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Frequently Asked Questions

About us, our services and how private label law and trademarking works.

Trademark General Q’s

While you may see these terms used interchangeably, they are actually different. Your trademark is just one element of your brand.

Your brand encompasses the essence of your business, and can include, but is not limited to, the look and feel of your website, your story, your messaging, your identity, your culture, character, and personality. Remember, a brand tends to create some type of emotion.

The trademark acts as a tether or anchor, to your brand. When people see your trademark, you want them to think of the experience (hopefully positive!) that they’ve had with your brand. Your trademarks sings the song of your brand.

A logo is generally a type of trademark that incorporates design elements.

A standard character trademark has text, letters and/or number elements. Keep in mind that for purposes of enrolling your trademark in Amazon’s Brand registry program, the trademark must include standard character elements. Currently, you can also have design elements, but standard characters must be in the trademark you submit to Amazon.

Possibly. While consistent use of your trademark across all platforms is extraordinarily important from marketing and legal perspective, Amazon may also require the registered trademark to match the brand you want enrolled in Brand Registry. We suggest you either amend your brand within Amazon, or file your trademark to match the brand you are using on Amazon, to make your use consistent.

The BMW blue and white flag emblem you see on the hood of the car, the red wax on a bottle of Maker’s Mark, and the Robin’s Egg blue color of the packaging of Tiffany & Co’s boxes all act as trademarks, that is, source indicators. When you see a Robin’s Egg box sitting under the Christmas tree, many of you will immediately know that that the product came from Tiffany & Co!

 

A trademark act as the tether between a product and the brand. When a consumer sees the trademark, it acts as a tether that ties the product back to the impression of the brand. I like to think of trademarks as brain tattoos.

The source indicating function exists ~ and is protected by federal law ~ to assure that consumers can be confident that when buying a product bearing a particular trademark, that the product expected is actually delivered. In other words, the consumer relies on a standard of quality established by the association of the trademark in the marketplace with the trademark owners’ product or service. {We have an expectation of certain “quality” when we go into a Whole Foods. We have an expectation of a certain “quality” when we go into a Dollar General Store.}

The source-indicator function of trademarks really helps consumers. Let’s say I know my nephew has an allergic reaction whenever we use Tide brand detergent to wash his clothes. Therefore, I will know to avoid Tide brand detergents in the future. When I am at the grocery store, I will proactively avoid the brand that the kiddo is allergic to. I will select an alternative detergent. Let’s say I start using Arm & Hammer brand detergents and I learn as a consumer, over use and time, that Arm & Hammer brand just leaves my whites especially sparkling clean. I will, therefore, proactively look for detergents in the future that are Arm & Hammer brand. How do I know which detergent to buy? I select the one that has the trademark ~ the source indicator ~ that makes my whites sparkle.

Let’s do a skiing example! Consider a generic, unbranded ski helmet versus a Shred brand helmet. Maybe I know that Shred brand helmets run a little smaller, and I have a slightly smaller cranium than the average person. I have a Shred helmet already, and I love it, and have already had good experiences with it, so when I go shopping for a new helmet, I might be more inclined to look for the Shred branded helmet.

Yet another example: If I’m traveling in a foreign country and I’m in need of coffee, and I see the Starbucks sign and logo, my brain immediately processes the previous experiences I’ve had with that brand. If it’s positive, I may very well elect to go into that Starbucks because I have an expectation of what the experience will be like. If I don’t like Starbucks, I’ll won’t go into that store, and I might opt to find a local cafe instead, and take my chances.

If the mark you select is weak and descriptive, it’s going to be really hard to get it on the Principal Register. In a good case scenario, you might end up on the Supplemental Register, which will carry some benefits. With that said, if one of your goals with trademark registration is to enroll your mark in Amazon’s Brand Registry program, you will need to have the trademark on the Principal Register ~ not the Supplemental Register. Many people who receive a merely descriptive refusal are ~ unfortunately ~ advised to simply amend the application to the Supplemental Register. But be careful here! Select a stronger mark at the very beginning!

Still not sure if an element of the  mark or the entire mark is descriptive? Ask yourself this question:

"Does the word describe a quality or characteristic of my product?"

If the answer is “yes,” the mark is probably descriptive. You may want to consider an alternative mark.

You want to avoid descriptive marks if at all possible, especially if you are just starting out with brand name selection for your private label products

Note: The element only needs to describe one major aspect of the product, not everything about it.

Attorney Services Q's

Currently, in the United States, you do NOT have to utilize an attorney to file the application. There are some rumblings at the USPTO that this could change.



