Beebe Law PLLC​

Generally speaking, a Trademark or service mark is how customers recognize and differentiate you in the marketplace from other competitors. It's your "brand" and a brand that deserves protection.  If you think about it, a company’s trademark(s) are among the most valuable business assets and it is always a good idea to protect your most valuable assets, right?

What is a Trademark?

The United States Patent and Trademark Office (or “USPTO” for short) explains that “[a] trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” Trademark = source of goods.  Service mark = source of services.  Both “trademark” and “service mark” are often collectively referred to as a “trademark.”  A Trademark, however, is not the name or description of a particular thing, nor is it necessarily your company name (although some businesses choose to have it be one in the same).

Examples of Popular Trademarks:

• A business name or other word mark that represents your business.  E.g., “Under Armour.”
• A business logo or other identifying mark that represents your business.  E.g., Twitter “bird” or "t" icon that is used on websites.
  
• A slogan or catchphrase.  E.g., “A Diamond is Forever” slogan for De Beers jewelry.
  
• A color that represents your business or brand.  E.g., the “Tiffany Blue” color.​

Different Trademark Symbols and Their Meanings:

It’s easy to get confused with the symbols that you see after a logo, name or slogan.  What the heck is the circle with the "TM" in the middle mean?  Never seen the circle with "SM" in the middle before?  What about the circle with the capital "R" in the middle?  The following may be helpful:

(TM) = you are claiming a Trademark but doesn't signify that it's federally registered.

(SM) = you are claiming a service mark but doesn't signify that it's federally registered.

(R) = you are claiming a Trademark (or service mark) and stating that it has been formally registered with the USPTO.

Different “jurisdictions” of Trademarks.

Trademarks typically fall into one or more of four (4) different categories:

• Common Law Trademark.  A “common law” trademark is established when you use the mark in commerce in a specific geographical area.  For example, you come up with a name for your pool company and start using in to offer pool cleaning services in Phoenix, Arizona.  No registration is required for common law trademark rights, albeit limited rights, to apply.  
• State Trademark. A “state law” trademark is one where an individual/business registers their mark, at the state level, with the office designated for the specific state.  Each state has a different office for registration.  This is often significantly cheaper than a Federal registration (Arizona is approximately $15.00), gives you the ability to enforce the trademark thought the entire state, and can provide you with some statutory protections for that mark within the state.
  
• Federal Trademark.  A “federal trademark” is one where an individual/business registers their mark, at the federal level.  Here in the United States, the registration is with the United States Patent and Trademark Office and generally provides you protection, for your mark, thought the United States.  This is definitely more expensive than the state registration, typically a few hundred dollars per class registration (there are 45 different classes) on top of the filing fees, but provides you a lot stronger protection and comes with statutory remedies against infringers.
  
• International Trademark.  An “international trademark” is one that can cover countries outside of the United States and can be important if you have customers outside of the United States or if you sell online where your trademark is viewable in other countries.
  

Typical Trademark Registration Timeline

State Trademark: If registering a trademark in the state of Arizona, the typical processing time is two to three weeks if review is needed, less if it doesn't.

Federal Trademark: There are many factors that can impact how long it takes to federally register a trademark, including your filing basis, but generally speaking, it typically takes 12 to 18 months to work through the various states of the registration process.  “Filing basis” simply refers to the state that your trademark is in and falls into one of five (5) categories.  The first two, Section 1(a) (where you are using the mark in commerce already) and Section 1(b) (where you aren’t using the mark yet but intend to within the near future) are the most common for new or US centered businesses.  The remaining three (3) Section 44(d), Section 44(e), and Section 66(a) all deal with foreign applications.​

Reasons You Want to Trademark Your Company’s Brand.

As signaled to above, it is not mandatory to register your trademark.  You could claim a common law trademark in your general geographic area, however, as compared to a state trademark or even the stronger federal trademark registration, your legal remedies against those who infringe upon your trademark can be relatively limited and you could risk customers, intended for you, being diverted to a competitor which results in loss of revenue for you.

Advantages of a registered trademark can include, but are not limited to, the following:

• Provides you with the exclusive rights to use your mark for marketing of your type of good/service throughout your state (if state registered) or the entire United States (if federally registered) forever - well, so long as you can show you are still using it and file timely renewals anyway.  You may even be able to stop others who are using similar marks to yours as well which helps prevent consumer confusion.
• If someone else tries to use your mark, or a confusingly similar mark, that person using the unregistered mark must prove that their use of the mark is more superior to that of the registered mark holder.
  
• Having a registered mark shows consumers that your business is more sophisticated, thus potentially building trust with your customer base.
  
• Having a registered mark shows potential business partners in the future that you have a higher level of sophistication than if you didn’t have such registration.
  
• A federally registered trademark can be recorded with the U.S. Customs and Border Protection to help prevent counterfeit goods from being imported into the United States.
  
• A federally registered trademark allows you to more easily obtain international registrations if/when you need it.
  

​Using Your Trademark Correctly

In order to appropriately preserve the mark's character, you want to ensure that you are using it correctly.  To think of it another way, a trademark is an adjective, not a noun or a verb.  Tips for using a mark correctly:

• Never use the mark as a verb.  Example: You can make a copy of a document using a Xerox® copier, you cannot "xerox" it.
  
• Never use the mark as a plural or possessive. Examples: Kids play with Lego® bricks, not legos; you love to eat Hershey® chocolate bars, not Hersheys.
  
