1. Major Benefits of Registering a Trademark
2. Responding to an Office Action Response
3. Different Classes and Filing Basis
4. Going Global

 

If you don’t already have a registered trademark in the U.S., you will want to protect your business reputation as soon as you can by filing for a domestic trademark. There are several legal options to help you protect your reputation and brand, but a domestic trademark is one of the most powerful. 

Major Benefits of Registering a Trademark

  • Having a U.S. registered trademark will make it easier for you to get international protection for your trademark in some countries.

  • You will have a clear legal tool to stop competitors from using your mark and taking advantage of your reputation and brand recognition.

  • The trademark will give you protection in all 50 U.S. states, which means you don't have to worry when you grow your business into other states. 

Why & How to Register a Trademark

A trademark might sound a bit complicated and vague at first, but it protects exactly what it sounds like, the mark of your trade. When you are in business, you want to be sure that people associate only your brand name with your quality of service and goods. If you realize someone else is using your same business name, they might be taking advantage of your business reputation. But be careful, there's always the chance that you didn't do a thorough search of other business names before you started your own business and perhaps you unintentionally started using someone else's business name!

One of the best things to do before starting a business is to contact an attorney who specializes in trademarks and can assist you in making sure the name you worked so hard to choose is not already owned by someone else. A good business lawyer who has experience in trademarks can help you consider different names if there appears to be a potential conflict. He/she can also assist you in filing a trademark to protect your good business name. 

Getting a trademark can be a complicated process. You will want someone familiar with the lengthy process making sure everything is done right the first time. In the end, hiring an attorney will save you both time and money. If you try to file on your own but do not get your trademark application approved, you could be in for a lot of expenses that yielded you absolutely nothing. The US Patent & Trademark Office (USPTO) does not give refunds for applications that do not go through.

Responding to an Office Action Response

 It is very possible after you or your attorney file your trademark, you receive what is called an Office Action Response (OAR)  from the USPTO. An Office Action Response is generally some form of objection to your registration from the examining USPTO attorney. It is very normal and is not a cause for concern, as long as you know how to properly respond to the Office Action Response. If you did a sufficient search at the beginning of the process for any trademarks that might be in conflict with your own, then the Office Action Response will most likely be a request for additional use of your mark in use. Though, this process, like the rest of the trademark registration process, should be given a lot of attention to detail. It would be advisable to get a good business lawyer comfortable with trademarks to respond to any Office Action Response, otherwise, you may risk losing your money and your trademark registration. 

Different Classes and Filing Basis

You can still file to register your trademark even if you are not yet using it in business. Though, you will need to do a 1B filing basis (as opposed to a 1A filing basis), which simply means you need to pay an extra fee (typically about $125) and that you intend to use your mark in business in the next six months. Also, you can likely pay a lower fee overall for your trademark if you can meet certain requirements set by the US Patent & Trademark Office. You can file for the cheapest registration form (the TEAS Plus form) if your trademark falls under a good/service already described in the US Patent & Trademark Office Identification Manual. Chances are high that it does. So for instance, if you are trying to trademark your brand name for goods that are "dietary supplements for human consumption," which is a category already listed in the USPTO Identification Manual, then you can list under that category and potentially save yourself significant money. 

Going Global

When you register your trademark in the U.S., you are only getting protection for the U.S. This does not give you the same protection in the EU, China, Australia, Mexico, Canada, etc. If you want the same level of trademark protection for your mark in any geographic market outside of the U.S., you'll have to apply for it separately in the regions/nations you want protection from. 

Lucky for you, there are some major tools to help save time when trying to register outside of the U.S, in particular, the Paris Convention and the Madrid Protocol. There is also the European Union Trademark (EUTM) application as well for filing directly with specific foreign countries as additional tools to help protect your trademark portfolio internationally. 

Paris Convention: (short for the "Paris Convention for the Protection of Industrial Property"). This treaty was signed in Paris in 1883 and is STILL effective today. The Paris Convention gives anyone who filed a U.S. trademark a six-month window to also register their mark in other Paris Convention member countries and enjoy the same effective filing date there that they do in the U.S. This is especially important, as most other countries prioritize the first to register the mark over the first to use the mark (unlike the U.S.) Here is a list of all the Paris Convention member countries. 