Short answer:

If you go it alone, the USPTO fee is $225 or $275, depending on the application track you select with the USPTO. Plus, consider your time value added to working through the application process on your own. Now, if you use an attorney, you are looking at $1000-1500. If you use an attorney and face obstacles (e.g., a merely descriptive or likelihood of confusion rejection) during the application process, you could easily double that estimate.

Long answer:

Costs will vary, depending on the number of International Classes (ICs) you wish to file, as well as what application “track” you use. Your application with the USPTO will be $275 per International Class in most instances. {You can get the cost down to $225 per mark per IC, but you’ll need to be rigid in your goods/services recitation.}

You could also encounter additional USPTO fees during the application process, such as fees for filing a Statement of Use or for Extensions of time to file a Statement of Use. If you choose to use an attorney, your fees will vary widely based on the experience of the attorney, geographic location of the attorney, and demand for the specific attorney’s services.

Lawyer fees could increase based on the complexity of the matter, and whether obstacles arise during the application process. Obstacles could include rejections by the Examining Attorney and/or oppositions filed by third parties. Addressing these issues could significantly increase attorney time in handling your trademark. While many attorneys work on an hourly rate, some attorneys will handle trademark work for you on a flat rate basis, and some will offer a flat rate + hourly combination.

A trademark attorney may be able to address the issues for you. If you have run into substantive refusals to register the mark (e.g., an ornamental refusal, a likelihood of confusion refusal, or a descriptiveness refusal) you might want to consider retaining an experience trademark lawyer (not a family law attorney or tax attorney) to handle the responses. However, hiring the right attorney at the outset might help mitigate such issues.

If you run into a procedural refusal (for example, there is an issue with the goods description, or you need to enter a disclaimer issue), these are likely issues that you might be able to handle on your own.

We currently offer a flat rate per trademark application. This includes the $275 USPTO filing fee, attorney time for application prep and filing, and docketing. (The $275 is for one trademark in one international class.) Our flat rate is the initial flat rate only, and does NOT include subsequent work on your trademark application post-filing.

Notably, the flat rate would not include pre-filing searching (see “preliminary” and “comprehensive” searching) or post-filing work, which includes, but is not limited to, Office Action reviews and responses, foreign filing work, status checks and reminders, Statements of Use (or extensions), opposition matters (rare), or additional USPTO fees (e.g., additional classes, Statement of Use fees, extension fees, etc.) Such additional work would be addressed at the attorney Suzi Hixon’s current hourly rate, or alternatively, at the attorney's discretion, a flat rate/fixed fee may be proposed prior to the commencement of any such work for you to consider. Please reach out to Suzi to discuss her current hourly rate.

Assuming a smooth application process, you should estimate a cost of about $1000 - $1500 per trademark application. This estimate includes the initial flat rate filing fee. If we run into roadblocks during the application process, you can quickly expect to double this estimate, assuming you want to continue proceeding with the application and overcome these obstacles moving forward to registration.

Two of the ways you can mitigate the chances of running into obstacles are by:

1.) choosing a mark that isn’t descriptive, and

2.) performing preliminary and/or comprehensive trademark clearance searches.

{Please let us know if you need any help in the selection of a strong Trademark name. Our Two-Week Trademark Service offers assistance in helping you select a name that is marketable and legally strong. This service includes the clearance work to ensure that the names selected aren’t already claimed or in the process of registration.

After filing the application, we will not hear from the USPTO for about 3 to 4 months. There is quite a "backlog" at the USPTO. At that time, the USPTO Examining Attorney may then issue an "Office Action." There could be substantive or procedural matters within the Office Action that we'll need to address, at your option.

Keep in mind that addressing a substantive refusal, such as a rejection based on the trademark being "merely descriptive" or "confusingly similar" to a prior-filed trademark, could incur significant additional attorney time at my hourly rate, because I will incur time to draft an argument in an effort to overcome any rejection on your behalf.

Of course, we don't have to respond to the Office Action, but if we don't, your application would then go abandoned. Again, while this work is generally done at an hourly rate, a flat rate option for the applicant’s consideration may be proposed at the attorney’s discretion. Furthermore, we cannot guarantee that the response to overcome any refusal of your application will be successful.

You can learn a bit more here: USPTO Trademark Filing.

I almost always suggest at least doing a preliminary trademark search and/or a comprehensive search prior to filing your trademark to mitigate risks. (A typical exception is if you’ve already been using the trademark a significant amount of time, you may decide to go ahead and file the application without performing a search).

Trademark Registration Q’s

Generally, as long as you are not infringing anyone else’s trademark, and you’ve done your own due diligence, you can and should implement use of your trademark sooner rather than later.

I suggest being more conservative in the amount of money and effort you spend on marketing, at least until your mark gets through publication. I typically suggest starting small in ad dollars spent, and then, slowly increasing the amount of money you spend on use of your mark, as you get more confident that your mark will get registered.

