Why Should You Use a Trademark?
Every business and product needs a trademark. Trademarks are how we distinguish products in the marketplace.
By getting a trademark you are able to prevent others from using your mark, thus strengthening your brand name. There are both trademarks and service marks, and they are essentially the same thing. The only difference is that a trademark promotes goods or products (i.e., Dell) while a service mark promotes services (Albuquerque Business Law™).
Have you ever wondered why some marks have a ® and why some have TM? ® can only be used after your mark is federally registered. But, in order to obtain federal registration, your product (or services) must be in interstate commerce. This means that you must sell or advertise for your goods in other states. If you plan on selling goods in other states, we can file an intent-to-use application. Once this is filed, you have 6 months to use your mark in interstate commerce and then file the Statement of Use with the United States Patent and Trademark Office (USPTO). If you never plan on using your mark in interstate commerce (i.e., a local restaurant), you may want to consider obtaining a trademark with the State of New Mexico. This way, the mark will only be protected in the State of New Mexico.
Is The Trademark Process Complex?
The trademark process is not nearly as complex as the patent process, but an inexperienced practitioner can still fall victim to many of the rules and regulations of the USPTO. If you think you might need a trademark or service mark, let Albuquerque Business Law first conduct a trademark search for you in order to get an idea of what is out there. Filing a trademark without first performing a search could potentially be a waste of money. Then, if we feel like we can obtain a trademark for you after performing the search, we will file the necessary forms. After the application is filed with the USPTO, they will review the patent and then either allow it or send an office action stating the refusals/requirements. We will then have 6 months to answer the office action. Once the trademark is allowed, it will be published in the USPTO Official Gazette for 30 days. If there is no opposition to the mark during that period, the mark will then be issued.
Registering a trademark in New Mexico is much easier, cheaper, and faster, but you just don’t get the same protection as a federally registered mark.
Beginning the Trademark Process
Here are some things to keep in mind when designing and registering your mark. First, you have to pay for each class of goods and services that your mark is going to be on. You can look at the class list on the USPTO website. Thus, if your mark is going to be on t-shirts and mugs, you would have to register your mark in two different classes. Second, if we are going to file your mark, we will need a .jpeg file of your mark depicting its use in commerce. The USPTO also has some pretty strict requirements regarding what constitutes a proper specimen for this use. We will work with you in determining what specimen to use. Third, there are “standard character” marks and there are “stylized or special form” marks. If your mark includes a logo, it would fall under the stylized or special form marks. In some cases, we can obtain both types of marks. A standard character mark gets you much broader protection while the stylized or special form marks only protect the mark with the logo. This happens when a mark is not able to be trademarked on its own because it’s too descriptive, generic, etc. For example, New Mexico Doctors probably could not be trademarked as a standard character mark because it is simply descriptive, but if they had a logo, we could trademark the name in conjunction with the logo.
Contact an Albuquerque trademark attorney and let us explain why you need a trademark. Let us file the necessary paperwork and obtain that mark for you.