A trademark is a sign which distinguishes your goods and services from those of other businesses. Your trademark could also be described as your ‘brand’ and can be made up of words, logos or a combination of both.

Trademarks must be registered in one or more of 45 ‘classes’: 34 classes for goods and 11 for services. Classes group products that are deemed to be similar areas of trade and are identified by their numbers. Classes can be non-intuitive and complicated to work out – for example, photography is mentioned in five different classes, but the services of a professional or studio photographer are only in class 42 and easily missed – which is why it’s best to submit your trademark application through a professional service. An incorrect specification of classes can lead to added costs or the rejection of your application.

The fees that you pay for your application depend upon the number of classes in which you need your trademark to be registered. Once you place your order online, our attorneys will make sure that your trademark application is submitted in all relevant classes, so ensuring that your brand will be fully protected once your registration is complete.

If you run a business without a registered trademark, your competitors could:

• Register your trademark, forcing you to rebrand.
• Conduct business using your trademark or a very similar trademark, deriving benefit from your reputation or damaging it by selling goods of inferior quality.

Without a registered trademark, your brand is completely insecure. A registered trademark:

• Belongs to you, so you can sell it, or let other people have a license that allows them to use it.
• Will discourage people from using your trademark without your permission.
• Let’s you act against anyone using your trademark without permission.
• Allows the authorities to bring criminal charges against counterfeiters.

No, owning a domain name does not offer your trademark any protection under the law. If you want to protect your brand, you must register your trademark.

No, registering your business name with the Secretary of State does not protect it if you use it as your brand. If you want to protect it as your brand, you must register it as your trademark.

To be registrable, trademarks must be distinctive for the goods and services you provide. A registered trademark must allow consumers to differentiate your goods and services from those of other businesses. For this reason, made up words are the best trademarks. Real examples are:

• Nike
• Xerox
• Kleenex
• Viagra

Examiners will also accept word marks involving familiar words, provided similar words have not already been registered, and they are distinctive for the Goods and Services being offered. Examples include:

• Apple
• Amazon
• Pampers
• Target

Trademark applications will be refused if your trademark describes your goods or services or any of their characteristics:

• The Pizza Company
• Discount Handbags
• SUV Mart
• Cheaper Flooring

Examiners will also refuse to register trademarks which are made up of descriptions customary in your line of business, or make a claim about the quality of the business or service:

• Tastes Great Chocolate
• Built To Last Beds
• Quick auto rental
• Family names are also usually rejected, unless they have come to be recognized by consumers through long use

Yes, providing the existing word:

• Distinguishes your business from others.
• Does not describe your goods or services.
• Is not already registered to or bear similarity to a registered trademark of another business working in your line of trade.
• Does not promote illegal activities;
• Does not attempt to mislead the public.

Trademark applications will be refused if your trademark bears:

• An audible similarity to an existing registered trademark, e.g., Amuhzone Books.
• For logo trademarks, a visual similarity to an existing registered trademark, for example – a copy of the Heinz Beans registered trademark with the name of your own brand of beans in the same font.
• Conceptual similarity to an existing trademark, e.g., Eliza Hairbrushes and Elise Haircare.

Two businesses can register the same trademark provided their areas of trade do not overlap, e.g., Badabing Real Estate and Badabing Pool Care.

If your line of business is the same or similar to that of another business, using its trademark could make you liable for infringement and the payment of damages. Even if you think that your business operates in a different sphere, because some trademarks are registered under many different ‘classes’, i.e., industries, by law your activities could still be infringing on its registered trademark. The only way to be certain that your use of a trademark does not contravene trademark law is to get advice on it from an attorney.

Generally, no. Minor alterations may be permitted, but not the substitution of an entirely new mark.

You can surrender the rights to a registered trademark at any time.

Once registered, a trademark becomes your property and can be sold just like any other property. Once sold, a trademark must be ‘assigned’ to the new owner in the register.

A registered trademark must be renewed every 10 years to keep your brand protected. 

If you miss your renewal deadline, there is still a “grace period” of 6 months within which you can apply to restore your mark.

There are many fees and costs associated with trademark registration along with various situations that can add to the overall cost. In general, once all the fees are paid the cost starts around $1600 for one class and can go higher from there. The variable costs that can increase the overall cost of a trademark are the number of classes for which the trademark is filed and the number of objections that could be filed against your registration. The entire process can take anywhere from nine to twelve months and there are no guarantees your registration will be approved. We have listed the various fees below along with a definition of each with example costs breakdowns to help you understand costs.

