Freeze-dried candy recipes have been all the hype across the internet and communities for a while now. Since they are easy to make, people have been buying freezers as a fun way to try out different freeze-dried recipes such as freeze-dried skittles and freeze-dried milk Duds.

If you are thinking of getting a freezer and trying freeze-dried candy to sell you might want to consider the potential trademark issues that may arise.

In this article, we will cover how you could be infringing on other companies' trademarks by selling freeze-dried candy and how you can avoid it.

Freeze-dried candy trademark issues

Often when selling freeze-dried candy, people tend to label their freeze-dried candy as “skittles” or “milk duds”. While there’s no legal risk in creating freeze-dried candy similar to Skittles or Milk duds labeling your candy “skittles” or “milk duds” can pose legal risks.

 “Skittles”, “Milk duds” and other names used by brands selling candy are trademarked, and by using these names you are infringing on their trademark rights. This can, therefore, land you into legal issues if are selling your freeze-dried candy with the trademarked names.

What about combining different names with trademarked names?

In an attempt to circumvent trademarks, people try labeling their freeze-dried candy as “freeze-dried skittles”, “homemade skittles”, “homemade freeze-dried milk-duds” etc.

However, using the words homemade or freeze-dried before the words skittles or milk duds will not help you get around the trademark rights of the brands. You can still get sued for using the words “skittles” or “milk-duds” while labeling your product.

Getting around trademarks while selling freeze-dried candy

The only way to get around trademarks while selling freeze-dried candy is by steering clear of any names used by other brands selling candy.

For example, instead of freeze-dried skittles, you can label your candy as ‘freeze-dried assorted candy’ or ‘freeze dried rainbow candy’ (please make sure to check these names are not already trademarked before using them).

This way you’ll avoid infringing on other brands' trademarks and protect yourself from legal issues that may arise with trademark infringement.  

Got a trademark or IP question?

If you have a trademark question about freeze-dried candy or any other IP issue we are always ready to help you out. Reach out to us here at Millar IP Law to book a free consultation.

Otherwise good luck with your business.

 If you are a startup, small business, or a solo-inventor looking for a high quality & affordable patent or trademark, you've found the right place. Miller IP Law offers transparent and affordable options specifically designed for your business goals. Grab a strategy meeting to kick things off!

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

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Planning on registering a trademark?

Registering a trademark for your business is a crucial step to establishing a successful brand. A good logo and name can go a long way in boosting sales and creating a loyal customer base for your company.

However, there are a lot of trademark pitfalls that could end up costing you a lot of money if you are not careful.

In this article, you’ll learn some of the common mistakes people make with trademarks and how you can avoid them.

What is a Trademark? 

A trademark is any sign, design, word, or phrase that identifies and distinguishes your products or services from those of other brands. Trademarks are set up to protect a brand from copycats that may want to profit from a company’s success by using their name or logo in products or services.

Mistakes people make with trademarks 

1. Confusing wordmarks with design marks

Unfortunately, most business owners don’t understand the difference between word marks and design marks when filing for a trademark. They’ll often file a copyright for a word mark, thinking it will protect their logo, or file for a design mark thinking it covers their tag line.

However, these two types of trademarks are different and cannot be used interchangeably to protect different elements of your brand.

Word marks are used to protect the words used in your brand while design mark is used to protect the aesthetic look and feel of your brand.

When protecting your brand it is important to ensure you get the right trademark for the right brand element you want to protect.

For example, if you want to protect the name of your brand you need to file for a wordmark. If you are looking to protect your logo then you need to file for a design mark. To protect both the design and word elements then you’ll need to file for both types of trademarks.

2. Choosing the wrong trademark class

When filing for a trademark you are required by the USPTO to indicate the class of the trademark you are filing. A class is a category of the products and services of the products you are selling.

A common mistake people make is failing to choose a class for their trademark or choosing the wrong class. Failing to indicate the class of your products or services can result in your trademark being rejected or not having the right coverage for your brand.

3. Waiting too long

Although trademarks don’t have a specific due date for filling, there are some consequences that can come up if you choose to wait for too long before filing for a trademark.

For example, other companies may start using your brand name to market or label their products. Or someone trademarks your brand name before you do. This can create issues for you in the long run and sometimes even require you to rebrand your business.

