Why should I use an attorney?

Clearing and registering a mark requires in-depth knowledge of trademark law. There are many cheap trademark services out there that give the appearance of providing the same service that an attorney does, but if you read the fine print you will find out that all they do is serve as a middleman between you and the United States Patent & Trademark Office. These low cost service providers cannot offer legal advice and no attorney is working on your clearance and application, regardless of what their marketing implies. The best known non-law firm legal service providers have faced lawsuits and challenges by state bar associations for unlawfully practicing law. Ultimately, make sure you are getting the work done by an attorney otherwise the provider cannot give you legal guidance with regards to your trademarks and filings. You would likely do just as good a job by filing the mark yourself directly on the USPTO website. For many types of errors or changes, you would need to file an entirely new application and forfeit the fees you previously paid. If your application receives an office action, non-law firm service providers are unable to respond to the USPTO and unable to advise you about what it means. You would then need to scramble to find a trademark attorney and then pay them to catch up on your situation since they were not the ones who filed the mark.

At VGL, an experienced trademark attorney provides specialized legal guidance through the registration process. We can prepare you for the likelihood of receiving a rejection and give you a risk assessment before submitting the application in case it makes more sense to change the mark. Get it done right the first time.

What is a Trademark?

Trademarks were created by law to protect consumers. They are meant to be indicia of source, meaning, you know the source of what you buy because of the trademark on the package, and so you can have a reasonable expectation as to the quality of your purchase based on past experience with that brand. If any car company could slap a Ferrari logo on their car, or any soda maker could package their beverage in Coca-Cola packaging, we’d have a problem making our shopping decisions. Nowadays, people are more aware than ever of the power of a well developed brand identity. At the core of any brand identity are unique trademark(s).

Should I register a State or Federal trademark?

The United State Patent and Trademark Office manages federal Trademark registration in the U.S. A federal trademark gives you rights throughout the U.S. but not internationally. When you register a name with your state (and not all states, including California, register “trademarks” at the state level), you only have some protection in that state, but could be trumped by a federal trademark with regards to other states or territories.

What rights does a Trademark give me?

A Trademark gives you the right to prevent others from using your registered mark as an indicia of source of their goods or services. So, only Nike can use the word “Nike” to sell shoes and athletic apparel. Only Delta Airlines can use the word “Delta” with regards to airlines or air travel. However, Delta Faucets has peacefully coexisted with Delta Airlines for decades because no consumer really thinks they’re buying air travel from a faucet and sink maker, thus there is no reasonable “likelihood of confusion” that could lead to the consumer being harmed by that purchase. Southwest Airlines is the only airlines that can use the word “Southwest” as an indicia of source, but they cannot prevent other airlines from saying that they fly routes within the Southwestern United States, because that would unreasonably limit competition. The law specifically prohibits that sort of monopoly on language. So, owning a trademark doesn’t mean other people can’t use the word or words, it means that others can’t use it in a trademark capacity- meaning, they can’t use it to indicate the source of goods or services in commerce. Jessica Alba’s The Honest Company may have a trademark, but they cannot prevent others from describing another company as “honest.” That may seem like common sense but sometimes a company that has trademarked a name or phrase wants to prevent anyone else from using that name or phrase. Trademark law is written to specifically avoid giving this kind of monopoly over language to Trademark holders. Unless they are using your mark to indicate a source of goods or services in commerce, in a close enough industry to yours, then it’s unlikely you have the right to prevent them from using that language. Not sure? Consult with a Trademark attorney.

How long does it take to get a trademark?

We file most marks within 3-5 business days of completing your file. If we reach out for further information or clarification and you do not respond in a timely manner, that may delay the filing of your mark. Once we have submitted your application, we will email you a confirmation.

Once the application is submitted, it is not assigned to an examining attorney at the USPTO until after 3 months. That is when we may hear from the USPTO about any additional requirements or objections they may have. Small follow up requests are included as part of your trademark package, but Office Action rejections are not and if one is received, your attorney will be in touch with you about your options. No news is good news and if the USPTO approves the application to proceed it will advance to the publication phase. At that time, the mark is published publicly and others are given the opportunity to object to the registration of your mark. At this time we may receive a challenge from a company that feels it may be harmed by the registration of your mark. Though rare, it happens and our attorney will be in touch to discuss if this occurs. If there are no delays, it takes about 8 to 9 months for a trademark to fully register.