• Capitalize the mark, as may be appropriate. Examples: Xerox, Home Depot, and Under Armour.
• Use the word "brand" if you need help clarifying the status of a mark. Example Oreo® Brand cookies.
• Always use the generic description of the goods in combination with the mark. Example: I love wearing Tiffany® jewelry with my Nike® brand shoes!  However, many people tell me I look like a mix-matched nerd when I wear my Tiffany jewelry and Nike brand shoes.  What do those people know about style anyway?
  
• Give proper notice.  It is important to put a trademark symbol next to the mark when it is used.  The r-in-a-circle symbol ® is for federally registered trademarks.  The superscript TM™ or SM℠ symbols are for unregistered marks.  Be sure to put the appropriate symbol next to the mark and not the generic description.  Example:  write it as Oreo® cookies, not Oreo cookies®.
  

The point is to provide "adequate notice" that you consider the word, phrase, etc., to be your mark.  That said, you don't have to use it every time you use the mark.  A good rule of thumb is to use the symbol the first time a mark is used in a document or label, and occasionally thereafter.  Similarly, some manufacturers will put a note on the product label or document listing all of the various marks, indicating the trademark ownership.  Example: "Scotch® and Magic Tape® are Registered Trademarks of 3M Corporation".  On a website, however, many companies, especially with large portfolios of trademarks, will have an entire separate webpage dedicated solely for listing out all of the marks.  Examples: Thompson Reuters has a "Trademark notice" page (scroll to the bottom to see their monster list) and Google has created a "Brand Elements" page. 

New Brand?  Tips to Avoid You Committing Trademark Infringement

We get it, you're excited to start your new company and you're trying to come up with a cool name. However, rushing to market without having done proper due diligence can be a very costly mistake in the long run.  You don't want to spend time and money on setting up a company, getting a domain name, setting up your store, purchasing branded products, and create advertising content across various social media only to find out that your mark, or something substantially similar, is already in use by a competitor.  In those circumstances, you may, among other things, be ordered to terminate use, in all ways, destroy any goods and advertising materials that have infringing marks on it, and take down/cease using any marketing channels, including social media accounts.  All that time, money, and effort ... down the toilet.

In order to minimize the chances that you'll be on the receiving end of a cease and desist letter or worse, be served with a complaint for federal trademark infringement, below are some tips to avoid a trademark infringement claim:

• Do your research.  Before you even get into the industry, you should be aware of who your competitors are, how they market, and what words and symbols they claim as trademarks.  
  
• Don't copy an existing brand. It's not okay to use someone else's brand name, especially if you are trying to break into the same industry.​
  
• Don't modify an existing brand. It's rarely a safe bet to think that modifying an existing trademark by a single letter will somehow change the distinctiveness of a brand such that it will set you apart from a competitor.  Adding an "s" or a "y" or some other letter to an existing trademark will likely be seen as trademark infringement due to a likelihood of consumer confusion.
  
• Run a search.  It is important to run a trademark search not only through the US Patent and Trademark Office search tool, but also through state registrations, and elsewhere on the internet (e.g., search on Google, Bing, Yahoo, Duck Duck Go, etc.) to see if anyone is already using the mark that you'd like to use. 
  
  • ​It's important to consider alternative/misspellings too as use of similar marks of a competitor in sight, sound, meaning and design can be considered trademark infringement due to the likelihood of consumer confusion.
    
• ​When it doubt, find a different mark or seek approval for use first.  The test for a mark is "likelihood of confusion" which evaluates whether or not the proposed mark would be so close to an existing mark that it is likely to confuse the intended customer as to the source of goods/services.  The closer the proposed mark is by sight, sound, meaning, or design, the more likely it will be that likelihood of confusion will be found.  If you aren't sure, best practices are to either find a different name and/or logo OR ask the original mark holder for permission to use it.  Who knows, maybe you can strike a licensing deal or become an ambassador for their existing brand.

If You Receive a Trademark Cease and Desist Letter, Don't Ignore It.  They Aren't Likely Going Away.

We understand.  Being on the receiving end of a Trademark Cease and Desist letter can be scary, however, that is not the time to burry your head in the sand and hope that it will go away.  Trademark owners pay good money to register and maintain their trademark(s) with the USPTO and it up to the mark holder to police their brand.  Failing to police a trademark may be argued as an "abandonment" of the mark ... which could be a costly mistake on the part of the trademark registration holder.  As such, it's important for you to understand that it's not likely anything personal, but rather business, and appropriate protection of one's intellectual property rights.

Trademark Services Offered by Beebe Law:

Whether you are just starting out and don’t have a trademark registration yet, or you have an existing trademark(s) but you need help moving forward, Beebe Law is here to help you through the entire lifespan of your trademark portfolio.  Depending on your goals, and budget, our trademark and brand services can be customized to include one or more of the following:

• Clearance searches
• Registration with the state or federally (commonly referred to as “trademark prosecution”)
  
• Oppositions to registration
  
• Maintenance/renewals
  
• Monitoring
  
• Cancellations
  
• Infringement disputes
  
• Licensing​
  
• Domain name disputes ("UDRP Complaints")
  
• Counseling on related issues
  

If there is something you need help with, but don't see it listed above, contact us!  If we don't do it, we can like bring someone in, or otherwise refer you to, someone who can.​

Trademarks

Protecting one of your most valuable business assets ... your brand.​

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