Trademarks + The Law Archives - Page 4 of 8

How to Handle Trademark Infringement

August 10, 2022 by Michael Kondoudis

Your brand is WHO you are, WHAT you do, and WHY you do it. It’s how consumers will first encounter your business. It’s the common thread throughout your marketing. Your website, business cards, and invoices all reflect it. That’s why brands are important.

Trademarks (name + logo + slogan) represent brands. Federal trademarks protect brands. If you discover that another company is infringing your trademark, you can and should take action to enforce your rights.

How should you handle trademark infringement?

1. Learn What You Can About Them

The first thing to do is to learn about them. Visit their website and social media pages. Grab screenshots. Take pictures of their products or advertisements.

You’ll want to find out:

What they sell
Where they sell it
When they first used the brand
Whether they have a Federal trademark

2. Keep it Off Social Media

You don’t want to post about it on social media. It can get you into legal trouble and won’t help.

We’ve seen defamation lawsuits that started when one company posted an Instagram story about another company stealing their brand. Handle it offline – away from your customers.

Trademark infringement is a complicated Federal legal matter. We can help.

3. Ask Yourself: Are They Too Close?

You’ll need to weigh whether they are using a trademark that is legally too close to yours. This test can get complex. Still, they’re probably too similar if they meet these three conditions.

You’ll want to be broad about what sounds and looks similar. For example, if the brands share a keyword, they may be too similar. Words like “Inc.” “The” or “And” won’t make a difference. You can ignore them.

You’ll also want to consider what the brands mean. If the brands allude to related feelings or even geographic locations, they may be too similar. The use of another language won’t make a difference. In the US, hello and “hola,” for example, are treated as the same.

You’ll want to be broad about what is a similar product or service. They don’t need to be the same. Even complementary products and services can be “similar” for trademark infringement.

For example, shirts and bags could be too similar because many stores sell both.

If their products and services can be sold in the same way that you sell yours, then they need to stay further away from your trademarks.

4. Know Your Trademark Rights

A (Federal) trademark gives you the exclusive right to use your name + logo + slogan. This exclusive right extends to all 50 States.

This exclusive right extends to all trademarks that are “confusingly similar.” If (1) you have a Federal trademark, (2) the new brand is similar to (or the same as) your trademark, and (3) they started their business after you, then you can take steps to stop them. Keep reading to see what to do next.

If you don’t have a Federal trademark, you can’t stop them yet. You may still be able to trademark the brand and stop these copycats. Consider talking with an experienced trademark lawyer.

5. Get Legal Help to Handle Trademark Infringement

If you decide that someone is using a trademark that is too close to yours, contact a trademark lawyer to help you work through your many options.

Most trademark-infringement enforcement strategies start with sending a cease and desist letter addressed to the trademark infringer demanding that they stop infringement. Many times, however, other options are preferable. These include applying for a Federal trademark, sending a reservation of rights letter, or continued monitoring.

In the US, you are responsible for enforcing/protecting your trademark property rights. You can lose your trademark rights if you do not enforce them.

Trademark enforcement is not a DIY project. It involves Federal Statutes, legal analyses, and strategy. Also, you may inadvertently say something that can be used against you.

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

Trademark Renewal: Keeping Your Trademark Alive

August 10, 2022 by Michael Kondoudis

Congratulations! You’re the proud owner of a (Federal) trademark! You made a smart business decision to secure the trademark that represents your brand. Now it is time to learn about trademark renewal.

You now have the exclusive right to use it for the products and services that you sell. This means you’re the only one who can use it to represent your brand.

You don’t have to worry about copycats or rebranding. Plus, you have a leg up when it comes to legally protecting your trademarks.

Here is the really good news. A properly maintained Federal trademark may last forever – if you use it and keep it in good standing. If you don’t stay on top of your trademark renewal, someone else can take your trademark.

Here’s what you need to know.

Start Using the Trademark Symbol

You should add the ® symbol to the upper right corner of your mark wherever it is used. This includes on social media and especially your website.

The symbol lets the world know that your brand is protected nationally by Federal law.

It also makes it easier to show that someone intentionally copied your mark.

You should not use any trademark with your corporate identity.

Example: Microsoft Corporation is a corporation in the State of Washington, but Microsoft® is a federally registered brand of software, computer hardware, and cloud services.

Use Your Mark

If you use your trademark to brand a product, then it must appear on the product (e.g., tags or labels), the product packaging, or on a display for the product.

If you use your mark to brand a service, then your mark must be used in the sale or advertising of the service (e.g., a website).

Be Consistent in How You Use It

You’ll need to continue using your trademarks in the exact same way. That means the same exact words, colors, spacing, and punctuation. You’ll also need to use it on the same products or services.

Any alteration in how you use a trademark could hurt your trademark rights.

Keep Using It

Trademark rights come from use in the marketplace. You need to use your trademark to brand the products or services that you sell. Otherwise, you risk losing it.

Also, you need to use your trademark to renew it (see below).

Look for Copycats

As a trademark owner, you need to find and stop copycats. Otherwise, you could lose your trademark rights.

While the U.S. Patent and Trademark Office will prevent others from registering similar marks, it does not get involved with enforcement.

You’ll need to search for similar brands selling similar products or services. The best way to do this is with Internet searches. Some trademark owners set up “Google Alerts” to automate this process.

If you do see a similar brand, for similar products or services, you’ll want to have a trademark law firm prepare and send a trademark cease + desist letter.

Renew on Time

Trademarks may never expire – if you “check-in” with U.S. Patent and Trademark Office at specific times to let them know that you are still using your trademark.

These dates for trademark renewal are listed on your registration certificate and they’re vitally important.

If the documents are not filed by the due dates, your registration will be canceled and cannot be revived or reinstated.

@ Five years

- You’ll need to file a Declaration of Continued Use. This states that you’re still using your mark. You’ll need to do this to continue your trademark rights.
- Also, you may want to file a Declaration of Incontestability if you have used your mark continuously and consistently.
- Incontestability means that your brand is strong and easier to legally protect. It also makes it harder for people to challenge your trademark.

@ Ten years

- You’ll need to file a Declaration of Continued of Use. Again, this states that you’re still using your mark.
- You’ll also need to file an Application for a Renewal.
- This is required to continue using your trademark.

@ Every Ten years thereafter

- You’ll need to file both a Declaration of Use + an Application for Renewal.

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 an Image – AN EASY GUIDE

August 10, 2022 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademarking an image or picture.

If you want to learn how to trademark an image or picture then read on – this guide is for you.

Let’s get started.

CONTENTS

This article explores issues that trademark owners need to know, including:

> I. THE BASICS OF TRADEMARKS

> II. IMAGE TRADEMARKS

> III. TRADEMARKING IMAGES

> IV. TRADEMARKING PICTURES

> V. WORKING WITH THE U.S. PATENT AND TRADEMARK OFFICE

> VI. TOP REASONS TO TRADEMARK IMAGES AND PICTURES

> VII. FREQUENTLY ASKED QUESTIONS

I. TRADEMARK BASICS

What is a Trademark?

A trademark is a signal to consumers that distinguishes a company’s goods and/or services from the competition. Trademarks protect brands. This, in turn, reduces consumer confusion and encourages consistent quality.

Trademarks offer national protection from imitation by copycats.

Company names, logos, catchphrases, and product names can be trademarks. The most popular types of trademarks are:

names
logos
phrases
characters

Can You Trademark an Image?

Yes, you can trademark an image when you use it in your branding. Images can be trademarked. So, if you are using an image to tell customers that a product or service comes exclusively from you, you can trademark the image. Trademarking an image is the best way to protect it for your brand.

The answer to the question “can you trademark an image?” is yes!

Can You Trademark a Picture?

Yes, you can trademark a picture when you use it as a brand. Pictures can be trademarked. So, if you are using a picture to tell customers that a product or service comes exclusively from you, you can trademark the picture. Trademarking a picture is the best way to protect it for your brand.

The answer to the question “can you trademark a picture?” is yes!

II. IMAGE TRADEMARKS

What is an Image Trademark?

An image trademark is a trademark for a graphic or illustration that a company or business uses in its branding. The most common image trademarks are likenesses, characters, and logos.

III. TRADEMARKING IMAGES

Can You Register an Image as a Trademark?

Yes, you can register an image as a trademark by applying to the U.S. Patent and Trademark Office (USPTO). The USPTO accepts applications for image trademarks that represent brands. So, the USPTO allows you to trademark an image if it’s used in your branding. This can be a valuable asset for your business, helping to protect your brand identity.

Do You Need to Trademark an Image?

Yes. If you are investing in a brand and using an image to represent the brand, you should trademark the image by registering it with the U.S. Patent and Trademark Office (USPTO).

Trademarks protect brands and the names, logos, and images that represent brands.

