Trademark

Statement of Use Trademark Overview and Fees

If you have recently filed an “intent to use” application for a mark or logo in connection with your business, it may be time to file a Statement of Use.  But what exactly is a statement of use? Do I need one for my business? And will I have to pay a statement of use fee?  These are questions that many people have, but fortunately, you don’t have to navigate this process on your own. The Polasek Law Firm (TPLF) is dedicated to the practice of intellectual property law, and can help you answer these questions and many more. Contact or call our trademark application attorneys today at (832) 485-3580 to see how TPLF can help you protect your business and brand.  What Is a Statement of Use (SOU)? A Statement of Use for trademark purposes is a form you must file with the United States Patent and Trademark Office (USPTO) as part of the Intent to Use (ITU) trademark application process. Specifically, an SOU verifies to the USPTO that the applicant is actually using the applied-for trademark in commerce.  Importantly, your SOU must include a specimen, or real-world evidence, of your trademark being used in connection with your goods or services in the marketplace. A proper specimen will depend on your mark, how you are using it and the classes that you designate in your trademark application.  A few examples of proper specimens might include:  Website printouts or other advertising materials showing the trademark being used in connection with your business’s services;   A product container or packaging with the applied-for trademark affixed as a label; or Photos of your trademark being used on the products you sell.  Being able to show that your business is actually using the applied-for mark in commerce is imperative to a successful SOU. Thus, make sure that your specimen, and the rest of your SOU form, meets all the requirements.  Statement of Use Filing Fee Before submitting your form, don’t forget that there are some Statement of Use fee requirements to be aware of. The Statement of Use filing fee is $200 per class if filing by paper. However, the Statement of Use filing fee is only $100 if filing electronically through the Trademark Electronic Application System (TEAS).  Thus, while you can file by paper, electronic filing through TEAS is generally the preferred method.  Do I Need a Statement of Use for Trademark Filings? If you file an ITU application, you will have to file a SOU at some point to obtain your trademark registration. A Statement of Use must be filed within six months of the date of issuance of the Notice of Allowance (NOA) from the USPTO. If you are not yet using your mark in commerce and are not ready to file your SOU, you may file a request for an extension. However, make sure to keep careful records of these important dates and deadlines. Failure to file either your extension request or SOU on time can result in an abandoned application.  Assuming all other requirements have been met, once your SOU form is filed and approved, you will receive your registration.  Need Help with Your Statement of Use?  TPLF can help you with your Statement of Use and all other steps in the trademark registration process.  Of course, you can register a trademark on your own—there is no requirement that you must have an attorney. Nevertheless, hiring an experienced trademark attorney who is familiar with the requirements and nuances of the process can be a fantastic benefit and can avoid costly mistakes.   If you have questions about how to validly register your trademark, TPLF is ready to help. With decades of experience handling intellectual property cases of all kinds, TPLF has the knowledge and resources necessary to provide excellent representation to its clients.  Contact or call (832) 485-3580 to reach our team today to schedule a free consultation and see what TPLF can do for you.