Madrid Protocol: (short for the "Madrid Protocol for the International Registration of Marks"). The International Bureau (IB) of the World Intellectual Property Office (WIPO) located in Geneva administers the Protocol. The Protocol essentially works in tandem with the Paris Convention, allowing international trademark registration applicants to use the date of filing in their home country as their priority date of filing for the international mark. It also allows applicants to file for registration in several different regions at once using a single application. The list of all 88 Protocol member countries can be found here

The actual procedure for filing through the Madrid Protocol is fairly simple:

1. File the mark in your home country.

2. Through your home country's IP Office, you can opt into filing through the Madrid Protocol. Here is the link for opting in through the United States Patent & Trademark Office (USPTO). (If you prefer to file directly with the international IP office of the region in which you wish to obtain a registration, I have included some info on that below. Personally, I recommend just filing through the WIPO for the significant added convenience.)

3. You'll need to run the same search that you ran in your home country to make sure nobody has filed for a similar mark in the international region you want to register in. 

4. Pay the fees. The WIPO fee schedule is here. The WIPO fees are fairly expensive for new companies. The fees go up for additional classes and additional countries/regions where you want to file. You will likely also have to pay additional fees to your home IP office when requesting a WIPO registration. The WIPO also provides a fee calculator, which can be very useful in estimating the government fees you will owe. Your trademark counsel will of course need to charge additional fees to cover the cost of their time in helping you file the mark. 

This can be a somewhat expensive process, ultimately costing you a few thousand dollars, but the value you get is significant. For a few grand, you are getting a trademark with international protection, which is a significant asset. Also, this is likely to save you tens of thousands if not more, if someone abroad were to start using your mark before you registered it. If you put off filing your mark internationally, you may find yourself in an international IP lawsuit or paying an international company to sell you your own mark (if they register it before you do, since most IP offices abroad give priority to the entity that registered the mark first, not the entity that used the mark first). 

European Union Trademark Application (formerly named "Community Trademark" prior to March 23, 2016): the European Union Trademark Application (EUTM) process can be a great solution for protection in the EU, as it gives you coverage in all 28 EUIPO member countries. It is typically quicker and cheaper than filing through the Madrid Protocol. The link to file the EUTM application can be found here.

If you file for the EUTM, you enjoy a few benefits

1) Typically faster turnaround time (5-6 months vs over 12 months through the WIPO under the Madrid Protocol)

2) Typically quite a bit cheaper. If you file through the WIPO and select only coverage in the EU for three classes and a color mark, you're looking at roughly 2000 francs! If you file directly through the EUIPO for the EUTM, your cost would go down to 1050 Euros (or roughly 1260 francs), a nearly 40% cost savings. (though you will need an EU representative, which will of course add a bit to your cost). 

3) You do not need to base the EUTM directly on your USPTO trademark, which means you can claim a broader set of class descriptions, potentially giving you a stronger trademark abroad. (The USPTO encourages fairly narrow class descriptions). 

The major EUTM disadvantages are

1) You will need to work directly with EU-based counsel for a "representative" to list on your application within two months of filing.

2) If you decide to file for other regions, you'll need to either directly work with other international IP offices, or you'll still need to go through the WIPO and you would have lost the convenience factor and potential financial savings as you will have already directly filed through the EUIPO. 

3) Perhaps the biggest disadvantage with the EUTM is that it is an all-or-nothing application. If a single member of the EUIPO finds fault with your trademark application in their country, you lose the entire application. There are no EUIPO member country exceptions to the EUTM. This all-or-nothing rule can actually make the EUTM route quite risky. 

Filing Directly in particular countries: You can also file directly in the IP offices of specific countries in which you wish to seek registration. What you lose in convenience with the WIPO or EUTM, you certainly potentially gain in cost savings if you aren't looking to file in several countries. Also, a major advantage is that you could broaden the claim, as filing through the WIPO requires you to use your USPTO trademark application basis, which highly encourages rather narrow claims. By filing directly with other countries, you could broaden the basis of your trademark claim significantly. Of course, you would likely need to work with foreign counsel in the specific countries in which you hope to register your mark.