How to Trademark an Image

Trademarking an image that represents your company, product, or service is the best way to protect it – and your brand. Knowing how to secure an image trademark is important. Here’s how to trademark an image in six steps:

1. Develop a unique and distinctive image (e.g., a logo, character, or likeness)

2. Search the USPTO trademark database for existing trademarks to confirm that no one has registered the image

3. Collect the information required for a new application and decide on a trademarking strategy

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

5. Navigate the USPTO application review process

6. Use the correct trademark symbol. Read more about trademark symbols here.

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

How Long Does It Take to Trademark an Image?

It takes about between 12 to 18 months to trademark an image with the U.S. Patent and Trademark Office (USPTO).

IV. TRADEMARKING PICTURES

Can You Register a Picture as a Trademark?

Yes, you can register picture as a trademark by applying to the U.S. Patent and Trademark Office (USPTO). The USPTO accepts applications for picture trademarks that represent brands.

The USPTO allows you to trademark a picture if it’s used in your branding. This can be a valuable asset for your business, helping to protect your brand identity.

Do You Need to Trademark a Picture?

Yes. If you are investing in a brand and using a picture to represent the brand, you should trademark the picture by registering it with the U.S. Patent and Trademark Office (USPTO).

Trademarks protect brands and the names, logos, and pictures that represent brands.

How to Trademark a Picture

Trademarking a picture that represents your company, product, or service is the best way to protect it – and your brand. Knowing how to secure an image trademark is important. Here’s how to trademark picture in six steps:

1. Develop a unique and distinctive picture (e.g., a logo, character, landscape, or likeness)

2. Search the USPTO trademark database for existing trademarks to confirm that no one has registered the picture

3. Collect the information required for a new application and decide on a trademarking strategy

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

5. Navigate the USPTO application review process

6. Use the correct trademark symbol. Read more about trademark symbols here.

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

How Long Does It Take to Trademark a Picture?

The process to trademark a picture with the U.S. Patent and Trademark Office (USPTO) takes between 12 to 18 months.

V. WORKING WITH THE USPTO

Where Do You Trademark an Image or Picture?

You trademark an image or picture by filing an application with the U.S. Patent and Trademark Office (USPTO). The USPTO accepts applications to trademark image trademarks online via its Trademark Electronic Application System (TEAS).

When Should You Trademark an Image or Picture?

Most experts agree that you should trademark your image or picture sooner rather than later. The process of trademarking an image or picture usually takes more than a year. So, the earlier you start, the sooner you’ll have confirmation that you legally own your image or picture 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 the image or picture as your trademark. It is possible to start trademarking an image or picture as soon as you decide to use 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.

Why Trademark an Image or Picture?

Trademarking an image or picture is the best way to protect it and make certain that it is exclusively yours for your brand. When you trademark an image or picture, you ensure that it:

• is available for your exclusive use, does not infringe anyone else’s trademarks, which saves you legal headaches

• stay unique and stands out in the marketplace over time, which keeps your brand recognizable and more trusted

• stays legally yours so that you never have to rebrand, so you can invest and promote your brand with confidence.

These benefits protect your profits. Read our quick guide to all of the reasons to register a trademark.

VI. REASONS TO TRADEMARK IMAGES AND PICTURES

The top five reasons to trademark an image are:

1. You will avoid future branding conflicts

2. No one else in your industry will be able to trademark it

3. It will be easier to stop imitators

4. It will increase trust and recognition in your brand

5. You will be able to use the ® symbol

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

Prevent trademarking by others: Trademarking your image will prevent any competitors from trademarking the same or similar name image for their products or services. As a general rule, only one person can own a trademark in an industry. So, by trademarking your image, you ensure that no one else can trademark it and take it from you. This makes trademarking great insurance against ever having to rebrand.

Stop imitators: Trademarks, including image trademarks, come with legal presumptions that make protecting your brand easier and less expensive.

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

Use the ® symbol: Trademarking your image gives you legal permission to use the ® trademark symbol with them. The ® symbol is “public notice” that your image trademark is 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 brand.

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.

VII. FREQUENTLY ASKED QUESTIONS

1. Do you copyright or trademark an image?

It depends. If the image is original artwork that you want to protect from use without your permission, then you should copyright it. If the image is closely associated with your brand, you should trademark it. Copyrights protect creative works while trademarks protect names and logos that represent brands.

Learn More: Our Easy Guide to Trademark vs. Copyright

So, if you are using an image to represent your brand, you should seek a trademark registration to protect it. But, your image may also qualify for copyright protection as well.

2. Do you copyright or trademark a picture?

It depends. If the picture is original artwork that you want to protect from use without your permission, then you should copyright it. If the picture is closely associated with your brand, you should trademark it. Copyrights protect creative work while trademarks protect names and logos that represent brands.

So, if you are using a picture to represent your brand, you should seek a trademark registration to protect it. But, your picture may also qualify for copyright protection as well.

3. Can you trademark a person’s likeness or image?

Yes, if the likeness is being used to represent a brand then it is eligible for trademark protection. An example of a trademarked likeness is Kentucky Fried Chicken’s “Colonel Sanders”.

SHARE THIS ARTICLE ON:

SHARE THIS ARTICLE:

Take the Next Step and Legally

Own Your Trademark

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Trademark

Request a Free Strategy Call

Michael Kondoudis

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

www.mekiplaw.com

Can You Trademark a Font? – An EASY GUIDE

July 20, 2022 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Attorney

This is our easy guide to trademarking a font and “can you trademark a font?”

Using fonts to distinguish your company, products, and services is an effective way to stand out from the crowd. But, can you trademark a font?

If you want to quickly:

Understand what a trademark is
Learn whether you can use a font in a trademark
Figure out if you can you trademark a font
Learn how to protect a font
Understand when trademark law protects fonts

Then this guide is for you.

Let’s jump in!

What is a Trademark?

Trademarks are a type of intellectual property protection used to safeguard brands. The most popular trademarks are words, phrases/slogans, and logos. The sole purpose of trademarks and trademark law is to prevent consumer confusion.

What is a Font?

In contrast to trademarks, fonts are practical ways to convey information. Also, because there are many thousands of fonts, it is unlikely that consumers would consider any one font so distinctive as to associate it with a brand. Thus, a font by itself cannot be trademarked.

Can You Use a Font in a Trademark?

Yes, you can use a font in a trademark. Using a font in a trademark is a great way to enhance the distinctiveness of a trademark, make it stand out, and prevent anyone else from using a similar font without your permission. Plus, your trademark font can convey your brand values and personality. Including a font in a trademark is permitted. If you want to set your business apart from the competition, using an original font in your trademark can be a great way to do it.

Pro Tip: Use an original font for even more distinction.

Can I Use Any Font for My Business Logo?

Yes, you can use any font. Most fonts are in the public domain or come with a free license.

When selecting a font for a logo, it’s important to choose one that is easy to read, and that will be legible when scaled down or printed in a smaller size. A well-chosen font can also help create a more recognizable and memorable brand.

Some popular fonts for logos include Helvetica, Arial, and Times New Roman. When selecting a font, it’s important to consider how easy it is to read in different sizes and media. For example, a thin or delicate font may be difficult to read when printed on a business card or sign.

When it comes to branding, a well-chosen font can be a powerful tool. By carefully considering a font’s readability, tone, and scalability, you can create a distinctive and memorable logo.

Pro Tip: If you are using a custom font for your trademark, make sure that you have a license for commercial use.

Can You Trademark a Font?

No, you cannot trademark a font. A font by itself does not qualify for trademark protection because it is functional. A font by itself does not brand a product or service and does not prevent consumer confusion.

Do you need help with your trademark?

How Do You Protect a Font?

You protect a font by using it in a name, logo, or slogan. When you use a font in a word, logo, or slogan, it becomes a trademark font that is eligible for trademarking. The use of a font can be trademarked in several ways, even though a font by itself is not suitable for trademark protection. Many brands commonly use a distinctive trademark font in their trademark logos or other branding materials.

This begs the question – if a font is not trademarkable, how do these companies protect their trademark fonts from copying or imitation?

How Can the Use of a Font be Trademarked?

A font can be trademarked when it is used in a trademark. When a font is part of a name, logo, or slogan used to brand products and services, it can be a trademark font.

NAME

LOGO

SLOGAN

So, a font can be protected by trademark law when used to brand products or services. This means a font is eligible for trademark protection when used to brand a product or service. This means that the font, as part of a name, logo, or slogan, must signal to customers that a particular product or service comes from you.

If a font is not used to brand a product, then it cannot be trademarked and will not receive any protection from trademark law. This is why most fonts are not trademarked – they are simply not used in a way that would make them eligible for trademark protection.

How to Trademark a Font

These are the top four ways to use a font and make it eligible for trademark protection.

1. Trademark the Name of the Font. The name of a font can be trademarked. For example, the name PALATINO is a registered trademark owned by Monotype Imaging Inc for:

Fonts of typographical characters; printing fonts, namely, typefaces, type fonts and type designs of alphanumeric characters and/or typographical symbols

U.S. Trademark Reg. No. 5295873

2. Use the Font in a Trademarked Name or Logo. The name of a product or service written in a distinctive font can be trademarked. For example, the Coca-Cola Company uses a distinctive script on its cola bottles.