Continue Reading
Trademark

Top Tips About Trademarking a Logo

A logo is a design, a stylized text, or both. It represents your business or product in a manner that is distinctive enough to set it apart from others. The Nike ”swoosh” symbol and the uniquely stylized lettering of the Coca-Cola trademark are two examples of internationally successful logos. Without the exclusive trademark rights attached to these logos, however, they would be commercially useless. Here are a few tips from our trademark registration attorneys to make a great logo work for your business or product. For assistance, please send us a message or call (832) 485-3580 today. Focus on Uniqueness from the Design Stage The advantage of a logo over plain text is that a logo can make your business name stand out. It can incorporate a familiar image, such as a camel, or it can rely on stylized text. Some of the more successful logos merge both graphics and text. You need to use your logo the same way every time to effectively identify your product. However you present your logo, you must ensure that it is not easy to confuse with someone else’s. To receive protection, a logo must not create a “likelihood of confusion” to another logo in the market. Thoroughly Research Your Logo to Confirm Its Uniqueness This task is a lot more difficult than it may appear at first. Sure, it is relatively easy to confirm the uniqueness of your logo’s text, if it has any. All you have to do is type your text into a search bar. The universally accepted alphabetical order will do the rest of the work for you by displaying the closest matches. But what about the design elements? The US Patent and Trademark Office (USPTO), to its credit, has created an alternate “alphabetical order” for hundreds of design elements that may appear in a logo. It assigns codes to various design elements, which allow you to compare various design elements to determine how similar a given logo is to yours.  How a Trademark Lawyer Can Help With hundreds of design elements, the USPTO design element  “alphabet” is unwieldy at best. Even if you manage to locate a close match, the question remains—exactly how close is close enough to be “confusingly similar”? Under these circumstances it is difficult to avoid the need to exercise the legal judgment that a lawyer can provide.  Register With the USPTO: How to Trademark a Logo Nationwide Logo registration at the federal level can be a tricky process. Nevertheless, getting a logo trademarked should be a priority for your business. A trademark lawyer should be able to provide you with some individualized trademarking tips that will help you maximize the value of your trademark.  You file your trademark application with the USPTO. The Trademark Examiner will review the application and may issue an office action that will need a response. You can use your trademark in commerce without registering it with the USPTO.  However, federal registration does offer the following benefits, among others: You enjoy nationwide protection, instead of the local protection that state and/or common law offers; You can seek “incontestable” status after five years of registration; The USPTO will refuse to register confusingly similar competitors; Federal registration can serve as a basis for international registration; You can seek protection against the import of infringing products; and You can seek increased damages against counterfeiters. All things considered, it is much easier to enforce a registered trademark than a common law trademark.  Aggressively Enforce Your Rights A full arsenal of intellectual property rights will do you very little good if you don’t enforce your rights. Authorities such as US Customs and Border Protections will help you enforce some of your trademark rights. Most of the burden of enforcement, however, will fall on you and your trademark lawyer. You will need to continue monitoring the market, both domestically and internationally, to make sure that no one is infringing your trademark rights. If you discover infringement, you will need to execute an enforcement plan, which might include anything from a simple “cease and desist” letter to a full-blown trademark infringement lawsuit.  Make It Happen The experienced intellectual property lawyers at The Polasek Law Firm can assist you in protecting your brand.  Although Texas common law can provide your logo with a degree of protection, USPTO registration is the best way to effectively protect trademarks nationwide.  If you’re interested in filing an application for a trademark, call The Polasek Law Firm at (832) 485-3580 or contact us online to set up a free consultation. We look forward to hearing from you!

Continue Reading
Trademark

Do I Need a Lawyer to Register a Trademark?