Do I have to pay an annual fee for my Trademark? How long does it last?

Trademarks can last forever- as long as they continue to serve as an indicia of the source of goods and/or services. Trademark renewals and verification of use are required roughly every 5 years. We will advise you of upcoming deadlines at no additional cost.

Should I own the trademark or should my Corporation/LLC/Partnership own it?

Whatever entity you have set up for your business, that entity should be the owner of the mark for a number of reasons. Do not register the mark in your personal name if you have an entity set up (which the trademark is related to) because your mark could even be invalidated for listing the wrong owner on the application.

I’m a foreign citizen, can I still apply for a U.S. trademark?

Yes. There is no citizenship requirement for registering a U.S. trademark.

Why are you so much less expensive than other trademark attorneys?

Because of our focus on entrepreneurs and startups, VGL keeps low overhead and can pass the savings on to clients. Large firms in the same geographical region charge thousands of dollars for a single trademark filed by paralegals at the firm. It is still a mystery to us what this price tag is for since small clients will receive little if any personal attention, and are not getting the benefit of the more experienced attorneys.

I already checked and my name isn’t taken, can you just submit the application for me?

I had a brilliant client come to me once asking that I just file the application because he had already done the clearance himself. He had no documentation of the clearance, but just assured me that he had checked and didn’t want to spend the money for it to be cleared again. He was a brilliant man, had been successful in business and had a number of patent inventions to his name. He was also a friend so I told him I’d do the clearance for free but couldn’t conscionably file an application without knowing it had been properly cleared. Within 20 seconds of me beginning the search I had found a mark that would absolutely be a bar to him being able to register his mark. He was not pleased when I told him the news- he actually asked how I had found that when he had not?? Well, because I’m a trademark attorney I told him. He went through a few iterations of the name and we finally got him a registered mark, but if he’d gone ahead with the initial one he would have lost the money spent and the time waiting. If you have a search that was done by another firm, we are happy to review it and not do additional searching on our own, but we will bill on an hourly basis and do not have a package for that scenario. If you just “cleared” it yourself, we strongly recommend you pay the clearance to be done by a professional, it is well worth the small cost.

What happens if I receive a substantive Office Action rejecting my mark?

Responses to substantive Office Actions can vary in the amount of time required and are not included in the package. Any responses will generally be billed at the hourly rate. If you receive a rejection, your trademark attorney will reach out to you to discuss what exactly the USPTO has said and what the options are to move forward.

Will this trademark qualify me to register on the Amazon Brand Registry?

Yes, but Amazon requires that the mark be a standard character mark and that it be fully registered before they admit you to their brand registry. Make sure to choose standard character mark in our form.

What if I only want a search, without the filing and monitoring?

We are happy to provide clearance only services, just reach out to us via the contact form and let us know. We charge $325 for a single mark, and can offer discounts for multiple clearances.

What if I pay for a package but I don’t end up filing a trademark for whatever reason?

If you change your mind about filing a trademark application after we perform a conflict search for you, you are entitled to a partial refund within 30 days. We will keep $325 for the conflict search and will refund the balance to you for the filing and any additional services you chose.

What if after the search, the attorney determines that the mark cannot be registered?

We are happy to offer you additional searches at $125 each.

What if I’m not selling the product yet or haven’t yet launched my business?

If you are not using the trademark in commerce yet, the USPTO requires you to file a “Intent to Use” or “1(b)” application and then submit the specimen showing use in commerce at a later date for an additional fee. If you are not yet using the mark in commerce, you should select the “Intent to Use” package. If you are using the mark in commerce, you will be required to provide a specimen of such use at the time you fill out our form.

Can I file for more than one class of goods/services?

Yes, this provides additional protection if you are using your mark on goods and/or services in multiple classes. The USPTO charges fees based on the number of classes, so we must charge an additional fee of $250 per class.

Most of our clients don’t need more than one class. If a competitor has similar goods or services, that will be enough to find infringement if they are using a confusingly similar mark, so you may not need to be registered in every relevant class. Ask your trademark attorney if you want to know whether you should register in multiple classes.