The Basics of Trademark Registration
By Don Thornburgh, Trademark Attorney
Whether your company is a start-up or a well established business, it is important to promote and protect the company’s name, and in many cases, brand names as well. Because the California Secretary of State’s office does not perform a trademark search when approving company names, you could be using a name that infringes another party’s trademark. Before investing significant resources in developing or registering a trademark, it is prudent to investigate whether there are any identical or confusingly similar marks already in use in the United States that may bar the registration or use of your mark. The amount of research required depends on the circumstances.
Trademarks serve as “source identifiers” for products and services. A mark can consist of ordinary words (a “word mark”), or it can consist of images or designs (a “design mark”), or a combination of both.
To register a trademark, in most cases, the first step is to have an attorney perform a computer screening search. This search usually costs less than $300. While this step is quick and relatively inexpensive, it is a preliminary search that will only find the exact word marks (and sometimes very close marks) the electronic database of the United States Patent & Trademark Office (the “USPTO”).
If there are no direct conflicts or if the results are ambiguous, the next step for most word marks is to obtain a more comprehensive search report from a specialized trademark search company, at a cost of about $575. The search will include an extensive analysis of the computer database, using a more sophisticated search strategy to locate marks that may be similar even if spelled differently. The resulting report also will contain information from other databases, which include common law references such as trade journals. For a variety of reasons, such as the time delay in the processing of information, no search can uncover all potential problems. Trademark counsel will review the report and provide an analysis of the level of risk based upon the information disclosed in the report. In some cases, a more extensive search, such as a company name search or an entertainment availability search, might be suggested, as circumstances may dictate.
Once the level of risk has been assessed, the next step is to apply prepare the trademark application itself. The U.S. trademark office charges $325 per class (if filed electronically, or $375 per class if filed on paper). This process will take approximately six to eight months after the initial filing, with the exact turnaround time depending on numerous factors unique to each application.
If you have not begun to use the mark at the time you file, you can submit an “intent to use” application. Filing based upon intent to use is desirable because it establishes a constructive use date as of the date of filing, which can be very important if another company begins using the mark before you do. An intent to use application involves additional steps, including the filing of a declaration of use, specimens, and the payment of an additional fee to the trademark office when you begin using your mark.
A third basis for obtaining a registration is the existence of a foreign registration. In such cases, you will need a certified copy of the foreign registration and an English language translation. The costs for these items vary and will be in addition to the costs described above.
The registration of trademarks can be a valuable addition to the assets of your company. Consider discussing your options with legal counsel experienced with trademark matters.
Don Thornburgh is an intellectual property attorney and principal at Don Thornburgh Law Corporation (www.donthornburgh.com). You can reach Don by e-mail at don@donthornburgh.com