Do you need a lawyer to apply for a trademark registration? Well, that depends on who you are. A trademark lawyer is a legal necessity for a so-called “foreign applicant,” for example. But given the complexities of the trademark application process, hiring an attorney is also a very good idea for anyone else seeking trademark protection. Benefits of Federal Registration You can obtain common law trademark rights simply by creating a distinctive mark and using it in commerce. You can also file a state trademark application with state governments. The Secretary of State of Texas, for example, will register your trademark for five years at a time assuming all other requirements are met by your application for trademark. Federal registration, however, offers the following additional benefits: Nationwide trademark protection, instead of the mere statewide protection that state law offer and the limited trademark rights offered under common law; Easier enforcement of your trademark rights; The possibility of attaining “incontestable” status after five years of registration, which makes your trademark difficult to challenge; The right to Use the ® symbol on your products; Help from US Customs and Border Protection to prevent the importation of infringing products (if you notify them); and Access to the US federal court system. The foregoing list is not exhaustive. You can discuss other benefits federal registration may offer you with your attorney. The Attorney Requirement for “Foreign Trademark Registrants” As of August 3, 2019, a foreign trademark registrant must retain a US-licensed attorney to complete a trademark registration. A “foreign trademark applicant” is anyone who is not: A US citizen; A lawful permanent resident; or Someone (an individual or a company) who is applying for international trademark registration under the Madrid Protocol. Even if you are a foreign trademark registrant, meaning that you fall outside of the three foregoing groups, you can still file an initial trademark application without the help of a US trademark attorney. The problem is that you will not be able to respond to Office Actions or execute trademark renewals without a US attorney. These restrictions effectively prevent foreign trademark applicants from completing the registration process without the help of a US attorney.   Why Is a Trademark Registration Attorney Necessary for Domestic Trademark Registrants? For domestic trademark registrants, retaining a trademark registration lawyer is a practical necessity rather than a legal one. A trademark registration attorney can help you: Identify and understand the legal issues at stake. Trademark law can be complex, and the legal issues that present themselves in a trademark application may not be at all obvious to a non-lawyer. Advise you on how to select a strong and effective trademark and evaluate the strength of the trademarks you are already using. Perform a trademark search to identify any similar marks that might prevent your mark from being registered. It is relatively easy to identify an “exact match” trademark. Identifying a “confusingly similar” trademark, however, requires the exercise of legal judgment.  Draft a proper product description for your trademark. Determine which class or classes your trademark should be filed under. File your initial trademark application with the US Patent and Trademark Office (USPTO). Respond to Office Actions. Failure to respond promptly and appropriately to an Office Action can lead to rejection of your registration application. If your application is rejected, prepare and file an appeal with the Trademark Trial and Appeal Board. Keep up with deadlines. You will probably have to file a Section 8 and 15 Affidavit after five years and file a trademark renewal application after 10 years. Advise you on how to use your trademark effectively without infringing someone else’s trademark. Fight back when someone infringes your trademark rights.This may mean sending a “cease and desist” letter, negotiating a settlement, or taking the offending party to court. These complex tasks are not things you want to confront without legal experience. You can avoid future conflicts by relying on a knowledgeable trademark attorney to help you obtain appropriate trademark protection at the outset and take steps to protect your trademark moving forward. Contact a Trademark Application Attorney Today The earlier in the process you seek a trademark application lawyer, the better your odds of eventual approval will be. Contact The Polasek Law Firm for a free consultation. I have spent years helping people across the nation with their intellectual property needs. Just call 832-400-4191 or contact the firm online.

Continue Reading
Articles

Trademark vs. Copyright—What Is the Difference?

I frequently receive calls from potential clients seeking to protect their brand or a writing, but unsure whether they need to file a trademark application or obtain a copyright registration.  What is the difference between trademark and copyright law? In fact, they are distinct from one another in several different ways. In a nutshell, a trademark is a word, phrase, symbol or design that is associated with your goods or services, while a copyright is a form of protection for an original work of authorship.  If you have any questions or need help registering your trademark or copyright, please call (832) 485-3580 or send us an online message. What Is a Trademark? A trademark is a word, name, symbol or device used to identify your goods and services. In most cases this representation is visual—think of McDonald’s Golden Arches, for example, or the KFC slogan “It’s finger lickin’ good.” A trademark, however, can also be a sound or even a scent. You may acquire “common law trademark” protection through your use of a trademark in commerce. However, common law rights are limited, typically only to the specific geographic location of its use in commerce. You can obtain more expansive rights by obtaining a state registration, or better yet, a federal registration.  A federal registration provides you with the strongest protection. What is a Copyright? A copyright protects creative works such as novels, paintings, photographs, websites, and even computer software source code. A “copyright” attaches to a work the moment it is affixed in a tangible medium.  You must register your copyright with the US Copyright Office to enforce your rights in a federal court.  Trademark vs. Copyright: A Summary of the Major Differences Following are some of the primary legal differences between trademarks and copyrights: Trademark law protects your brand that distinguishes your products and services from others. A copyright protects an original work of authorship, whether or not it represents a particular business or product. Affixing a work in a tangible medium automatically generates a copyright, while actual use (or filing an “intent to use” application) in commerce generates rights under trademark law. A trademark cannot be “confusingly similar” to a prior trademark, while a copyrighted work must be “original.”  A trademark endures as long as you continue to use it in commerce and file renewals as required under law, while a copyright expires after a set period (typically the life of the author plus 70 years).  Although you can register both a trademark and a copyright at the federal level, the registration process is different for each one. Potential Pitfalls The process of generating, registering, and protecting trademarks and copyrights can be complex. The following are some of the most common pitfalls: Failing to perform a trademark search to make sure that your mark is not confusingly similar to another mark. Failing to properly use a trademark. Failing to monitor the market to make sure someone else is not infringing your trademark or copyright.  Failing to properly identify your registered trademark or copyright.  When it comes to protecting your business’s intellectual property rights, it is critical that you get it right the first time around.  Contact The Polasek Law Firm Today For a free consultation, contact an experienced intellectual property attorney at The Polasek Law Firm by calling (832) 485-3580 or by contacting us online.