4. selecting too common of a word

One of the tenets of a trademark is to help distinguish your products or services from those offered by other brands. If you pick a generic word for your products or brand then it is not going to distinguish you from the rest of the brands.

For example, let’s say you’ve decided to open a fruit joint selling apples. Choosing the name Apple to identify your brand will not distinguish your products from other products offered by other food joints.

However, if you choose to start a consumer brand selling smartphones and you choose to name it Apple then you’ll have a name that identifies your brand and helps you distinguish your products and services since it’s not a generic word in the smartphone world.  

5. Choosing to do it yourself 

While you might save some money, there are a lot of mistakes you can make when you choose to file for a trademark yourself. If you don’t have the budget or your business is just a small side hustle, then you can do it yourself.

However, if you’ve invested a lot in your company and you are looking to grow it to new levels, then it is only wise to get an experienced attorney to help you out while filing for a trademark.

Got a question about Trademarks or IP Law?

Reach out to us at Millar IP Law for trademark questions or any other IP issue and we will be glad to help you out. Otherwise good luck with your business.

If you are a startup, small business, or a solo-inventor looking for a high quality & affordable patent or trademark, you've found the right place. Miller IP Law offers transparent and affordable options specifically designed for your business goals. Grab a strategy meeting to kick things off!

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

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Picture this: You’ve just registered a trademark for a brand that you’ve been working on for so long. It’s exciting. And now the only thing left is to register your domain name.

So you go to a domain name registrar with a perfect domain name in mind and you’ve guessed it, you find out the name has already been taken. Worse, the page is inactive or dead and you can’t reach the current owner.

So what do you do now?

Well, with over 1 billion websites on the web today, it comes as no surprise that a domain name want has already been taken. So it is important to familiarize yourself with some of the options you have in case you find yourself in such a situation.

What are your options if you have registered a trademark similar to an inactive domain?

If there is an inactive domain name or URL that is similar to your brand name, there are a few things you can do to get it back. However, like with all domain name disputes, it all depends on whether the inactive domain name was registered in bad faith or not.  

‘Bad faith’ usually means that the domain was registered with some ulterior or unfair motive. This could be to redirect traffic to your competitor’s website or with the intent of selling it to you.

How do you know whether a domain name was registered in bad faith or not? For the most part, this boils down to one main thing - when the domain name was registered. Let’s have a look at the two most possible scenarios;

If the domain name was registered before you got your trademark 

If the domain owner registered the domain name before you got your trademark, then you might have a hard time proving the current owner registered the domain name in bad faith. Simple registration of a domain name does not show bad faith. Sometimes it might be just a coincidence, where both of you had the same idea.

In such situations what can you do?

The best option is to try and buy the domain name from the current owner. Using Who.is you can check the information of the current owner of the domain and contact them with your offer. It is important to keep in mind that this works and sometimes it doesn’t. If the owner knows you are trying to get the domain name for your brand they will often hike the price to try and profit from you.

If they purchased the domain name after you got your trademark 

If the domain name was registered after you got your trademark, then it’s easier to show bad faith. There would be a strong inference that the current owner registered the domain name in ‘bad faith’ if they also tried to sell it to you.

So if you have evidence showing that the current owner reached out to you trying to sell the domain to you, then this might help you with your case when filing for a domain dispute.

What can you do in such a situation?

 In a situation where a cyber squatter has your domain name and is trying to profit from you, you can use the dispute resolution procedure offered by ICANN. ICAAN is an international organization in charge of domain name registration. ICANN offers a cheaper and faster domain dispute resolution compared to filing a lawsuit.

Conclusion 

Just because your brand name is similar to an inactive domain you have the rights to that domain name. If you think that the domain name was registered in bad faith, it is important to gather solid evidence and reach out to a specialist to get an idea of your legal position.  

If you have any questions on this topic or any other topic reach out to us at miller IP law will be happy to strategize and talk about it. Good luck with your business!

About Our Firm…

Miller IP Law is a group of attorney's, based out of Mountain Green, Utah, who are excited to help you build your business and further innovate market places and economies. Please consider looking at our services, billed at flat rate, and be sure to grab a free strategy session to meet with us!

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The 3-minute answer

 What if someone buys a domain name or URL for my trademark?