• Search Fee – The fee for TMISG attorneys to conduct a comprehensive search to determine whether your proposed mark is available, to evaluate the search results and provide a legal opinion.
• TMISG Service Fee – The service fee for TMISG attorneys to prepare your trademark application, file it in the USPTO, conclude your application, and obtain the registration certificate.
• USPTO Official Fee – The fee per class payable to the USPTO to conclude an intent-to-use application and obtain the registration certificate.
• Administrative Expenses – This fee is for overhead expenses for e-mailing, mailing, faxing, telephone costs, and more.
• Logo Service Fee – Fee for additional handling required for a logo / graphical trademark.
• “Intent to Use” Official Fee – For marks that are not yet in use, there is an additional fee of $100 per class. This fee is unnecessary for marks that are currently in use.
• “Responses to Objections” Service Fee – This is a variable service fee for analyzing and responding to any objections that may be raised and is based on the amount of time required. A firm quote is provided prior to any billable hours being spent.

Here are some example costs breakdowns:

* There is an additional $150 fee to register a “logo mark” per trademark rather than a “plain text mark”.

Once your order has been received and accepted, we take payment in full. This includes the search fee, our service fees for filing and registration, USPTO official fees and administrative charges and disbursements. If, following the search and legal opinion, you do not wish to proceed with filing an application, we will keep the search fee and process a refund of all service fees and official fees.

We accept credit or debit card payments via Visa, MasterCard, Discover, and American Express. The payment will appear on your card statement as going to Trademark ISG.

No

Before applying to register a trademark it is advisable you ask a US-licensed attorney to carry out a ‘clearance search’ to see if there are any obvious reasons why the name cannot be registered – otherwise the application could end up in expensive failure.

Applications to register a US trademark take approximately nine to twelve months if the application is accepted by the US examiners and is not opposed by any other trademark owner. Applications with oppositions can take up to an additional six months to complete, depending on how the case progresses.

Our US-licensed attorneys can advise on all aspects of trademark law and registration. They recommend carrying out full clearance searches to identify any issues that might affect whether your application will progress through to a successful registration. As the USPTO never refunds the official fees the costs from putting in an application ‘blind’ that fails can be substantial.

The trademark registration process takes anywhere from nine to twelve months and is a rather complicated process. Rest assured, with TMISG, the process is systematized, simplified for you, and managed by fully qualified and experienced attorneys. You initiate the easy six step process and we will take it from there. For more details, see our How We Work page. We have created an info graphic to depict the process visually (Click here to download the PDF version):

Click here to download the PDF version

Trademark ISG can help you protect your trademark in every country, worldwide. Contact us to discuss your specific requirements and our client representatives will be able to work out the most affordable and quickest way in which to take your applications forward.

A logo trademark application must pass additional criteria before it can be registered: for example, a logo trademark cannot be:

• A three-dimensional shape which is typical of the goods you sell, has a function or adds value to the goods;
• A protected emblem, such as flags, royal insignia and the rings of the Olympic Games;
• A mark that is deceptive as to the country of the product’s origin;
• Obscene.

Logo trademark applications are submitted to the examiners in the same manner as text trademarks.

Filing a text trademark gives you wider and stronger rights than registering a logo, where your rights are in the combined words and graphical elements. With a logo, potentially someone else can register the same words but with a different design. If you have a word mark no one else can use those words, with or without a design, so wherever we can we try to register a text trademark.

If you want to register both the words and separately the logo version, this is treated by all the registries as two applications, so two sets of fees must be paid.

Anyone may apply to register a trademark, although if your application is similar to another registered trademark and you are not the proprietor of a business, it may be opposed on the basis that it was made in bad faith.

Trademark applications can be filed either on a “use in commerce” basis, or on an “intent to use” basis. You can file for “use in commerce’ if you have already used the name in your business in ALL classes filed for.

If you have not yet used your mark but intend to use it in the future, you must file under the “intent to use” basis. This means you have a bona fide intent to use the mark in commerce. An “intent to use” basis requires filing an additional form and fee prior to registration that are not required if you file under “use in commerce”. You must also show that you have actually started using the mark commercially in order to obtain the registration.

Use is established by providing the date of first use of the mark anywhere and the date of first use of the mark in interstate commerce, as well as submitting an example (“specimen”) showing how you use the mark.

US Trademark examiners can object to a trademark application on absolute grounds – any of the reasons given in our answer to the question ‘What is not allowed as a registered trademark?’. They can also object on relative grounds, that is they think the trademark being applied for is too similar to a registered trademark for the same and similar goods and services.

You as the applicant then have an opportunity to put forward counterarguments to both types of objection. If these are not accepted by the registry there is a subsequent appeals process.

Once the application is accepted by the examiner it goes forward to be published. This allows other trademark owners to review new applications and if they think any are confusingly similar, they have 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.

If after the details of your trademark application is published other trademark owners oppose based on visual, aural or conceptual similarity you can put forward counterarguments or reach an agreement with them over shared or restricted usage. The trademark examiner then makes a judgment. There is a subsequent appeals process.