Is it necessary to hire an attorney to submit a TM registration application or is it something a lay person could do?

We’re a startup and just released our first product. We want to protect our logo (both design and words) but our budget is very small. I’ve done some research and taken a look at the application form. There are some areas that will require some heavy thought…but it doesn’t seem too difficult. Am I correct in assuming that I can take this on myself?

~ California

No. You are not required to hire an attorney. Here is a quote from the US Trademark Office website:

Although not required, most applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration. A private trademark attorney (not associated with the USPTO) may help you avoid many potential pitfalls.

via http://www.uspto.gov/trademarks/basics/private_attorney.jsp

There is also the Trademark Assistance Center at the US Trademark Office. This is a phone number and email address that you can use to talk to the US Trademark Office. They provide (technical) information about the Trademark Registration Process. They can be reached at please e-mail TrademarkAssistanceCenter@uspto.gov, or telephone 1-800-786-9199.

Finally, a trademark attorney will help you with your trademark beyond the US Registration. For example, if a client has retained me to register the mark, then, the first step of enforcement of the trademark rights is simpler, because I already have the required documentation. For example, some states have additional beneficial trademark laws. Arizona allows for statutory damages in trademark disputes. A trademark attorney would be aware of these other rights and responsibilities.

Good luck with your trademark registration.

Related Posts

1. How to Find a Trademark Attorney

Are you required to hire a trademark attorney to submit a TM registration application? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

I am trying to register a mark that was refused for ‘likelihood of confusion’ with a registered mark I already own. How do I respond?

I used the exact same description of goods on both marks since they are identical products. Each mark was created to signify different weight limitations, i.e. The Mark “A” device has a capacity of 30-60 lbs. The Mark “B” device has a capacity of 60-120 lbs. (and can be made custom as well). Customers would associate Mark A as light to medium weight, and Mark B would be medium to heavy weight or could be custom made, (even heavier).

~ Florida

Hi Florida,

You can claim ownership of a prior registration by amending your trademark application. You may wish to review TMEP section 1201 et seq. This may overcome the Examiner’s refusal.

I recommend consulting with your attorney prior to making the amendment. If you are representing yourself, you may wish to interview the Examiner prior to entering the amendment.

Related Posts

1. Trademark Office Action: How to respond
2. Confusion with MLB and NBA logo?
3. Can I amend a trademark after rejection?

How do I respond to a ‘likelihood of confusion’ with a registered trademark I already own? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

I would like to use one design that incoporates the American Flag within a logo and on several products. The logo/design does not demean or deface the flag and is slight variation of it. Is this allowable and “trademarkable”? Thank you.

It depends. There are many registered trademarks that incorporate aspects of the US flag. If you would like to see some of these registered marks, you can search. Go to USPTO Trademark web site and select “Trademark Electronic Search System”, affectionately known as TESS . Do a “free form” search with the following search terms:

 (24.09.05)[DD] AND LIVE[LD]

You will get a list of over 1600 trademarks that include the stars and stripes as part of the trademark.

An Authentic US Flag will be refused trademark registration.

In general, an authentic US flag cannot be trademarked. Instead, the trademark can simulate or stylize a flag.

1. The flag design is used to form a letter, number, or design.
2. The flag is substantially obscured by words or designs.
3. The design is not in a shape normally seen in flags.
4. The flag design appears in a color different from that normally used in the national flag
5. A significant feature is missing or changed.

For additional examination guidelines for trademarks that incorporation flags, refer to Examination Guide 2-07.

Related Posts

1. How to avoid mistakes when filing your US trademark.
2. Should you trademark your band name?

Can I trademark a version of the US Flag? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Can I legally use the TM symbol before I apply for a trademark registration?

Placement and use of the TM symbol

On this page: 1. choosing the correct trademark symbol, 2. placing the tm symbol, 3. understanding the tm symbol and 4. inserting ™ into a document.

Choosing which symbol to use: ™ or ® symbol

There are two symbols commonly used to mark trademarks, they are: ® and ™.

Your business can use the ™ symbol whenever it wishes to claim a trademark. You do not need to file any paperwork or receive permission to use the ™ symbol. Use of the ™ symbol can put the competition on notice that the business considers a mark its trademark.

The ® symbol may ONLY be used AFTER the US Government grants a Federal registration certificate. The ® symbol may not be used while the Federal application is pending. Additionally, the ® symbol may only be used in connection with the goods and services listed on the registration certificate.

Understanding TM symbol purpose: Notify competitors

Even though a trademark symbol is not required, always use the correct trademark symbol with your trademark. Your competitors will be put on notice of your trademark. Then they can respect your intellectual property. Likewise, you can prevent your customers from becoming confused by always respecting the trademarks of others, whether they use the ® or ™ symbol.