You’ve finally made it! You’ve created a product, launched a business, and trademarked your brand. Now, you are planning on rolling it out. So you come up with a great domain name for your brand. It’s simple, clever, and the centerpiece of your brand. But when you go to register the name you find out it’s already taken! And now questions begin to flood your mind.

What do you do? Do you stand a chance of getting the domain name through a trademark infringement case?

Well, like with most trademark disputes, there are a lot of grey areas to consider.

So, join us by reading this post as we explore more on trademark laws and domain names. In this post, we will look at some of the things you can do if someone registers a domain name for a brand you had already filed a trademark for.

Let’s get started!

First things first 

Before we even talk about what you need to do, we always encourage new entrepreneurs to register their domain names before they file for a trademark. It’s wise to lock in your domain name or URL first since they are fairly inexpensive before you embark on a much expensive and laborious trademark registration process. The last thing you want is to get a trademark for a URL that is already taken, right?

But what if you forgot? Or maybe someone registered a slight variation of your URL after you registered your trademark?

Well, your next course of action will depend on a few things. We’ve listed them below.

When did they buy the domain? Did they buy the domain name after you registered your trademark? If the answer is yes, then you can sue them if you have enough evidence to prove your case.

But if they bought the domain before you registered the trademark, then you might hard time proving their intent was to infringing your trademark.

1. What are they using the URL for?

Typically if someone buys a domain name and does nothing with it or uses it for something unrelated to your brand name or company then you’ll have a hard time proving they are infringing on your trademark.  

So if someone else happens to have your domain name, ask yourself:

• Are they offering similar goods or services similar to ours?
• Could their site divert business away from our site?
• Is their domain name so similar that our customers might end up on their website by mistake?

If the answer to these questions is yes, then there’s an opportunity for a legal challenge.

2. Have they reached out to you to try and sell the domain to you?

Sometimes there are people just looking to profit off the goodwill of your company. So they will try to hold domain names for “ransom” in attempts to profiting from you.

So if someone has reached out to you with the intent of selling a domain name to you, then that might be a clear indication that they registered that domain name with the sole intent of selling it to you.

If that’s the case, you have two primary options:

1. Reach out to the person who owns that domain name and try to informally resolve the domain name dispute. You can either buy it or inform them of the legal liability if you sue them.
2. File a complaint with the ICAAN. In most cases, anyone who’s trying to sell you a domain similar to your brand will want to sell it to you for a large sum of money. So buying might not be an option for you. Filling a complaint with ICAAN is the most effective way to get your domain back and fight off anyone who’s trying to sell you a domain name.

Key takeaways

To ensure that your company’s chosen or desired domain name is not purchased by someone else, make sure you or your attorney performs a comprehensive domain name search (including names of similar domains). This will help you ensure that no one has your domain name or a similar domain name that might cause confusion for your customers or cause a trademark dispute in the future.

If you have any questions on this topic or any other topic reach out to us at miller IP law will be happy to strategize and talk about it. Good luck with your business!

About Our Firm…

Miller IP Law is a group of attorney's, based out of Mountain Green, Utah, who are excited to help you build your business and further innovate market places and economies. Please consider looking at our services, billed at flat rate, and be sure to grab a free strategy session to meet with us!

Start Your Journey

Get weekly stories and information about protecting intellectual property with our e-mail Newsletter today!

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

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1. Cheapest Way To Get A Patent

2. How Long Does It Take To Get A Trademark?

3. Why Are Patents Important?

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It’s one of the many IP-related problems of starting a business in the digital age.

You come up with a perfect brand name.

Do all the paperwork, register a trademark, and even tell everyone about it.

But when go you to register a domain name online, you notice something terrible.

Your perfect domain name has already been taken! Or someone else is already using a similar URL to your brand name!

So, in such a situation what should you do? 

Do you go to court and claim the rights to the domain since you already have a trademark? Wait… does your trademark even give you the rights to the URL or domain name?

Well, join us by reading this article as we explore trademark rights and domain ownership. We hope this article will shed more light on what rights a trademark gives you against a domain name and what you can do when someone else starts uses your brand name as their URL.

Without much further ado, let’s jump right in!

So, does a trademark give you rights to a certain domain name?

No (unfortunately :-( ). Having a trademark does not necessarily mean you have rights to a URL or the right to own a certain domain.