Continue Reading
Trademark

How to File a Trademark Application

Your name, logo, or slogan are important parts of your business’s identity. To protect that identity—and your business’s reputation—it is important to file a trademark application form to start the process of registering your trademark. Doing so is relatively easy and can save you many legal headaches in the long run. Whether you file an application seeking registration of a trademark on your own or with an attorney’s help, here is what you need to know. If you are looking to register a trademark, fill out the application below to get the process started. You may also send us a message or call (832) 485-3580 today for a free consultation. Fill Out the Free Form Below to Get Help With Filing a Trademark Registration Step 1: Trademark Clearance Search Also called a “knockout search,” we encourage you to take this step.  One purpose of conducting a search is to determine whether your trademark is eligible for registration in the first place. The U.S. Patent & Trademark Office (USPTO) will not approve a trademark application for a mark that is confusingly similar to another mark.  The second purpose of a search is to determine whether the use of your mark may violate the rights of someone else that is using a confusingly similar mark. Conducting a clearance search can be difficult; knowing what to search to make sure you uncover any conflicting trademark registrations takes practice and experience. As a result, many business owners opt to hire a trademark lawyer to have the search conducted for them. Step 2: Complete the Trademark Application Form The USPTO offers registrations online through its Trademark Electronic Application System (TEAS). There are two different filing options you can choose from TEAS Plus or TEAS Standard. TEAS Plus applications cost less ($250 per class compared to $350 with TEAS Standard) but come with more requirements. Despite the higher cost, many people prefer TEAS Standard because it offers more flexibility overall. Regardless of which application you choose, every trademark application requires the same basic information. This is the same information an attorney preparing a trademark application for a client would ask for: The name, address, and entity information of the owner of the trademark (usually the business entity using the mark); The name, email, and mailing address of the person with whom the USPTO should communicate about the application (usually an attorney); An image or drawing of your trademark if you are registering more than a word or phrase (for example if there is a graphic design element you need to protect); A list of the goods or services your trademark represents and the relevant international class for each; and The date when your trademark was first used in commerce. At the end of the trademark application form, you will need to complete and sign a declaration that the information you’ve provided is true and not misleading. Understanding Trademark Classes Trademark law categorizes each trademark according to the goods or services it covers. There are currently 45 distinct classes, with each covering a particular set of goods or services. For example, Class 16 covers “paper goods and printed matter” while Class 45 covers legal and other professional services. Intent to Use vs. Use-Based Applications Trademark protection is unique in that you can get it only if you are actually using your trademark. A majority of trademark applications are use-based, meaning they cover a mark that is currently in use in commerce. By contrast, an “intent to use” application covers a trademark that you plan to use in commerce in the future. A key part of the intent to use applications is the honest intent to use the mark in the future. In most cases, you won’t be allowed to file an intent to use application simply to “reserve” your trademark for future use. Step 3: Submit the Completed Trademark Application Once you’ve completed the trademark application form, signed the declaration, and paid the fee, your application is ready to submit. After doing so, you will receive a serial number allowing you to check on the status of your application. Typically, the USPTO will assign your application to an examining attorney for review within approximately three months of the submission date. Because the USPTO receives a large volume of applications, however, it may take as long as six months. Can I File a Trademark Application for Free? No, federal (and even state-level) trademark applications always come with a fee. As explained above, the exact fee may vary depending on which application type you choose. If your budget simply cannot make room for the application fee, you may be able to take advantage of common law trademark rights. Simply using your trademark in commerce builds these rights. Keep in mind, however, that your protection is much more limited without a federal registration. For example, common law trademark protection extends only to the immediate geographic area in which you use your trademark, while a federal trademark is designed to cover the entire United States. Step 4: Monitor Your Application Over the next several months, it’s important to monitor your application and respond to any communications you get from the USPTO. If the examining attorney discovers any issues with your application, you will receive an office action explaining the issue and the reason for the application denial. Step 5: Maintaining Your Mark After It Is Registered If the USPTO approves your application, it will publish your mark for 30 days and thereafter you will obtain a Registration on Principal Register, giving you full federal trademark protection. Going forward, you will have to file additional documents to renew your registration. If you originally filed an intent to use application, your mark will not mature into a Registration right away. Instead, you’ll have to submit a “Statement of Use” with evidence that you’ve started using the mark in commerce before the USPTO registers your trademark in Principal Register. Need Help Filing a Trademark Application? Registering a trademark is not as simple as it […]