A common misconception I see is that Registration is permission to use the mark, and this is not correct.

Registration gives you presumptive rights to your trademark throughout the US, as of the date of first use, or the date of filing, whichever comes first.

For many companies, trademarks are important business assets built through goodwill and reputation. They can be subject to misuse through infringement, dilution, cybersquatting, unfair competition, false advertising, and tarnishment. You should be a vigilant trademark owner, and monitor, or police, your trademark, to look for possible misuse of your trademark by competitors and other members of the public.

Monitoring and enforcement of your trademark costs money. You don’t want to go down the road of using and trying to register a trademark that is weak and not worthy of enforcement. You also don’t want to spend money on registration, and end up not enforcing the mark. Failure to enforce your trademark rights can ultimately lead to a loss of rights.

A failure to enforce a trademark by monitoring the mark for misuses will result in a weakening of the mark and loss of distinctiveness, which can lead to a loss of the trademark. Preventing a loss in value of your trademark rights and building value in the trademark go hand in hand.

Yes. You need to file maintenance documents between the fifth and sixth year after registration, as well as every 10 years after registration. Because these maintenance dates are so far out, it might be wise to hire a law firm to have your mark on their docketing platform. With that said, if you use a perpetual calendar like  Google calendar, you can add it there. It’s really difficult to calendar those dates without the help of technology.

You also need to continue to use the trademark. If you pause use of the trademark, you need to have a valid reason for doing so. If you foresee a reason for needing to pause your use of a trademark, make sure you reach out to a trademark attorney to discuss steps you can take to prevent loss of rights to the mark for failure to use the trademark.

You can only use this symbol after your trademark is registered.

Nope, you can and should start using the little ™  as soon as you start using your trademark. True, it’s a common misconception. However, you do not have to have a pending application to use the little ™.

It really depends on what elements of those underlying trademarks you are using. Generally, I would suggest avoiding this because it could cause you problems later on. The more famous the underlying mark, the more I would suggest to avoid it. Also, context is really important here, and remember, at the end of the day, we are looking at likelihood of confusion. Still further, it’s possible you would get a demand letter from the owner of the mark you’ve smashed up. Do you want to deal with this?

I suggest selecting another mark. The addition of “Co” or “Company” does nothing to really materially differentiate the marks in any way, and I would suggest the selection of a new trademark.

Listing your competitors will help you know what you are up against (which will help you from a marketing perspective) and to help you steer clear of possible similar names (which can help you from a legal perspective by avoiding possible trademark conflicts)

Choosing a Trademark Q’s

I generally discourage the use of a surname as a trademark. Of course, there are always exceptions. For example, if there are other stronger elements to your overall brand name, then you can consider a surname. Keep in mind that there are inherent dangers of proceeding with a name or surname.

The problem with names is that the USPTO often takes the position that they cannot grant presumptive rights to the name because it doesn’t actually function as a source indicator. This can cause some resistance in the application process, and my goal for my clients is that they end up with an awesome and strong trademark that will not run into a bunch of obstacles during the application process ~ including, but not limited to, surname refusals.

If the mark you are leaning towards might have the appearance of a last name, search the online yellow pages. If you see even a handful of listings of the name, you might consider another mark.

I’ve had a mark rejected in the last year based on the USPTO’s allegations that it only functions as a surname. This was super frustrating ~ there is an element of subjectivity and the mark did not have the appearance of a surname from my perspective, at all.

If the mark you are considering has been in common law use for over 5 years as a trademark, then we can oftentimes claim “acquired distinctiveness.” But generally speaking, if you are just rolling out a new brand name for your private label product, this exception isn’t going to apply to you.

 

I generally suggest an informal setting, and not a corporate setting because it seems to stifle creativity. Also, consider the individuals, and be aware of certain dynamics like possibly putting extroverts with introverts, the latter of which who might be less likely to speak up. Unfortunately, in such situations you might see it’s often a mediocre name that is chosen because it’s met with the least resistance, instead of truly the best name.

No! Do not let the lack of a consistent domain name prevent you from proceeding with an otherwise amazing trademark. You might want to dig in a bit to see who owns the domain name and how it is being used. But, there are creative ways you can work around this. For example:

www.ILove{InsertYourAmazingBrandNameHere}.com

There are no rules here at all. Come up with as many as you can. I think more than 5 but less than 20 would be ideal to avoid overwhelm, BUT, again, no rules here.

Consider reaching out to current customers who already know and like your brand, if you are to that point. Email them and see if they would like to participate. You can make this fun, challenging, and engaging, and incentivize your customers to participate.

I suggest selecting another mark. The addition of “Co” or “Company” does nothing to really materially differentiate the marks in any way, and I would suggest the selection of a new trademark.

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