A trademark is only used to protect words and design elements that identify the owner, source, or developer of a certain product or service. It prohibits others from using marks, symbols, or designs that look similar to yours and can cause confusion with your brand.

In certain cases, however, a domain name can qualify for trademark protection. For your domain name to qualify for trademark protection there are a few factors that need to be considered.

1. Who was the initial owner

Who owned the domain name first? If you were not the first to own a particular domain name, then you will have a hard time asserting that you should be the owner of that domain name.

Acquiring a trademark does not necessarily mean that you own the rights to a domain name that someone else already owns and has been using.

 However, if you were the first person to own and use the domain name to market your products or services, then your domain may qualify for trademark protection. And this means you can prevent others from opening a website with a similar domain name if you already have a registered trademark.

2. How is the domain name being used?

Having similar business names and ‘look-alike ’website URLs is not uncommon and does not necessarily count as trademark infringement. A domain name qualifies for trademark protection when there’s a similar domain name that appears confusingly similar to customers.

For example, let’s say you have an eCommerce store that sells clothes under the domain name morningstar.com. If one of your competitors opens a website with a slight URL variation to your names such as morningstarr.com or morningstarclothes.com then your domain name qualifies for trademark protection and you can prevent them from using the URL.

However, if a company launches a website with a similar URL but they are not trying to compete with you and their URL or website does not confuse your customers then this does not necessarily result in trademark infringement and you cannot prevent them from using it.

So, what should you do if someone registers a similar domain name?

What should you do if someone else has a ‘look-alike’ domain name? 3 Options

Option 1# Keep calm and do nothing

One of the cheapest options is to do nothing and let go.

This can be particularly useful if the domain owners are not trying to compete with you or if their website does not look confusingly similar to yours.

And let’s face it, if a visitor visits the wrong website and discovers it then they will go back to Google and search for your website. Besides, you can always use search engine advertisement (SEA) to lead customers to your site.

However, if you notice a similar domain name and website looks confusing to your customers or is serving a similar market to yours, then you might want to look into the other options.

Option 2# Purchase the domain name infringing on your trademark

A simple solution to getting a similar domain name is to purchase it. Everything has a price and the current domain owner will most likely be willing to let go of a domain name if your offer is good enough. Depending on how much you are willing to pay, this could be the easiest way to get a domain name back.

Pro tip:

If you are looking to buy a domain name for your business it is best to keep your identity anonymous. Most domain name sellers will attempt to inflate the price if they discover you are trying to get it for a notable brand.

Option 3# See you in court

If everything fails, you can escalate the situation to court and sue to get the domain owners. This might not be the most ideal process because it can be time-consuming and generally, you have to gather evidence to show your trademark is being infringed by the domain owner. For example, in most cases, you’ll need to prove that the domain name has been registered in bad faith or it is confusingly similar to your brand name.

This method, however, always works when someone is trying to rip you off and divert your customers to their website by infringing your trademark.

Wrapping up!

Your domain name is just as important as your brand name. Make sure to protect it using the methods we’ve outlined to avoid losing your business to someone else.

If you have a question on Intellectual property protection, feel free to reach out to us! We will be happy to strategize and talk about it. Good luck with your business!

Miller IP Law is a group of attorney's who are excited to help you build your business and...

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Launching a startup can sometimes feel like walking through a minefield.

There are so many things to think about and so many costly mistakes waiting to be made.

One of the common mistakes that entrepreneurs make is failing to protect their personal liability and brand when forming their business. This often happens when the entrepreneur is not aware of the coverage and protection a business name, trademark or domain offers to their business.

In this article, we will help you navigate the business formation journey by explaining how you can legally protect your brand and personal assets when forming a business. We will also help you avoid the costly mistakes most entrepreneurs make when registering their business with the state, buying a domain, and filing or a trademark by explaining to you what protection each item offers.

So, let’s get started!

Registering your business with the state

The first step when forming a business is registering it with the state. Depending on which state you live in and which business entity you are starting, the process and cost vary.  

A big part when registering your business will be deciding on your business structure. Your business structure affects the way you operate, file taxes, and how much your personal assets are at risk if your business gets sued, or fails. Since this has a huge impact on your business, it is important to make a sound decision when choosing a business structure.