3. Trademark the name of the service that create fonts for others. If you design fonts for others (e.g., as a graphic designer), the service of creating fonts can be trademarked.

4. Trademark the name of software for creating fonts. If you sell a software product that can be used to create fonts, that software product can be trademarks.

Do you need help with your trademark?

Examples of Famous Trademarks That Use Fonts

COCA-COLA (in a trademark stylized font) is a famous registered trademark that includes an original font. The Coca-Cola script logo is one of the most iconic logos in the world. The logo has been around since 1886 and has barely changed since then. The simple, elegant design perfectly represents the company’s values. The timelessness of the logo is a testament to its quality.

The Coca-Cola Company has trademarked its COCA-COLA name in this stylized font. This trademark font prevents competitors from using the same or similar typeface for beverages.

BARBIE (in a stylized trademark font) is a famous registered trademark that includes an original font. The Barbie script logo is one of the most iconic logos in the world. It was created in 1959 by Ruth Handler, who named it after her daughter Barbara. The logo is simple but elegant and has remained unchanged for over 50 years.

The Mattel Toy Company has trademarked its BARBIE name in this stylized font, which prevents competitors from using the same or similar typeface for toys.

DISNEY (in a stylized trademark font) is a famous registered trademark that includes an original font. The Disney script logo is one of the world’s most iconic and well-known logos with a simple, elegant design has been used for decades. The logo was created in 1932 by Walt Disney himself and has remained essentially unchanged.

The Disney Company has trademarked its DISNEY name in this distinctive stylized font. This trademark font prevents competitors from using the same or similar typeface for a wide variety of products and services, from toys to theme parks to movies.

TIME (in a stylized trademark font) is a famous registered trademark that includes an original font and distinctive red color. It has a simple, elegant design that has been used for over 90 years. The word “TIME” is written in a very stylized font designed specifically for the magazine.

Time Inc. has trademarked its Time name in this distinctive stylized font to prevent competitors from using the same or similar typeface for electronic and print publications.

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

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your font, 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 Character – An EASY GUIDE

July 18, 2022 by Michael Kondoudis

Characters can be trademarks – IF you know how to use them!

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to how to trademark a character.

Fictional characters can be valuable brand assets because they can communicate a brand so quickly and effectively.

Businesses are increasingly using characters as their trademark or company logo. They want to know “can a fictional character be a trademark?” and “how to trademark a character?” In fact, these are some of the most common questions we get.

If you need to answer these questions quickly, this guide is for you. In this EASY guide, we explain:

What a trademark is and what they protect
Whether a character can be a trademark
Whether you should trademark a character
The benefits of trademarking a character
How to trademark a character
When a character qualifies for trademark
Should you work with a trademark attorney

Let’s get started!

What is a Trademark and What Do They Do?

A trademark is a marketing tool that identifies and distinguishes the products or services from a business or enterprise from those of the competition. The most common types of trademarks are names, logos, and slogans. Buyers use trademarks to pick among brands of products.

For something to be considered a trademark, including a character, it must be used to brand products or services. Otherwise, a fictional character isn’t being used as a trademark in a legal sense.

A trademark can be registered with the U.S. Patent and Trademark Office to secure enhanced protections, including exclusive nationwide rights. There are many benefits to federal trademark registration.

Can a Character be a Trademark?

Yes, the name and likeness of a character can be a trademark! Trademarking a character is the best way to protect it for your brand. When you trademark a character, you reserve it for your exclusive use. The U.S. Patent and Trademark Office (USPTO) accepts applications to trademark a character as a character trademark.

Can You Trademark a Character?

Yes, you can trademark the name and likeness of a fictional character if you it as a trademark to your brand your products or services. This use can result from selling products with the character’s image or using the character in your advertising. So, you can apply for a character trademark when that character serves as your company’s logo or brand name.

A well-known example of a character trademark is Mickey Mouse. The Walt Disney Company has a trademark registration for Mickey Mouse for use in a wide range of products and services, including toys, arcade games, computer programs and software, frozen foods, and cosmetics. Other fictional character trademarks include James Bond, Godzilla, The Pillsbury Doughboy, and The Cat in the Hat.

Not every character qualifies for trademark protection, however. For a character to be trademarked, the character cannot be too similar to other existing trademarked characters and must be used to brand products or services. Once a character meets these requirements, the owner can file for trademark protection.

Where Do You Get a Character Trademark?

You get a character trademark from the U.S. Patent and Trademark Office (USPTO). You must apply to the USPTO and navigate an examination process to get a trademark registration for your character. The USPTO grants character trademarks.

Do you need help with your trademark?

Should You Trademark a Character?

Yes. If you’re a small business and you’ve created a fictional character to represent your company, you should register that character as a character trademark. Characters are very effective trademarks, and trademarking your character is the best way to protect it in business.

What Are the Benefits of Trademarking a Character?

Character trademarks can be effective tools to communicate a brand. That makes them valuable and worthy of protection. There are many benefits to trademarking a character.

Firstly, when you trademark a character, no one else in your industry can register it, take it from you, and force you to change characters,

Only one business can own a character trademark in an industry, and it is typically the one that trademarks it first.

Secondly, trademarking a character comes with the exclusive right to use it. Here again, usually, only one business can use a character trademark in an industry, and it is typically the one that trademarks it first.

Thirdly, trademarking a character ensures that your character remains distinctive and identifiable by your customers.

Fourthly, trademarking a character permits you to use the ® symbol. This can deter would-be copycats from trying to imitate your character trademark.

Fifthly, trademarking a character comes with important legal presumptions and rights that make enforcing your ownership rights less expensive.

When you register a trademark for a fictional character, you are securing exclusive rights to use that character in connection with your products or services. This means that other businesses in your industry will not be able to register the same character and will not be able to use it without your permission.

For these reasons, trademarking a character can provide valuable legal protection and peace of mind.

The Top Six Reasons for Trademarking a Character

1. Exclusivity. Trademarking your character gives you the exclusive right to use it. Typically, only one business can use a character in an industry, and it is usually the one that trademarks the acronym first.

2. Legal Ownership. When you trademark a character, no one in your industry can register it and take it from you. Here again, typically, only one business can own a character in an industry, and it is usually the one that trademarks the character first.

3. Distinctiveness. A trademark for the character helps distinguish your products and services, meaning buyer loyalty for your high-quality product flows to you.

4. Cost-Savings over time. Trademarking your character comes with critical legal rights and presumptions that make enforcing your ownership rights less expensive if someone else tries to use your character without permission.

5. Deterrence. When you trademark your character, you can use the ® symbol with it. This can deter competitors from trying to imitate your character trademark.

6. Value. Having a registered trademark for your character can also make it easier to sell or license it because potential buyers or licensees will know that they can use the character without the risk of infringing on someone else’s rights.

Read our quick guide to all of the reasons to register a trademark.

Trademarking a Character

Trademarking a character is possible when it is used to identify the source of goods or services. For example, the “DONALD DUCK” name and image are both trademarks owned by the Disney corporation. Trademarking a character name and image will prevent competitors from using them to advertise or sell competing products or services.

Trademarking a character is no different than trademarking a name or logo. The character name or image must meet the same requirements as any other trademark; they are not automatically granted trademark protection. An essential requirement is that the character is distinctive. Also, the character must be used in commerce to be a trademark.

How to Trademark a Character

The process of trademarking a character is legal, and specific requirements must be met to trademark a character. The first step is determining whether the character is distinctive enough to qualify for trademark protection. The next step is to file a trademark application with the U.S. Patent and Trademark Office (USPTO). The application must include a description of the character and a list of the products and/or services with which it will be used. Once the application is filed, it will be reviewed by an examiner to ensure it meets all the legal requirements for trademark registration. If the application is approved, the character will be registered as a trademark and protected under federal law. This is an overview of how to trademark a character.

Do you need help with your trademark?

When Does a Character Qualify as a Trademark?

A character qualifies for trademark protection when two requirements are met.

Firstly, to trademark a character, you must use your character to identify your business, products, or services. If you show that your character is used as a brand, you’ll have a strong case for trademark protection.

Secondly, to trademark a character, the character must be “distinctive.” This means that your character should be unique and not too similar to another trademarked character. If you show that your character meets these criteria, you’ll have a strong case for trademark protection.

Note: The best way to ensure that your character is “distinctive” is to conduct a trademark search. The U.S. Patent and Trademark Office recommends that you consult with a trademark attorney because trademark similarity can be a complex analysis (see below).

Should You Work with A Trademark Attorney to Trademark a Character?

Yes! Working with an experienced trademark attorney often makes the difference between success and failure when it comes to trademark registration, especially when applying to trademark a character.

Studies of USPTO data show that applicants who work with a trademark attorney are 50% more likely to register their character trademarks. That makes hiring a trademark attorney an excellent investment, regardless of whether it is your first time going through the registration process to trademark a character.