Placing the ™ or ® symbol

When using your trademark, place it prominently, so people will notice it immediately. When using your trademark in printed text, use bold, italic, UPPERCASE, or a different font. Make your trademark look different from other, surrounding words. Try to use your trademark as an adjective and not as a noun. For example, “Be hip, show style, wear NIKE^® shoes”.

Either symbol is usually placed to the upper right of the word, logo or other mark. Sometimes companies list the trademarks used in the material along with the owner in the footer of their website or the bottom of a printed page. For example, “Coca-Cola^® and the contour bottle are registered trademarks of The Coca-Cola Company.” Remember, do not claim that your trademark is registered (or use the ® symbol) unless it is actually completed registered with the US Trademark office (www.uspto.gov). Only marks that have been filed, approved and granted the ribbon-original registration certificate by the US Trademark Office may claim to be registered in the US.

However, placement in other nearby or adjacent areas, like sub-scripted, may work well and could look better. The goal is for competitors to see the notification of your trademark claim.

Three ™ or ® placement techniques

There are usually three good ways to notify competitors. They are:

1. Placement of the ™ or ® symbol right near the trademark, every time it is used.
2. Placement of ™ or ® or * (asterisk) or † or (dagger) or ‡ (double dagger) symbol right near the trademark, the first time it is used and having a footnote that describes the trademarks.
3. Setting of all trademark words with bold, italic, UPPERCASE, or a different font, so they are clearly different and providing a footnote that describes the trademarks.

A footnote description might read like this for federally registered marks, when the most prominent use of the trademark is marked with a dagger.

† NIKE and the swoosh logo are registered trademarks of Nike Inc.

Or a footnote description might read like this for marks not federally registered, and, when the trademark is set off from other words with bold and UPPERCASE.

NIKE and the swoosh logo are trademarks of Nike Inc.

Inserting the ® or ™ symbol into your document

Your word processor has an “insert symbol” function or “Special Character” function in the Edit or Insert menu. These functions let you find all sorts of symbols including the ® or ™ symbol. However, I find copy and paste to be faster. That is, you can copy and paste the symbol right from this webpage into your document.

Why you almost never see the ℠ symbol

The ℠ symbol means “service mark”, which indicates services (rather than goods). However, because the abbreviation SM has another, derogatory meaning, it is rarely used. The ™ symbol works identically, and, should be preferred.

Related Posts

No related posts.

How to use the ® and TM Symbol by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Use of a comic book character name as a band name?? My band recently picked the name “Matches Malone” to go by. The name “Matches Malone” is a very minor DC comics character. After several online searches I can not find any sign that this name is trademarked. My band has started the processor making t-shirts and other products with this name printed on them. So I need to know if this is ok. Thanks, Dallas

I know how difficult it is to get a group of musicians to agree on a name. However, most bands should do two things. First, have an trademark attorney do a “trademark clearance” (which will include a professional search). Second, file for a trademark at the US Trademark Office.

This is going to add to the start-up cost for the band. It is going to take more than a couple of Gigs to pay for this. However, the name of the band is the most important asset (after your website). It is the way people will spread the word about your band. You will not know who is saying the name of your band, and, you will not be able to contact them should you need to change the name. For these reasons, bands really need to do a little extra, professional trademark work.

There is one other reason that most bands need to protect their name. Most bands become an “overnight success” in just three or four years. In other words, many bands now develop through online marketing in addition to live performances, over a period of time. The exception to this is when there is a real advertising budget, for example, when a band is recording for a label. When a label in involved, they clear the name of the band before the first t-shirt is ever printed.

So, a name-change for a band that is brought on by a trademark problem can be really devastating. It literally can destroy years of marketing work, and, it will most likely happen as you are finally getting the word out about your band. Literally, you will disappear from your local public’s eye as you are forced to change your name. In other words, as you get more successful, and your name gets around more, the more likely a senior trademark holder will complain about your use of your name (if it is improper or infringing.)

If your budget is really, really tight. You might consider self-filing a US Trademark application at the US Trademark Office. The filling fee can be as low as $275 for a single class. If you plan to do more than just live performances, I recommend two classes at double the cost. Then, you can protect both your live performances and sales of pre-recorded music, like CDs, DVDs, downloadable music, etc. A trademark registration that hangs around for five years or longer can become incontestable, if you submit the right affidavits at the right times. If you self file, take your time. Be sure to read the article about avoiding trademark mistakes.

Trademarks do not have to be registered. Trademarks spring from their use under the common law. Most comic book characters are protected as trademarks. It may not matter that you did not find a registration, DC Comics might complain later, much later. Trademarks protect people from becoming confused about who is providing them with stuff. If the public assumes there is some connection between your band and DC Comics, you will have trouble eventually. Even if the public does not make that assumption, DC Comics may still complain (rightfully).

If you are serious about this name, get some help from a trademark attorney. There could be other factors that might indicate that this name would be available.

Related Posts

No related posts.

Should you trademark your band name? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer