Trademark 202: Your Step By Step Guide

trademark-202

The first part of our Trademark interview, with attorney Venus Griffith Trunnel, gave you an overview of why it is so important to trademark your business. Now, this follow-up article walks you through each critical step of the trademark process.

Again, Mrs. Trunnel, shares her expertise to help entrepreneurs like you protect your business and the hard work you put into building your brand. Her interview continues below…

7. When launching a small business should entrepreneurs pay for a name search, or can they just check uspto.gov to make sure their intended business name is available?

Yes. A name search is always recommended prior to filing a trademark application. It can save the entrepreneur money in the long run as stated above. While it is necessary to check the USPTO database, some businesses may be using the same or confusingly similar mark and may have “common law” rights in the name. (Common law rights in a mark are rights given to the owner of a mark through use of the mark in commerce.)

For example, XYZ Bakery has been operating in California for over 10 years and is well known in the state but has not filed a trademark application with the USPTO. XYZ-1 Bakery wants to open its business in Texas and wants to take their business nationwide. XYZ-1 files a trademark application without a name search. XYZ-1 runs the risk of XYZ filing an opposition to the trademark application and not being able to expand its business into California because of the common law rights in the name owned by XYZ Bakery.

8. What’s the process of trademarking a business name? How long does it take? What’s the average price range?

After completing and reviewing the search report, the next step is to file the trademark application with the USPTO. If the entrepreneur is already using the mark, then they will file a “use-based” application. If the mark has not been used, the entrepreneur can preserve their rights in the mark by filing an “intent-to-use” application. Both applications cost the same amount initially, but an intent-to-use application requires additional fees before a registration is issued.

If there are any problems with the application, then the USPTO will send an Office Action to inform the owner of the problems. Applicants have six (6) months to respond to the Office Action. If all problems are resolved, then the USPTO will approve the application for registration and publish the mark in their Official Gazette to give third parties 30 days to file an opposition to the application. If no oppositions are filed, then the mark will move forward to registration, and the USPTO will issue a Certificate of Registration for the mark. The entire process can take on average from 6 months to 2 years. However, once the trademark is registered the owner can claim priority based on the date the application was “filed.”

The average price range for a trademark varies depending on the costs charged by the attorney for preparing and filing the application. However, the USPTO basic fee for filing an application online is $325.00 per class of goods or services, and some simple online applications may be filed at the reduced fee of $275.00 per class of goods or services. Please check www.uspto.gov for the current schedule of fees.

9. How long does a trademark last? Is there an annual renewal fee to consider?

U.S. trademark registrations last for 10 years and are renewed every 10 years. However, after the first five years, the trademark owner must file an Affidavit of Use called a Section 8 Affidavit in order to maintain the registration. The fee for this Section 8 Affidavit is currently $100 per class of goods or services, plus the attorney’s fees to prepare and file the Affidavit. Additional fees will apply if the Affidavit is filed late and/or filed with a Section 15 Affidavit of Incontestability.

10. Should entrepreneurs utilize online sites like LegalZoom or Nolo for their trademark services, or is it better to consult with a local professional?

It is always better to consult with a local trademark attorney. While online sites like LegalZoom and Nolo offer trademark services at reduced rates, they are not authorized to provide legal consultation. An entrepreneur could make costly mistakes without the proper consultation and guidance.

Special thanks to trademark expert, Venus Griffith Trunnel for sharing her wisdom with our community of entrepreneurs here on BrandMakerNews.

Don’t let your hard work go down the drain. Let the answers above guide you through the trademark process. Get the legal protection you need to build an unstoppable brand.

To get an in-depth explanation of why it is so important to trademark your business, check out part one of this series.

One Comment

  1. Jennifer Buturla
    Posted July 13, 2011 at 12:39 PM | Permalink

    I recently filed a trademark application and have a question; I filed the trademark in my personal name. I formed an LLC to do the business of this brand in. The LLC is an abreviated version of the trademark wording……Should they match exactly?
    Also, should my trademark application remain in my personal name or be applied for as an LLC?
    Any advice is much appreciated.

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