Here are the reasons why this one decision makes such a difference

Trademark attorneys are skilled in navigating the trademarking process, a federal legal proceeding involving an agency of the Federal government. Trademarking a character is a complex process and requires a working knowledge of federal trademark law and the rules and regulations of the U.S. Patent and Trademark Office. Trademark lawyers understand the process, the pitfalls, and strategies to help register your character.

In fact, 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, an attorney can represent you in proceedings before the USPTO if there are any objections to the application.

Character Trademark Guidelines

1. Characters can qualify for trademark protection when they are used as a trademark.

2. To be registered as a trademark, a character must be used in commerce to indicate the source of goods or services.

3. A fictional character can be used as a trademark in many ways, such as using the character as a logo for a business or retail items.

4. Your fictional character can’t be too similar to another character already registered as a trademark.

5. The registration process can be long and expensive, so it’s essential to make sure that your character meets all the requirements before you begin.

How to Protect Your Original Fictional Character

Protect can your character trademark by:

1. Copyrighting the novel, story, play, movie, or book in which the fictional character appears. Copyrighting the underlying work will help you legally protect it from copying.

2. Trademarking the name or likeness of the fictional character. Trademarking the character will help you legally protect it from imitation by the competition.

3. Copyright the likeness or visualization (graphic representation) of the fictional character. Copyrighting the visual look of the character will help you legally stop others from unauthorized non-commercial uses.

Do you need help with your trademark?

FREQUENTLY ASKED QUESTIONS

1. Can you trademark a character name?

Yes, the name and likeness of a character can be a trademark! You can trademark a fictional character if you use their name as a trademark to your brand your products or services. Trademarking a character name is the best way to protect it for your brand. When you trademark a character, you reserve it for your exclusive use and prevent anyone else from trademarking the name for their business. The U.S. Patent and Trademark Office (USPTO) accepts applications to trademark a character as a character trademark.

2. Do you copyright or trademark a character?

You trademark fictional characters, including names and likenesses of fictional characters. Also, you can register trademarks for fictional characters with the U.S. Patent and Trademark Office (USPTO). When you register a fictional character as a trademark with the USPTO, you get the exclusive right to use the character’s name and image in connection with goods and services. This prevents anyone else from using the copyrighted character’s name or image without your permission. It also prevents competitors from trademarking the name and likeness for their products.

3. Trademark a character name?

The name of a character can be protected by a trademark if you use it as a brand to identify your products or services. A character’s name and likeness both qualify for trademark protection and the U.S. Patent and Trademark Office (USPTO) accepts applications to register character name trademarks.

4. How do you protect a character’s name?

You protect a character’s name by trademarking it. To get a trademark for a character name, you must use the name to brand your products or services. For example, Disney owns a trademark for the name “Donald Duck.”

Ready to take the next step toward trademarking your character?

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

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

Should I Get a Trademark or LLC First? – A COMPLETE Guide

July 13, 2022 by Michael Kondoudis

An LLC is a type of business structure that protects personal assets, while trademarks protect brand identify, reputation, and customer loyalty.

By Michael Kondoudis, Logo Trademark Specialist

This is our COMPLETE guide to whether you should apply for a trademark before or after forming an LLC.

Make no mistake, one should definitely come before the other. This guide explains the ins and outs of LLCs and trademarks and which one you should do first.

If you need to know whether to get a trademark or LLC first, then read on. This guide is for you!

Let’s get started!

CONTENTS

Part I: The basics of trademarks

Part II: The basics of LLCs

Part III: The differences between trademarks and LLCs

Part IV: Why a business needs both trademarks and an LLC

Part V: Which one to get first and why

Part VI: Frequently asked questions

I. THE BASICS OF TRADEMARKS

What is a Trademark, and What Does It Do for My Business?

A trademark is a sign that distinguishes the goods or services of one company from those of another. A trademark can be a word, phrase, logo, image, or combination. Trademarks protect brands and businesses’ investment in their brands.

The best kind of trademark is a federal trademark, which is a trademark on steroids. The U.S. Patent and Trademark Office registers federal trademarks. For a trademark to be registered, it must be distinctive and not likely to be confused with another trademark.

Read our guide to all of the reasons to register your trademark.

II. THE BASICS OF LLCS

What is an LLC, and What Does It Do for My Business?

A Limited Liability Company (LLC) is a business structure that offers personal liability protection and flexible taxation to its owners. LLCs are popular among small business owners because they provide some benefits of a corporation and a partnership.

An LLC offers its owners limited liability protection, meaning that they are not personally liable for the debts and liabilities of the LLC. This means that if the LLC is sued, the owner is not personally liable for the debts and liabilities of the LLC (i.e., the owners’ personal assets are not at risk). Instead, only the LLC’s assets can be seized to satisfy a judgment. This asset protection is one of the main reasons people choose to form an LLC.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

Another advantage of an LLC is its flexibility in how the business is taxed. An LLC can choose to be taxed as a sole proprietorship, partnership, or corporation. This allows business owners to tailor their tax situation to their specific needs.

Overall, an LLC provides its owners with personal liability protection and flexibility in how the business is taxed. These benefits make it a popular choice for small businesses and entrepreneurs.

III. TRADEMARKS VS LLCS

Is an LLC a Trademark?

No, an LLC is not a trademark. LLCs and trademarks are very different. An LLC is a type of business formation that protects personal assets, while a trademark is a type of intellectual property that protect brands. A trademark that protects brands is not the same as an LLC that protects personal assets from financial liability.

Is an LLC and Trademark the Same?

No, LLC and trademark are not the same. An LLC is a type of business formation, while a trademark is a type of intellectual property. LLCs protect personal assets from financial liability while trademarks protect the brand name and logo of a company. An LLC is not the same as a trademark.

Is a Trademark and LLC the Same?

No, a trademark and LLC are not the same. An LLC is a type of business formation, while a trademark is a type of intellectual property. LLCs protect personal assets from financial liability while trademarks protect the brand name and logo of a company. A trademark is not the same as an LLC.

Can an LLC Own a Trademark?

Yes, an LLC can own a trademark and many trademarks are owned and registered by LLCs.

Trademark vs LLC

LLCs and trademarks are important business tools. They function differently, offer different protections, and serve different purposes.

Trademarks distinguish and protect brands. Trademarks are granted at the national level by the U.S. Patent and Trademark Office (USPTO) and give the owner the exclusive right to use their trademark throughout the United States. LLCs are a way to structure a business. LLCs are granted at the state level and separate personal assets from business assets to protect them from business debts and liabilities.

The main difference between a trademark and an LLC is that a trademark prevents competitors from using your name or logo whereas an LLC shields your personal assets from lawsuits and bankruptcies. So, an LLC protects you financially, while a trademark distinguishes your product or service.

So, you need a trademark if you want to protect your brand from copycats or imitators, while you need an LLC if you want to shield your personal property and assets.

In the end, it is not a question of whether you should get a trademark or llc, but rather which one should come before the other. LLCs and trademarks work together to protect a business. So, for complete protection, you need both.

Trademark vs LLC – The Top Five Differences

Trademark vs LLC Difference #1: Type of Protection

A trademark protects names, logos, and slogans from imitation, while an LLC protects the personal assets of business owners.

Trademark vs LLC Difference #2: Scope of Protection

A trademark offers national protection, while an LLC offers protection in a single state.

Trademark vs LLC Difference #3: Federal vs. State

A trademark is granted by the U.S. Patent and Trademark Office (USPTO), while an LLC is granted by your state’s Secretary of State.

Trademark vs LLC Difference #4: Cost

A trademark can cost over $1000 to register, while an LLC usually costs less than a few hundred dollars

Trademark vs LLC Difference #5: Time to Register

A trademark can take over a year to get from the USPTO, while an LLC typically takes just a few days to register.

These are the five top differences between LLC vs trademark

Infographic

(click to download)

LLC vs Trademark

What is the difference between an LLC and a trademark? The answer is what they protect and how they protect it. An LLC protects your finances by shielding your personal assets, while a trademark distinguishes your product or service from others in the market.

A trademark is a type of intellectual property that protects a brand or logo from being used by other businesses. The most popular types of trademarks are words, phrases, symbols, and designs.

A trademark does not protect a business owner’s personal assets from liability in the event of a lawsuit or bankruptcy.

After your trademark is registered with the U.S. Patent and Trademark Office (USPTO), you will have official ownership and the legal right to use it nationally.

An LLC, or limited liability company, is a type of business entity that offers its owners limited liability protection from claims and debts arising from the business.

An LLC does not protect the distinctive names, logos, and slogans used to project a company’s brand.

Once your LLC or corporation application is approved, your name is protected in the state: No other business will be able to form an LLC or corporation with the same name in that state. But, registering your name with the state has no impact on what happens in the other 49 states.

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.

LLC vs Trademark – The Top Five Differences

The top five differences between LLC vs trademark are:

1. What they protect

2. Where they offer protection

3. How to get them

4. What they cost

5. How long they take to get

Legal Protections: Trademarks protect brands, while LLCs are legal business entities that protect owners’ personal assets from lawsuits and bankruptcies.