Continue Reading
Trademark

Tips for Hiring an Affordable Trademark Lawyer

Nationwide Representation for Trademark Litigation Your brand name or logo is an important part of your business. Whether you sell goods or provide services, your brand is how customers identify you. Registering a trademark allows you to protect the association your customers have with the goods and services of your business. However, if you’ve spent any time researching how to file a trademark, you’ve probably seen that just the filing fee is going to cost a few hundred dollars.  Some attorneys will charge a flat fee for filing a trademark application; others will bill by the hour. Fortunately, finding an affordable trademark attorney is easy if you know what to look for. Below, the experienced team at The Polasek Law Firm explains what a trademark is and gives tips on when and why you should hire a trademark lawyer. If you have any questions or want to speak with a member of our trademark legal team, call (832) 485-3580 or reach out online today! What Is a Trademark? A trademark is any word, name, logo, slogan, or symbol used to identify the goods or services of the seller. Because trademarks are identified with an individual’s or business’s goods or services, it is important that individuals and businesses in the same or similar spaces do not use trademarks that are likely to confuse consumers. Tip #1: Figure Out How Much Help You Need There are many steps to registering a trademark, whether it is with the U.S. Patent and Trademark Office (USPTO) or with a state, such as the Texas Secretary of State. Knowing how much help you will need from an attorney is something to keep in mind when searching for an affordable trademark attorney. If you decide to consult an attorney, have the information ready.  Your attorney will want to know what the mark is, who is using the mark, the date the mark was first used (if it is being used), and the date it was first used in commerce.  If you are using the mark, your attorney will want a specimen of use of the mark.  If you can readily provide this information to your attorney, it will streamline the preparation of the application. A trademark attorney will generally charge a separate fee for each step, depending on its complexity. The general process includes: Conducting a search for other marks that may be confusingly similar; Determining whether your mark is confusingly similar to an existing registration or pending application; Preparing and filing the trademark application; Responding to office actions, if necessary; and After registration, monitoring the trademark and filing renewal statements. How Much Does a Trademark Registration Cost? The cost of registering a trademark has two main parts: USPTO fees and attorney fees. At a minimum, filing a trademark application with the United States Patent and Trademark Office for one class of goods or services (i.e. one type of goods) costs approximately $350. When it comes to attorney fees, the exact cost will vary depending on the facts particular to your situation. Preparing and filing the application likely will cost several hundred dollars of attorney time.  After the application is filed, it will be examined by the USPTO. Depending on what, if any, issues are raised by the trademark examiner will have a large impact on additional attorney time.  Tip #2: Speak with Several Trademark Attorneys Many affordable trademark lawyers offer an initial free consultation. During this conversation, you have the opportunity to explain some basics of your situation and what legal services you need. Use this time to find out how much the attorney charges and what your specific needs will cost.  It will also give you an opportunity to evaluate whether you want to work with that person. Ask yourself, was this attorney willing to take the time to discuss your matter and explain the process?  Did the attorney return your inquiry or call timely? Call 832-485-3580 For a Free Consultation Today Tip #3: Consider the Attorney’s Experience How much experience they have can affect whether a trademark attorney is affordable. While more experienced attorneys are usually more expensive, this isn’t always the case. Experienced attorneys may be more efficient.  It’s important to speak with any attorneys you are interested in to make sure you don’t pass up an experienced attorney with affordable rates.   Hire an Affordable Trademark Lawyer Before you search “affordable trademark attorney near me,” contact The Polasek Law Firm. If you’re looking for an attorney who won’t break the bank, look no further. Reach out today or give Polasek Law Firm a call at (832) 485-3580 for a free consultation.

Continue Reading