?

Can you trademark a card game?

Many game developers wonder if they can trademark the names of their games.

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

Do I Have To Trademark My Game Name?

Do You Need to Trademark a Game Name?

Why Should You Trademark A Game Name?

Top Reasons to Trademark a Game Name

1. Avoid conflicts with other game trademarks

2. Legal ownership and exclusive use.

3. Protect against copycats

4. Easier enforcement

5. Brand expansion – Merchandising

6. Make your brand stand out.

How To Trademark A Game Name

When Should You Trademark A Game Name?

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

Top Tips to Choose Great Title Names for Games

Can You Trademark a Board Game?

Trademarking Board Game Names

Trademarking Board Game Logos

Trademarking Board Game Slogans and Catchphrases

Trademarking Other Aspects of Board Games

Should I Trademark the Name of My Board Game?