Where they offer protection: Trademarks are governed by the Federal Trademark Statute, and federal trademark protections extend nationwide. LLCs are governed by the laws of the state in which they are formed and are protected only within the state in which they are created.

How to get them: Trademarks are issued nationally by the U.S. Patent and Trademark Office (USPTO). LLCs are issued at the state level by the states’ secretaries of state.

Costs: The cost to get a trademark is set by USPTO, which charges the same filing fees regardless of location. In contrast, each state determines its own LLC filing fees.

Time: The time it takes to set up an LLC varies by state, but it’s typically less than a week. A federal trademark, on the other hand, often takes more than a year to get approved.

Additional differences between trademarks and LLCs include:

• Trademarks can be registered with the USPTO, while LLCs cannot.

• Trademarks protect brands and logos, while LLCs protect business structures.

• Trademarks can be bought and sold, while LLCs cannot.

• Trademarks can stop others from using your brand or logo, while LLCs cannot.

• Trademarks are protected by either federal or state law, while LLCs are governed by state law

• Trademarks can be used to identify both goods and services, while LLCs can only be used to identify businesses

Generally, an LLC protects your assets, while a trademark protects your brand.

IV. WHY YOU NEED BOTH TRADEMARKS AND LLCS

Do You Need Both an LLC and a Trademark for Your Business?

Yes, you need both an LLC and a trademark.

Trademarks and LLCs complement each other and work together. They are both essential for business owners who want to safeguard their interests and ensure long-term success – having one without the other results in incomplete protection and unnecessary risk.

When you start a business, it’s essential to protect your brand. An LLC alone won’t protect your brand name or logo. For that, you’ll need to register a trademark.

Conversely, it is also essential to protect your personal assets. A trademark alone can’t protect your assets from legal liability. For that, you’ll need an LLC.

An LLC will help to protect your personal assets if your business is sued, while a trademark will prevent others from using your brand identity without permission. By ensuring that you have both types of protection in place, you can help to safeguard your business against legal challenges and competitors.

V. TRADEMARK OR LLC FIRST?

Should I Get a Trademark or LLC First?

LLC first and then trademark your brand.

You should get an LLC first. Most authorities recommend getting an LLC before a trademark. There are several reasons for this recommendation. The main reason it is better to form your LLC before filing a trademark application is simple–your LLC will use and legally own the trademark.

These are the top reasons you should form an LLC before applying for a trademark.

1. The LLC will own the trademark.

Every trademark has an owner, which can be a person or an LLC (or other business entity). The ownership of a trademark is determined by who uses the mark. If you plan on forming an LLC to operate your business using that trademark, the LLC must exist before filing the application.

2. The LLC should file the trademark application.

Only the legal owner of a trademark can apply for a federal trademark (i.e., trademark registration). So, if you plan on forming an LLC and operating under the LLC, then the LLC would be the legal trademark owner and the only entity that can submit the trademark application to the U.S. Patent and Trademark Office (USPTO).

3. An LLC can help establish that the trademark is in use.

A trademark needs to be used in commerce. This means that it needs to be used in connection with the sale of goods or services. Simply having a trademark isn’t enough – you need to use it in commerce. Forming an LLC before applying for a trademark can help to prove that the trademark is being used in commerce.

4. There will be no asset protection until an LLC is formed.

A trademark does not provide any personal liability protection. If someone infringes on your trademark, you can sue them for damages, but you cannot sue them for any damages to your business.

In the end, the answers to the questions “should I get a trademark or LLC first?” or “should I form an LLC or trademark first?” is the same – form the LLC first and then apply for a trademark.

® Want help with your trademark?

Top Reasons Why an LLC Should Come Before a Trademark

1. The LLC will own the trademark.

2. The trademark application should need to be filed by the LLC.

3. An LLC can help establish that the trademark is in use.

4. There will be no asset protection until an LLC is formed.

VI. FREQUENTLY ASKED QUESTIONS

1. Should a Trademark be Filed By an Individual or an LLC?

Both options have benefits and drawbacks, so it ultimately depends on the trademark owner’s specific situation.

If the trademark is for a product or service that an LLC will sell, then the trademark will be owned by the LLC, and the LLC will need to apply for trademark registration.

If the trademark is for a smaller personal brand that a sole proprietor or DBA will sell, then the individual will own the trademark, and the trademark application should be filed under the individual’s name.

Ultimately, if you have an LLC for your business, the trademark should be filed by the LLC.

2. Should my LLC own my trademark?

Yes, if have an LLC for your business, then your LLC owns the trademarks used by your business. The trademark owner is typically the one who uses the trademark. This means that you will need to list your LLC as the owner of the trademark if you apply to protect it with the U.S. Patent and Trademark Office.

3. Should you trademark your business name before forming an LLC?

No, you should form an LLC BEFORE trademarking your business name because the trademark application must list the LLC as the trademark owner. So, your LLC must exist before you file your trademark application. Before you file for trademark protection of your business name, you should set up your business as a limited liability company (LLC).

4. Should you get an LLC first or trademark?

Yes, you should get an LLC first before a trademark because the trademark application will need to identify the LLC as the trademark owner. You should create an LLC or business entity before you file a trademark application.

5. Does an LLC protect trademarks?

No, an LLC does not protect trademarks or brands. An LLC legally protects assets from lawsuits, debts, and bankruptcy – an LLC cannot protect trademarks.

6. Is It Better to Trademark or LLC?

No, it is not better. Trademarks and LLCs work together and a business needs both for complete legal protection. An LLC will help to protect your personal assets if your business is sued, while a trademark will prevent others from using your brand identity without permission. Having both an LLC and a trademark can help to safeguard your business against legal challenges and competitors. An LLC legally protects personal assets from lawsuits, debts, and bankruptcies. Trademarks protect brands.

7. Is It Better to LLC or Trademark?

No, it is important to get BOTH an LLC and a trademark and it is best to form the LLC BEFORE applying for a trademark. Each offers different protections, and they work together to provide broad protection for your business. It is better to form an LLC before filing a trademark application. So, before you submit a trademark application, you should create an LLC or other business entity.

A business should form an LLC before applying for a trademark because the LLC will own the trademark. By ensuring that you have both types of protection in place, you can help to safeguard your business against legal challenges and competitors.

8. What Comes First LLC or Trademark?

LLC comes first. If you plan to structure your business as an LLC , then you should form the LLC first because the LLC will be the trademark owner. So, the LLC MUST exist before the trademark is filed.

Every trademark has an owner, and the owner is usually the person or business that is using it. LLC comes first when you want to use the trademark for your business, and you’re going to form an LLC because the LLC will be the owner of the trademark.

9. Is an LLC Better Than a Trademark?

No, an LLC is not better than a trademark. LLCs and trademarks are separate business tools that do very different things.

Trademarks distinguish and protect brands and give the owner the exclusive right to use their trademark throughout the United States. LLCs are a way to structure a business and separate personal assets from business assets to protect them from business debts and liabilities.

10. Is a Trademark Better Than an LLC?

No, a trademark is not better than an LLC. Trademarks and LLCs are separate business tools that do very different things.

11. Does LLC Protect the Name?

An LLC does not protect a name. LLCs do not protect business names or brand names. This means that someone could use your brand name and you would not be able to do anything about it with just an LLC. An LLC is just a way to structure a business for legal and tax purposes. You need a trademark to protect a name and stop anyone else from using it.

Take the Next Step and Legally

Own Your Trademark

Schedule a Free Strategy Call

SHARE THIS ARTICLE ON:

SHARE THIS ARTICLE:

Michael Kondoudis

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

www.mekiplaw.com

Can You Trademark An Acronym? – A COMPLETE GUIDE

July 13, 2022 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Lawyer

This is our COMPLETE Guide to trademarking an acronym.

In this guide, we discuss:

Whether you can trademark an acronym
Examples of trademarked acronyms
Why should trademark an acronym
The top reasons to trademark an acronym
When does an acronym qualify for a trademark?
How to trademark an acronym
Do you need to work with a trademark lawyer?

Plus, we discuss three tips for choosing a protectable acronym that you can trademark.

Let’s get started

The Basics of Trademarks and Acronyms

Trademarks are the foundation of every successful brand. Trademark law protects them and the brands behind them. That’s why trademarks matter.

What is a trademark?

A trademark is a brand identifier. More specifically, a trademark is an “identification” used by a business to distinguish its products and services from the competition. Customers use trademarks to find the brands that they like. Logos, words, and names are the most popular types of trademarks.

What is an acronym?

An acronym is an abbreviation formed from the first letters of other words and pronounced as a word. Two examples are NASA (National Aeronautics and Space Administration) and ASAP (as soon as possible).

Can You Trademark an Acronym?

Yes, you can trademark an acronym. Acronyms can be registered as trademarks when they are used as the brand for your business, products, or services. An acronym that is used as a trademark is eligible for trademark protection. Acronyms can definitely be eligible for trademarking.

Trademarking an acronym is the best way to protect it so that it is exclusively yours for your brand.

