(1) General Information

Common questions:
trademark-DIY
IPfever-way

Take a look at Page #1 of TEAS plus form. At the very bottom, there are two questions.
TEAS plus P1

Question #1 asks if you're an attorney.

It's automatically marked "Yes." Because you're not an attorney, you should choose "No."

 

Not sure if you can do it alone? Re-visit "Should you hire an attorney?"

Question #2 asks if you wish to open an application previously filled-out and saved in your computer.

If you completed TEAS form before, you might have a save file. If you open the file, the form will be automatically filled out with your old answers. Otherwise, you can just ignore this question. By the way, you can save your answers to the form only at the last stage of the form.

When you are done, you can use  button to save your answers and proceed to next page.

 

Simply not comfortable with all those buttons? "Get It Done" by a professional

Should you hire an attorney?

Getting a trademark, you can either "do it yourself" or hire a professionals.

Let's compare these two options.

Do it yourself

Professional Help

Mark

Your choice of wording and design

Likely a better wording and design

Registration

online trademark search/registration

via your representative

Cost

USPTO fees + $100 commercial service fees

USPTO fees + up to $2,000 attorney fees + design cost

Trademark registration is not too complicated.

Nonetheless, mistakes can cost your time and money. If you are not going to hire an attorney, you should read and watch everything on USPTO's Trademark Basics before you proceed. On a side note, even if things go smoothly while registering trademark, lawyers can improve the strength of the registered trademark significantly and designers will give your logo/design a professional look.

USPTO offers an online application form through TEAS (Trademark Electronic Application System).

There are various forms including TEAS plus, TEAS RF (Reduced Fee), and TEAS regular application types. Latter forms are subject to higher fees but offers some flexibility to applicants. Assuming you don't make any mistake in filling out the form, you can save up to $100 by choosing TEAS plus. TEAS forms are web-based, guided, multi-page forms that anyone can learn the process as-you-go.

 

Go back to find out more about Trademark Application.

How much does a trademark registration REALLY cost?

Above is a cumulative showing of trademark fees (government fees only).

Assuming you use your trademark for a single type (category) of product/service, an online application fee can cost as low as $225, plus a $125 one-time maintenance fee after 5 years of use and $425 every 10 years. Total $1,200 over 20+ years? Not much right?

However, if you don’t do it correctly, there are penalties.

When you fail to provide all necessary information at filing, you will be subject to fees varying from $50 to $150 per incident. There are also optional filings that might strengthen your trademark. And if you miss a date on maintenance fees, you may be penalized. Those penalties can accumulate well past the initial filing fee.

Aside from that, there are legal fees.

Many attorneys charge a flat legal fee of $1000-$2000 per mark plus government fees. If your mark experiences rejections from the USPTO, they might ask for more money on an hourly basis during subsequent actions.

As a result, your cost can vary widely depending on your trademark and how you proceed with it.

[updated to reflect increase in fees in 2017]

You can call your coffee house “The Coffee House,” but …

Common questions:
mark-type

There are mainly two types of trademark, a standard one and a stylized one.

A standard one (called a standard character mark) establishes your trademark rights to the written words of the mark whereas a stylized one (called a stylized/design mark) to the expression of the words in a certain way.Coca-cola_stylized_logo

For example, "Coca-Cola" is a brand name of a certain soda drink, registered to the Coca-Cola Company. But you more often see the name in a particular style as shown here.

Nowadays, the use of stylized logos and designs is very common because it effectively sets apart the company/brand from competitors'.

A common choice is Standard Character.

Although virtually all companies use at least some design/style elements in their trademark, still most of the companies register their trademark in a standard character format. Why?

  1. They don't want their trademark right to be limited to a specific design. In fact, if you registered your brand name in a standard character format, any style/design of that registered name can't be used by your competitors.
  2. Also, once registered as a stylized/design mark you can't change the design or style of the mark. Companies often update their design and style elements to modernize them.

Thus, it's is a rule of thumb that a standard character format affords a better protection.

A Styled/Design Mark works a bit differently.

Let's say IPfever registered a stylized trademark:IPfever_logo_example After a few years, a website devoted to teaching Japanese language and culture dubs itself Japanese Fever, "JP fever" in short, and starts using this logo:JPfever_example.

Do you see any problem? Although they changed a letter, they look too similar. There's likely an infringement case.

However, if IPfever were registered as standard character, it would've been a different story. Because "fever" in Japanese Fever can be considered as a descriptive word for passion and enthusiasm for Japanese culture, it likely has a leeway.

But it should be noted that stylized/design marks have their own limitation. If Japanese Fever  jpfever_example, I say this one differs in style so much to escape from a potential trademark infringement claim.

You have to choose, but choose wisely.

You might say you would just register both standard character and design marks. Problem solved? Well, it's not that simple.

You can't claim "the coffee house" trademark for your coffee house because that's what people call any coffee house. It's reserved for everyone. But you may register this stylized/design mark.

the_coffee_house

You probably need to disclaim rights to the words, (meaning that others can literally use the same name) but it still protects you from something like this knock-off.

the_coffee_shop

So, figure out what's the strength and weakness of your mark, and then choose wisely.

 

Have you chosen a suitable mark-type? Ask a lawyer

Go back to see other topics in the Basics in 10 min.

Tax forms are complex and lengthy, but they can’t go south.

Federal trademark registration has become a standard practice for many reasons including (1) it’s inexpensive (as low as $225 to apply online); (2) due to the internet, no one does business in a single state; and (3) branding becomes crucial to even small businesses. And if I add one more to the list, it’s fairly easy.

