How to File a Trademark – Part 1

By Drew Stevens - September 25, 2018 - Technology & IP

Perhaps your business has grown to the point where you’re beginning to see the need to start shoring up and protecting your intellectual property. Or perhaps you’re a startup and you’ve sunk both time and resources into developing your branding, and you’re committed to that branding for the life of your business. Either way, it’s probably time to have “the talk” with a trademark attorney in Columbus, Ohio. And by talk, we mean “the trademark talk.”

From filing strategy to benefits to international classes, as an intellectual property lawyer, I get no shortage of trademark questions. Businesses large and small can rely heavily on trademark protection, but there can be a lot of confusion around filing a trademark application, the review process with the U.S. Patent and Trademark Office, and trademark law in general. In this series of posts, we’ll do our best to walk through the trademark filing process and submitting an application.

Benefits and Why You Should File a Trademark

There are a number of benefits of filing a federal trademark. When you hold a registered trademark and depending on whether you register on the Principal or Supplemental Register, you may get exclusive rights to the use of the mark, in relation to your goods and services. You are publicly registered as the owner of the mark with the USPTO, and registration can deter potential infringers. If infringement becomes an issue, you have the right to bring a trademark infringement suit. This includes the ability to recover monetary damages, including infringement profits, treble damages, and attorney fees. You also get to use the circle R symbol (®).

If nothing else, having a registered trademark can provide peace of mind. Some businesses spend tens of thousands in developing their branding, marketing, and advertising. These can be great investments in building your business, but these investments can turn into extremely costly mistakes if you receive a cease and desist letter from a business with a similar name and registered trademarks. Avoid the need for a rebrand. Lock down your trademarks.

How Trademarks Work

Unless you have a lot of free time or trouble sleeping and are interested in reading the Lanham Act, United States Code, and the Trademark Manual of Examining Procedure, for our purposes here, we’ll boil trademarks down to two key concepts.

The first is simple: trademarks are generally first come, first serve. If you and a competing business have substantially similar names and your products or services are substantially similar, whichever business files and registers an application first is going to trump the other business and its branding. Don’t procrastinate.

The second key concept is that of international classes. Think of taking the entire economy and dividing it up into 45 classes. Depending on your product or service, you’ll file in a specific class or multiple classes. For example, if you make t-shirts, hoodies, and sweatpants, you’ll file in IC025 – clothing. If you’re developing an app, you’ll want IC009 – computers and scientific devices.

You can file in multiple classes, and this oftentimes can be a point of trademark filing strategy. Continuing with the app example, say your company provides software as a service, business consulting, and also has an app as a part of your core products. In this case, you may consider filing in IC009, IC035 – advertising and business services, and IC042 – science and technology services.

Another popular example for multiple class filing is for fintech companies. Generally, your core class will be IC036 – insurance and financial services. Given the nature of the technology or products you offer though, you may also want to consider IC009, IC035, and IC042.

The class system can work to your benefit. If you’re searching for your proposed trademark, and you see that your name has been registered, don’t despair. If you can differentiate your application enough to avoid the possibility of consumer confusion, you may have a shot at still getting your trademark if it is in a different class than the mark already registered.

For you traveling homeowners, a good example is Delta. Delta Air Lines, Inc. has no shortage of “Delta” related trademarks registered in IC039 – shipping and travel services. Delta Faucet Company Corporation also has a number of “Delta” related trademarks, but the faucet maker’s marks are registered in IC011 – appliances.

In our next post, we’ll cover what you can trademark and categories of trademarks.