When you hear the word trademark, you probably think of a company’s name or logo. Those are just two examples of trademarks, however. Trademark law can protect abbreviations and acronyms. Many of today’s most famous and valuable trademarked brands are acronyms

You can trademark an acronym used to brand your business, company, or organization. You can also trademark an acronym used to brand your products or services. And, if your acronym is in your logo, you can trademark that logo acronym as well.

So, if you are wondering, “can you trademark an acronym?” the answer is definitely yes!

Examples of Registered Acronyms

Many of today’s most famous and valuable registered trademarks are acronyms. Eight great examples of registered acronyms are CNN, DKNY, HBO, KFC, NASA, NBC, NCAA, and UPS:

These are just a few examples of acronyms that have been trademarked.

Trademarking an Acronym

Trademarking an acronym is possible when it is used to identify the source of goods or services. For example, 3M is a registered trademark for many consumer, office, and automotive products. Trademarking an acronym will prevent any competitors from using it to advertise or sell competing products or services.

Trademarking an acronym is no different than trademarking a name or logo. The acronym must meet the same requirements as any other trademark; they are not automatically granted trademark protection. An essential requirement is that the acronym is distinctive and does not just describe a product or service. Also, the acronym must be used in commerce to be a trademark.

Why Should You Trademark an Acronym?

Acronyms are short, memorable, and efficient ways to represent ideas and are visual shorthand for names and brand identities. That makes acronyms powerful branding tools. Just look at some of the most successful brands in the world, and you’ll see that many rely on acronyms to help identify them.

Powerful branding tools like acronyms are valuable. Trademarking an acronym is the best way to legally protect that value.

How? Consider the National Aeronautics and Space Administration’s trademarked acronym “NASA.” That trademark means that other companies cannot use the NASA acronym in connection with their competing products or services.

Many businesses choose to trademark their acronyms to protect their brand identity. Registering a trademark for your acronym is a smart way to protect your brand.

Top Six Reasons to Trademark an Acronym

Trademarking is a powerful tool to stop unauthorized use or imitation of your acronym by copycats. Here are the top six reasons why:

Exclusivity. Trademarking your acronym gives you the exclusive right to use it. Typically, only one business can use an acronym in an industry, and it is usually the one that trademarks the acronym first.
Legal Ownership. When you trademark an acronym, no one in your industry can register it and take it from you. Here again, typically, only one business can own an acronym in an industry, and it is usually the one that trademarks the acronym first.
Distinctiveness. A trademark for the acronym helps distinguish your products and services, meaning buyer loyalty for your high-quality product flows to you.
Cost-savings over time. Trademarking your acronym comes with critical legal rights and presumptions that make enforcing your ownership rights less expensive if someone else tries to use your acronym without permission.
Deterrence. When you trademark your acronym, you can use the ® symbol with it. This can deter competitors from trying to imitate your acronym trademark.
Value. Having a registered trademark for your acronym can also make it easier to sell or license it because potential buyers or licensees will know that they can use the acronym without the risk of infringing on someone else’s rights.

Read our quick guide to all of the reasons to register a trademark.

When Does an Acronym Qualify as a Trademark?

An acronym qualifies for trademark protection when two requirements are met.

Firstly, to trademark an acronym, you must use your acronym to identify your business or as a brand name for your products or services. If you show that your acronym is used as a brand, you’ll have a strong case for trademark protection.

Secondly, to trademark an acronym, the acronym must be “distinctive.” This means that your acronym should not be descriptive of your products or services. Also, your acronym cannot be commonly used in your industry or too similar to another trademarked acronym. If you show that your acronym meets these criteria, you’ll have a strong case for trademark protection.

Note: The best way to ensure that your acronym is “distinctive” is to conduct a trademark search. The U.S. Patent and Trademark Office recommends that you consult with a trademark attorney because trademark similarity can be a complex analysis (see below).

Do you need help with your trademark?

How to Trademark an Acronym

To trademark an acronym, you first need to file a trademark application with the U.S. Patent and Trademark Office (USPTO). Next, you will need to navigate the application examination process. If you are successful, the USPTO will register your acronym, and you will have exclusive rights to use the acronym in connection with your business.

The process of trademark registration can be complex, so the USPTO recommends that you work with a trademark attorney to ensure your rights are fully protected.

The Seven Steps to Trademark an Acronym

Choose a Unique and Protectable Acronym for Your Business, Products, or Services
Hire a Trademark Attorney for Your Trademark Application
Perform a Trademark Search for Acronym
Collect the Required Information and Develop Your Application Strategy
Prepare and File a Trademark Application with the USPTO
Navigate the Trademark Examination Process
Use the ® Trademark Symbol with Your Registered Acronym Trademark

The Process of Trademarking an Acronym

The process of trademarking an acronym is fairly straightforward, but it is important to understand the legal requirements before moving forward. First, it is important to make sure that no other competitor is already using the acronym. If the trademark is available, the next step is to file a trademark application with the USPTO. The application must include a description of the goods or services branded by the acronym. Once the application is filed, it will be reviewed by a trademark examiner.

Top Three Tips for Choosing a Protectable Acronym

One of the most effective ways to build a brand is to use an acronym. An acronym is a word formed from the first letters of a series of words and can be a potent tool for branding. A well-chosen acronym can help a brand to stand out, be remembered, and be associated with positive values. But not all acronyms are equal.

Remember these three key things when choosing an acronym for your brand.

Your acronym should be short and easy to remember.
Your acronym should be somehow related to your brand or what you do.
Your acronym should be available for trademarking (so have a professional search performed).

Do You Need to Work With an Attorney to Trademark Your Acronym?

Working with an experienced trademark attorney often makes the difference between trademarking success and failure. Studies of USPTO data show that applicants who work with a trademark attorney are 50% more likely to register their acronyms.

If that is not reason enough, consider that 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, an attorney can perform a search and better determine whether an acronym is distinctive.

Ready to Trademark Your Acronym?

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

Our Process for Securing a Trademark

Michael Kondoudis

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

www.mekiplaw.com

Do You Have to Put LLC in Your Logo? – An EASY GUIDE

July 6, 2022 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Lawyer

This is our EASY guide to LLC logos and whether you need to include LLC in your logo.

If you want to quickly understand the “ins and outs” of LLCs and logos and whether you should put LLC in your logo then read on – this guide is for you!

Let’s get started!

CONTENTS

→ Understand what an “LLC” is and why they are important

→ Learn why putting “LLC” in your logo is not required

→ Learn how including “LLC” in your logo can hurt your marketing

→ Learn the top reasons to form an LLC

→ Understand the process of forming an LLC

→ Frequently asked questions

WHAT IS AN LLC?

What is an LLC?

An LLC, or limited liability company, is a business structure that combines the pass-through taxation of a sole proprietorship or partnership with a corporation’s limited liability. An LLC is not a corporation and cannot issue stock. Instead, members of an LLC are owners who can share in profits and losses, much like partners in a partnership. LLCs are formed at the state level, and each state has its own LLC formation process.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

Why Forming an LLC is Important

Forming an LLC is a straightforward yet crucial step in developing and protecting your business. LLCs offer structure, protection from lawsuits, minimal paperwork, and boost credibility.

There are many advantages to forming an LLC. LLCs offer limited liability protection for their owners, which means that the owners are not personally liable for the debts and liabilities of the LLC. This is a significant advantage over sole proprietorships and partnerships, which do not offer this same protection. LLCs also have a flexible management structure and can be managed by their members or designated manager. This flexibility is another significant advantage over more traditional business entities. Finally, LLCs are relatively easy and inexpensive to form and maintain.

All of these advantages make LLCs an attractive option for many small businesses.

The Importance of Logos and Brands

In today’s business world, having an effective and recognizable logo is more important than ever. Your logo is often the first thing potential customers will see when they encounter your brand, so it’s important that it makes a good impression. A well-designed logo can help build trust and credibility for your business and make your brand more memorable.

Your logo is your brand ambassador. It needs to be clear, memorable, and distinctive.

DO YOU NEED TO PUT LLC IN A LOGO?

Do You Have to Put LLC in Your Logo?

No, you do not have to put LLC in your logo or in any of your marketing materials. There is no legal or regulatory requirement to put “LLC” in your logo.

Putting “LLC” in your logo does not provide any additional legal protection for your business.

If you include LLC in your logo you can hurt your marketing/branding, for many reasons. Firstly, including LLC in your logo increases the risk that you will confuse customers and reduce the recognition of your logo as a trademark. Secondly, an LLC logo is hard to trademark, looks amateurish and unprofessional, and feels cluttered. Thirdly, if you move from an LLC to a corporation or sole proprietorship, you’ll need a new logo. Fourthly, if you want trademark protection for your new logo, you will have to repeat the trademarking process for your new logo.

As a general rule, you do not have to put LLC in your logo.

Do I Need to Put LLC in My Logo?

No, you do not need to put LLC in your logo or in any of your marketing materials. There is no requirement, legal or regulatory, to put “LLC” in your logo.