The easiness comes with a risk.

For example, federal tax forms are usually very complex and lengthy; they are designed to make you write down all taxable incomes imaginable, even those you would never know they were considered income. A trademark application, on the other hand, is very simple and straightforward. In other words, it’s easy to fill out the forms but hard to do it right.

So there’s $99 (plus application fees) trademark registration services online.

Unfortunately, not many people see this as a problem. These services simply let you search registered trademarks online, to apply trademark online, and remind you of important dates for maintaining registration. Well, it sounds like a lot, but the United States Patent and Trademark Office (“USPTO”) offers Trademark Electronic Search, Trademark Electronic Application, and even email reminders of important dates, for free of charge.

There is a reason for such a low price.

Online registration services do provide convenient tools and ease the pain of yours, but they come with a price (literally and also in the form of a false sense of security).

 

See other topics in the Basics in 10 min.

You’ve got to “use” your trademark

Let's take a look at an interesting story:

By the time Apple Inc. debuted iPhone in January 2007, the prefix "i" had already become a thing of Apple. The inauguration of iMac series dates back in 1998. In 2003, iPod was a mega hit.

Lesser known than Apple, however, there was a startup called InfoGear Techonlogy Corporation, which developed an internet phone technology, called "iPhone."

Yes, iPhone™ by InfoGear.

specimen in InfoGear's trademark application
specimen in InfoGear's trademark application

Of course, there's nothing suspicious about Apple's iMac; the iMac trademark was first registered in 1995 by Digi International Inc. which assigned the trademark to Apple in 1998. Here, Apple did a right thing; it bought the iMac trademark before announcing iMac.

But, how about iPhone? Based on the USPTO's record, InfoGear used the iPhone trademark from 1997, and it was registered in 1999. Apple filed its iPhone trademark application in January 8th, 2007. (Steve Jobs unveiled iPhone to the world the next day).

Can Apple do that? Absolutely "NO" said Cisco who brought a lawsuit against Apple based on its iPhone trademark purchased along with InfoGear.

 

In all fairness, if Cisco proved its seriousness about iPhone in the court, we might now have "iPod 4G LTE Advanced" instead of "iPhone 7."

Who knows what Steve Jobs said to Cisco, but Cisco somehow agreed to a concurrent use of the iPhone trademark. (Apple probably challenged Cisco's iPhone trademark by saying that "i" prefix had been associated with Apple product even before Cisco's registration.) Well, assuming Cisco had a valid and enforceable trademark right, what could've happened?

Cisco would say the iPhones sold by InfoGear and Apple were both communication devices, and customers would likely be confused. Of course, Apple would say they are totally different devices; but Apple likely loses on this account.

As a counter, Apple could've argued that Cisco stopped using the trademark (thereby lost its right). Then, the followings become relevant: How many iPhone Cisco sold? How many people bought, used, knew or seen iPhone by Cisco? Had Cisco advertised iPhone? My guess is that Cisco purchased the iPhone trademark, but it really didn't think about using it much.

Are you using your trademark alright? Ask a lawyer

So, be aware that to own a trademark, you have to actually use it, which means placing your goods/services (bearing that mark) in the market.

Trademark registration provides security. For example, companies often file intent-to-use ("ITU") applications before making and selling new products. Without the ITU, mobile phone companies won't be able to announce a flagship model months earlier than actual release, nor can they push an advertising campaign for a new product before they make sales. (Announcing or even advertising is not enough to establish a use of trademark under the trademark law.)

 

Concerned about other businesses using your mark? Ask a lawyer

Trademark registration provides security. For example, companies often file intent-to-use ("ITU") applications before making and selling new products. Without the ITU, mobile phone companies won't be able to announce a flagship model months earlier than actual release, nor can they push an advertising campaign for a new product before they make sales. (Announcing or even advertising is not enough to establish a use of trademark under the trademark law.)

So, be aware that to own a trademark, you have to actually use it, which means placing your goods/services (bearing that mark) in the market.

 

Go back to see other topics in the Basics in 10 min.

Your first step to owning a trademark: choosing a mark

Common questions:
strong-mark

For a starter, you don't want to choose a mark that's fairly similar to what's already out there.

If you are making a new internet search engine, don't name it "Goggle" or "Yahou!"  Your common sense and conscience will tell you why. Similarly, don't name your search engine "Stanford Internet Search."

A clearance search can be cheaply done by a Google search. Search the names you have in mind (or what you're using already). Not only that, search goods or services that compete (or would compete) with yours. You definitely want to know what their names are.

Avoid any confusion at all cost. You probably shouldn't call any of your good/service "Coca-Cola." Nor can you call your soft drink product "Soda."

Next, your mark should stand out.

You can't name your concierge service "Luxury Concierge Service." Well, technically you can, it's a free country. However, the law won't protect your trademark because other companies should be free to say they offer a Luxury Concierge Service.

You need to be creative on this. "Kodak," I think, is a superb trademark. It's short but distinct, original but easy to pronounce. Don't worry if you're not good at making up words. A common word like "Apple" can be a good trademark for a computer electronics company.

Is your mark strong enough? Ask a lawyer

Internet-readiness

In today's world, an internet domain name is as important as a trademark.

A domain name registration does not necessarily mean that the name is taken as a trademark by others. However, you probably want to avoid someone else owning YOUR_TRADEMARK.com.

If the name in your mind is still available for a new registration, get it immediately. The domain registration costs less than $12 a year. (It's as easy as setting up an email account.) If it's owned by others, consider buying it from the current owner or finding a better name.

 

Go back to see other topics in the Basics in 10min.