Applying for Trademark Protection
As many people already know, a trademark is sign, design, or expression that identifies a particular product, company, or service. Trademarks are very important in commerce, since they separate one type of product or service from those produced by different companies. In order to secure the most trademark protection possible, an application needs to be submitted to the United States Patent and Trademark Office. This provides protection for the trademark across the country and demonstrates that the trademark-holder has taken steps to protect its mark. However, there are certain things you should keep in mind when applying for trademark protection.
Specimens of the Trademark
One important consideration when applying for trademark protection is generating a specimen that includes the trademark. In order to submit a trademark application, applicants need to submit a specimen of the trademark. This specimen needs to be a certain file size and normally needs to be in a JPEG format. Furthermore, the specimen cannot include too much blank space, and the file needs to mostly just contain the trademark at issue in the application.
In addition, the specimen must normally be only in black and white colors. In a variety of circumstances, it is best to not claim rights to a color when applying for a trademark. This is because a trademark-holder may want to use the mark with different color schemes, but claiming color in the trademark application may limit this ability. Of course, a trademark that has color is more unique than one that does not have color, so it might be easier for a color trademark to be approved than one in black in white. However, in a variety of circumstances, it makes sense to simply submit a black and white specimen and not claim rights to color in a mark.
Description of the Trademark
Another important part of applying for trademark protection is to carefully describe the mark. When describing the mark, the applicant needs to be as specific as possible. This will usually include the font involved in the mark and proportions of the text used in the mark. Furthermore, the description must carefully discuss the spatial relationship between parts of the trademark. In addition, the applicant also needs to describe the literal elements of a mark. This includes the word, text, symbols, and other literal aspects of the relevant trademark. Drafting this description well in advance of applying for a trademark will make the trademark application process much easier.
Examples of Use in Commerce
Another critical element of applying for trademark protection in a number of cases is providing examples of how a mark is used in commerce. Many trademark applications will be submitted after a mark has already been used in commerce for some period of time. This is because many businesses begin using a mark before they see the need to apply for protection for their mark. Fortunately, applicants are able to apply for protection for marks that are already in use, and this situation makes it easy for the trademark office to assess how the mark will be utilized.
There are many examples of the mark being used in commerce that can be submitted to the trademark office. Common examples of such specimens are advertising, letterheads, and internal work product produced by a company. In addition, the trademark office commonly accepts specimens included on the website of applicants. In order to use this as an example of the trademark used in commerce, the applicant needs to save the website as transferable file and upload this to the application, since the trademark office will not normally simply accept a hyperlink to an applicant’s website. Furthermore, less common types of examples, such as sound recordings, may be accepted by the trademark office if the mark to be registered does not fit a typical category. In any case, applicants should prepare the examples of the mark being used in commerce well in advance of submitting an application for trademark protection to ensure the applicant has enough time to assemble the correct materials.
Hire a Lawyer
Another important consideration to keep in mind when applying for trademark protection is that you should consider hiring a lawyer. Normally, you do not legally need to have an attorney submit the trademark paperwork, but if you are a foreigner or a foreign company, then the law may require that you have a U.S.-licensed attorney apply for trademark protection. However, every applicant should consider hiring an attorney experienced with trademark matters.
Trademark law can be very complicated. Indeed, trademark protection will not arise in every situation, and an attorney can help applicants create trademarks that have the best possibility at being protected. In addition, attorneys often have the most experience searching through trademark databases to ensure that no similar marks have been registered in the past, since uniqueness is an important part of trademark protection. Furthermore, the trademark application process can be complicated, and includes a number of detailed requirements. Hiring an attorney can avoid the hassle of having to contend with these requirements or the application being rejected if the requirements are not satisfied.
The Rothman Law Firm is experienced with applying for trademarks, and we also have experience with trademark litigation in case a matter needs to be resolved in court. If you are looking for an experienced New York and New Jersey trademark attorney to handle your trademark application or other trademark matter, please feel free to contact The Rothman Law Firm to request a free consultation.