Besides, putting “LLC” in your logo does not provide any additional legal protection for your business and can hurt your marketing and promotion in six ways.

There is no need to put an LLC in your logo and there is no need to put LLC in your advertising or marketing materials.

Note: There are a handful of specific times when you need to include “LLC” with your business name.

When Should I Use LLC?

You should use “LLC” with your business name when you are not creating advertising, marketing, or promotional materials. So, for example, you should use “LLC” with your business name for:

1. Business registration forms
2. Company letterhead
3. Contracts, Leases, Legal documents
4. Invoices, Price quotations, Invoices
5. Tax filings

So, while you don’t need LLC in your advertising and marketing, you need to use the LLC as part of your business name for all financial, legal, or official documentation as a business.

Do you need help with your trademark?

Do You Put LLC in Logos?

No. Do not put LLC in your logo. You do not need to put LLC in your logo. Plus, an LLC logo (a logo with “LLC”) looks cluttered and unprofessional. Moreover, almost all major brands omit LLC from their logos.

Consider national brands like Google, Shell, and Coke.

These brands do not put LLC in their logos. Instead, they focus instead on simple, elegant design. Follow their lead.

The Top Reasons to Not Put LLC in Your Logo

There are many reasons not to put LLC in your logo. These are the top reasons why you should not include LLC in your logo and use the resulting LLC logo:

1. You will have to change your logo if you change from an LLC
2. It will increase the risk of confusion
3. It will make your logo harder to trademark
4. It will look unprofessional
5. It will reduce recognition
6. It will look cluttered

1. You will need to re-trademark your logo if you change your business structure from an LLC: If you ever decide to change the legal structure of your business, you would need to update your logo – which can be costly and time-consuming. Plus, if you have trademarked your logo, you will have to start the process over again.

2. Risk of Potential Confusion: It can confuse some customers and clients who may not understand what “LLC” stands for and see it as legal jargon.

3. More difficult to trademark: Logos that include “LLC” are generally more difficult to trademark because they all share the same three letters. This, in turn, makes the logos less distinctive, which increases the chances that they will be considered too similar to register.

4. Unprofessional appearance: When people see “LLC” in a logo, they often think the company is small and inexperienced. Including “LLC” in your logo may make it appear that your company is less professional or established than it is. This can turn potential customers away before they even have a chance to learn more about your company.

5. Lower recognition: “LLC” is a generic term, so including it in your logo could make your brand seem common. The letters “LLC” are not unique to your company, so they will not help customers remember or identify your brand.

6. Cluttered appearance: It can be challenging to incorporate “LLC” in a logo and not affect the aesthetics of the logo and not make it look cluttered and messy. A clean and simple logo is often more effective than an overly busy one.

Ultimately, the most successful branding is clear, simple, memorable, and distinctive. Excluding “LLC” from your logo promotes all of these branding goals. That’s why the biggest brands do not include “LLC,” “Inc.” or “Ltd.” in their logos.

What is the Difference Between an LLC, and LLC Logos, and Do I Need to Put LLC in My Logo?

An LLC, or limited liability company, is a business structure that provides its owners with limited liability protection. This means that if the LLC is sued, the owners are not personally liable for the debts and liabilities of the LLC.

An LLC logo is a logo that includes the corporate structure abbreviation “LLC”.

Including “LLC” in your logo does not increase any legal protection for your business and brand. In fact, including “LLC” in your logo could actually be detrimental to your business and limit future marketing options. For these reasons, it is usually best to avoid putting “LLC” in your logo.

WHY YOU SHOULD FORM AN LLC

Top Reasons to Form an LLC

Even though “LLC” should not be included in your logo, there are still important advantages to forming an LLC.

These are the top reasons to form an LLC:

1. LLCs provide personal asset protection. This is perhaps the biggest advantage of an LLC. Members of an LLC are not personally liable for debts or liabilities of the LLC. This means that if your LLC is sued, the court can only go after the assets of the LLC, not your personal assets.

2. LLCs are relatively easy and inexpensive to set up.

3. LLCs offer flexibility in how they can be managed. You can have a single member LLC (which means you are the sole owner), or a multi-member LLC. You can also have an LLC that is managed by managers, rather than by the members.

4. LLCs offer tax benefits. An LLC can choose to be taxed as an S corporation, which means that the LLC’s income is only taxed once at the individual level.

5. LLCs can help you build credibility with customers and vendors. Having an LLC can make your business seem more professional and established.

6. LLCs can give you flexibility in how you raise money. If you want to bring in investors, you can do so by selling membership interests in your LLC.

7. LLCs can help you stay organized. Having an LLC can help you keep your business and personal finances separate. This can make it easier to track expenses and prepare your taxes.

THE PROCESS OF FORMING AN LLC

How Do You Form an LLC?

Forming an LLC is a straightforward process. Here’s an overview of the process of forming an LLC.

1. Choose a business name. The name you choose for your LLC must be available and not already in use. This means that the name must be distinguishable from the names of other businesses registered with the state. You may also need to file a “Doing Business As” (DBA) name if you want to conduct business under a name other than the LLC’s legal name.

2. File paperwork with your state. Once you have chosen a name, you will need to file Articles of Organization or a similar document with your state’s LLC office. This document will include information such as the LLC’s name, purpose, and member details.

3. Draft an operating agreement. This is not required in all states, but it is a good idea to have one in place. The operating agreement outlines the LLC’s rules and regulations, including how decisions will be made, how profits and losses will be distributed, and other important details.

4. Register with the IRS. An LLC must obtain an Employer Identification Number (EIN) from the IRS in order to open a business bank account and file taxes. The process for obtaining an EIN is fairly simple and can be done online.

5. Comply with state requirements. Depending on the state in which your LLC is located, there may be additional requirements for compliance. These could include getting a business license or permit, registering with the state tax office, and more.

Once you have completed these steps, you are ready to start operating your LLC. Note that you may need to file additional paperwork and obtain licenses and permits, depending on the type of business you are running.

FREQUENTLY ASKED QUESTIONS

1. Does my logo have to match my LLC name?

No, your logo (or brand) does not have to match your LLC name. Your logo (or business name) is the brand you use to market to your clients, whereas your LLC name is the legal entity name of your firm. They can match, but they do not need to match.

2. Should I put LLC in my domain name?

No, you are not legally required to put “LLC” in the domain name for your business. In fact, if you look at most websites on the internet, the vast majority do not include any corporate indicia (e.g., Inc., Ltd., or LLC) in their domain name.

3. Do I need to trademark my business name and logo separately?

No, but it may be the better option. Although you can apply for trademark protection for your name and logo together in the same application, the result is limited protection because you will always need to use the name and logo together. Names and logos are considered separate trademarks and separate trademark registrations will result in greater and more flexible protection.

Take the Next Step and Legally

Own Your Trademark

Schedule a Free Strategy Call

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 Product Name: The ULTIMATE GUIDE

June 27, 2022 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Attorney

This is our ultimate guide to how to trademark a product name.

Most business owners and entrepreneurs know the importance of product names. But how do you legally protect the name of product? That’s where trademarks come in.

If you want to quickly:

Understand the basics of trademarking a product name
Learn why you need to trademark the name of your product
Discover the advantages of trademarking product names
Identify risks of not trademarking a product name
How to trademark the name of your product
Figure out when to trademark your product name
Start a plan to legally protect your product name

Then this guide is for you.

Let’s get started.

PART I: THE BASICS OF TRADEMARKS FOR PRODUCTS

In this section, we’ll go over the basics of trademarks and how they protect product names.

The best way to legally protect the name of a product is to trademark it. Trademarks protect names, including the names of products. With a trademark, you can legally protect the name used to identify your product. Trademarking your product name is official confirmation that you legally own it. Trademarking your product name will give you exclusive rights to use it and prevent others from using the same or similar name in your industry. Trademarking the name of your product is the best way to protect it.

What is a trademark?

A trademark is a distinctive word, symbol, or phrase that identifies products from one enterprise and distinguishes them from products from the competition. Trademarks protect names, especially the names of products. Buyers use trademarks to pick among brands of products.

Where do you get a trademark for your product name?

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

What kinds of product names can be trademarked?

The most common product trademarks are words (names), phrases, logos, and designs. Examples include abbreviations and unique names, like these:

PART II: WHY YOU NEED TO TRADEMARK THE NAMES OF YOUR PRODUCTS

In this section, we’ll explore the reasons why trademarking product names is so important, the advantages of trademarking a product name, the risks of not trademarking your product name.

Product names, like all trademarks, represent brands. They help customers find the products that they like and distinguish them from the competition. After all, your product name is how most customers will identify and remember your products. That’s why trademarking a name, including trademarking a product name, is so important and why you want to ensure that your product name is protected.

Top Six Reasons to Trademark a Product Name

Trademarking is a powerful tool to stop unauthorized use of your product name by copycats. Here are the top six reasons why:

1. Exclusivity. Trademarking your product name gives you the exclusive right to use it. Typically, only one business can use a product name in an industry, and it is usually the one that trademarks the product name first.

2. Legal Ownership. When you trademark a product name, no one else in your industry can register it, take it from you, and force you to rebrand. Here again, typically only one business can own a product name in an industry, and it is usually the one that trademarks the product name first.

3. Distinctiveness. A trademark for the name of your product helps distinguish your product from others on the market, which means that buyer loyalty for your high-quality product flows to you.

4. Cost-Savings over time. Trademarking your product name comes with important legal rights and presumptions that make enforcing your ownership rights less expensive if someone else tries to use your product name without permission.

5. Deterrence. When you trademark your product name, you can use the ® symbol with it. This can deter would-be copycats from trying to use your product name and can help you enforce your rights if someone uses your product name without permission.

6. Value. Having a registered trademark for your product name can also make it easier to sell or license it because potential buyers or licensees will know that they can use the name without the risk of infringing on someone else’s rights.

These are important advantages that can help a forward-thinking business.

Top Four Risks of Not Trademarking A Product Name

Choosing not to trademark a unique product name can have serious consequences. Here are the top four risks you face when you don’t trademark your product name.

1. Risk of a rebrand. If someone else trademarks your product name first, they’ll own the exclusive right to use it nationally. You’ll likely have to rebrand.

2. No exclusivity. Other businesses may use your product name and you won’t be able to stop them. As a result, imitators can benefit from your product’s goodwill, and you name may become worthless if too many companies use your name.

3. Lost sales due to confusion. Your business could suffer from a loss of revenue if customers confuse your product with one sold under a similar same.

4. Higher costs in the long run. You will likely have to spend more on monitoring and enforcing your product name trademark if it is not registered.

These are just some of the risks that you avoid when you trademark a product name.

Do you need help with your trademark?

PART III: HOW TO TRADEMARK A PRODUCT NAME

In this section, we’ll walk through the seven key steps to trademarking a product name.

Trademarking a name, especially a product name, involves federal law and legal procedures. Plus, every path to trademark registration is different. Still, every successful trademark for a product name involves the same seven steps.

Here are the seven essential steps to trademark a product name:

Choose a Unique and Protectable Brand Name for Your Product
Hire a Trademark Attorney for Your Product Name Trademark
Perform a Trademark Search for the Name of Your Product
Collect the Required Information and Develop Your Strategy
Prepare and File a Trademark Application with the USPTO
Navigate the Trademark Examination Process
Use the ® Trademark Symbol with Your Trademarked Product Name

1. Choose a unique and protectable brand name for your product

The key to getting a federal trademark is to start with a unique and protectable name (i.e., one that is trademarkable). This name should be able to distinguish your product from other products 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.

The best trademarks are distinctive and memorable. They are strong because they excel at reflecting brands.

Some trademarks, however, are weak because they only describe aspects of products or services. Others are legally unprotectable, meaning anyone can use them.

How do you select a product name that is unique and protectable?

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. (think: EXXON for oil or LYFT for ride-sharing). Another option, if you’re looking to trademark a product name, is to use words that are unrelated to your product. (think: Apple for computers or Amazon for online retail).

A third option if you’re looking to trademark a product name, is to brainstorm terms and phrases that suggest features, aspects, ingredients, or results of your product. (think: SNUGGLE for dryer sheets or IRISH SPRING for soap).

Lastly, if you’re looking to trademark a product name, try to avoid using descriptive or generic names or terms. These product names are difficult to trademark and tend not to be unique by their very nature. (think: “speedy” for delivery services or “sweet” for candy).

If you aren’t sure whether your mark is protectable (i.e., strong), you may be better off consulting an experienced trademark attorney. In any event, knowing the kinds of trademarks is very important. Otherwise, you could be wasting your time and money.

2. Hire a trademark attorney for your product trademark

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.

3. Perform a trademark search for the name of your product.

Before you can trademark your product name, you need to ensure that it’s not already been trademarked by another business. You can do this by conducting a trademark search for your brand name. This search will help you find out if any similar or identical trademarks are already registered.

This is a crucial step in the trademark registration process.

Why?

First, you want to make sure that your trademark is not already in use by someone else. Second, searching through existing trademarks can give you a better understanding of what is already out there and help you develop a more unique and original trademark for your business. Finally, if you do not search for similar trademarks before filing your application, you risk having your application denied or your trademark being declared invalid.

Additionally, if you have already started using your trademark in commerce, it is important to search to make sure that you are not infringing on someone else’s intellectual property. If you infringe, you could face legal action and be forced to stop using your trademark.

THE USPTO’S TESS SYSTEM

The objective here is to ensure that your product name is not similar or easily confused with someone else’s mark. This, in turn, can help you avoid any potential legal issues down the road and help you to ensure that your trademark is protectable and unique.

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.

4. 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.

5. File a Trademark Application for Your Product Name

After you’ve had a trademark search performed and are confident that your product name is available, the next step is to prepare and file a trademark application with the USPTO.

Note: You will need to verify your identity and have a USPTO.gov account.

You will need to provide the USPTO with precise information, including:

The legal owner and user of the product name
The legal use basis for your trademark application
The products and services with which the product name is used (or will be used)
Proper legal evidence of your use of the product name (not every use qualifies)

Mistakes in this step are among the top reasons that the USPTO rejects trademark applications. Also, the USPTO severely limits changes to applications after they are filed. As a result, many mistakes cannot be corrected – even some spelling errors.

6. Navigate the application process at the USPTO

The USPTO will review your trademark application to make sure it meets all the requirements for registration. They will also examine your product name to determine if it is similar or could be confused with an existing trademark. This examination process can take several months, so it is important to ensure that there are no mistakes in your application.

Beware: The USPTO has, for many years, a perpetual backlog of applications. This means that it will be several months before a trademark examiner looks at your trademark and examines it. The current backlog is over six months, and the entire trademarking process takes about 12 months on average to complete.

Working with a trademark attorney can help ensure that your application is complete and correctly filed, to avoid further delays. – mention strategic calls here

7. Use the ® Trademark Symbol with Your Trademarked Product Name

Using a trademark symbol is an important signal to consumers (and the competition) that your product name represents your brand.

There are three trademark symbols. They are:

the letters TM
the letters SM, and
the letter R in a circle — ®

The letters TM are a trademark symbol for unregistered trademarks (marks for products like shoes or computers).

The letters SM are a trademark symbol for unregistered service marks (marks for services like legal services).

The ® is a trademark symbol for Federal trademarks (trademarks or service marks registered with the U.S. Patent and Trademark Office). The ® trademark symbol is reserved for federal trademarks only – after you have a federal trademark registration.

PART IV: WHEN TO TRADEMARK A PRODUCT NAME

In this section, we’ll explore when you should trademark your product name. Waiting too long can have serious consequences.

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

Why?

Firstly, the trademarking process can more than 12 months in most cases. So, the sooner you start, the sooner you can legally own your product name. Plus, starting early will reduce the time your product in on the market without full trademark protection.

Secondly, starting early maximizes the chances that you will own the trademark for your product name. If a competitor files for the same or a similar name, the U.S Patent and Trademark Office may reject your 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 unique product name, you should file for a product trademark as soon as possible. Filing for your trademark is the easiest way to avoid costly legal battles over ownership of your product name.

So, the answers to the questions “when should I trademark my product name” or “when should I trademark the name of my product” are the same. You should trademark a product name as soon as possible.

PART V: HOW TO PROTECT THE NAME OF A PRODUCT

Trademarks protect product names and are important. But, trademarks are just part of the plan. Here’s the rest.

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 product trademarks: Trademarking product 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 business.

PART VI: FAQS ABOUT TRADEMARKING PRODUCT NAMES

1. Can product names be trademarks?

Yes. Business names, product names, logos, and labels can all be trademarks. You acquire a trademark by using your mark in commerce—in other words, using it when you conduct your business. You should register your product name trademark with the U.S. Patent and Trademark Office (USPTO) for the most protection.

2. Does a trademark protect a product name?

Yes. A trademark typically protects brand names and logos used on goods and services.

3. Do I copyright or trademark my brand name?

You trademark brand names, like the names of products. Copyright laws protect original artistic/creative work. Trademark laws protect items that distinguish or identify a particular business or its products or services from the competition.

4. How do I trademark a product name?

To trademark a product name, you’ll need to file a trademark application with the USPTO. The application will require you to provide information about your product, as well as the proposed mark. Once the application is filed, it will be reviewed by an examining attorney to ensure that it meets all the legal requirements for registration. If it does, the mark will be published in the Official Gazette, and anyone who believes they would be harmed by the registration of the mark will have an opportunity to file an opposition. If no one files an opposition, or if the opposition is unsuccessful, your mark will be registered and you’ll be able to use it to brand your product.

5. What are the benefits of trademarking a product name?

There are several benefits to trademarking a product name, including:

It can help you establish and protect your brand identity.
It can help you distinguish your products from those of your competitors.
It can help you build customer loyalty and goodwill.
It can give you legal recourse if someone else uses your product name without permission.
It can help you avoid costly disputes down the road.

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 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?

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).