Here is a brief overview of some common business entities and their notable features to help you when deciding on the best structure for your business:

Sole proprietorship: A sole proprietorship is the easiest business structure to set up. Very little paperwork is required and is easy to exit since you are the only owner. They are also the default business structure if one fails to specify a business structure when registering their business.

A sole proprietor doesn’t offer personal liability protection. This means if your business is sued or defaults on a debt, your personal assets (house, personal bank accounts, car) are at risk.

Partnership: A partnership is a business entity owned by two or more individuals. There are two types of partnerships: a general partnership and a limited partnership. In a general partnership, each member makes an equal contribution and shares liabilities equally. For limited liability partnerships (LLP) there is one partner who is exposed to personal liability while the other partners (limited partners) enjoy limited liability. Limited liability partnerships also protect all partners in case of debt in the business.  

Corporation: This business structure allows the owner to make the business separate from the owners (the shareholders). It is independent, has its own legal rights, and can sue, be sued, buy, own and sell property. Corporations, therefore, offer the most protection against the owner’s personal assets.

Limited liability corporation (LLC):  An LLC is a hybrid entity that allows owners to limit their personal liability while enjoying the flexibility and tax benefits offered by partnerships. In an LLC, owners are shielded from personal liability for debts of the business.

LLC’s are a good choice for medium to higher-risk businesses, and owners who want their assets protected and who want to pay a lower tax rate than they would if they were to form a corporation.  

* Note: Registering your business as an LLC or corporation only protects your personal assets but not the name of your business.

It is important to check you are not duplicating another business' name or brand when registering your business name. The state does a minimal check only to ensure there are no two entries with the same name in their list. So never depend on the state to check on whether your business name or brand sounds or looks similar to that of another business. It is always up to you to do your research to ensure there are no existing brand names with a similar name to yours.

Registering a domain/ URL

A domain name is an internet address. It is equivalent to your website's physical address.

In most cases, a domain name takes the form of two main elements. For example, the domain name Nike.com consists of the website’s name (and name of the company) –Nike and the domain name extension - .com.

Domain name registration is overseen by ICANN (Internet Corporation for Assigned Names and Numbers). ICANN oversees and specifies which domain names are available and also maintains a centralized database with where the domain names point to.

Note: Having a domain name does not mean you have a website or own any rights to any website or brand online. And certainly, it doesn’t mean you are in the clear when it comes to protecting your brand. Other businesses can still sue you or steal your brand by forming a close variation to your name. Therefore, always remember if you own a certain domain, it doesn’t give you rights to that business or brand.

Trademark

Trademark is defined by the USPTO as “a word, symbol or phrase, used to identify a particular manufacturer or seller’s products and distinguish them for the products of another.” A trademark protects a business’s rights to use the mark, word, or phrase to identify its goods and services and prevent others from using it.

Filing for a trademark will allow you to sue and prevent any unauthorized business or person who attempts to use the trademark for products or services similar to yours. The test is always to ascertain whether a certain product can be confused with the original brand or business.

For example, the word ‘Nike’ and ‘Swoosh’ identifies the shoes made by Nike and distinguish them from shoes from other companies (eg. Adidas or Reebok). Any company that attempts to use Nike's logo or slogan would get sued by Nike Company.

Wrapping up: 

Key takeaways

Registering your business name with your state or buying a URL does not offer legal protection for your business or brand. You only get legal protection through registering a trademark. A trademark gives you ownership over the use of a design, word, or phrase – such as your logo, slogan, or name of your business.

Feel free to reach out to us if you have any questions. We will be happy to strategize and talk about it. Otherwise, good luck with your business.

Miller IP Law is a group of attorney's who are excited to help you build your business and...

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You may have heard an appalling number in the news indicating how much “Brand X” paid a celebrity to use their image or signature quote in an advert/product. It would make sense that a person’s image, catchphrase, or in this case a quote would belong to that individual as a right. At the same time, there are countless instances of small businesses, Etsy shops, and blogs using quotes from famous people, films, and media in their own products or marketing without directly having the rights or licensure. Are all these activities illegal? Actually, many of these uses are in fact legal, but only when meeting a few criteria.

You may have heard an appalling number in the news indicating how much “Brand X” paid a celebrity to use their image or signature quote in an advert/product. It would make sense that a person’s image, catchphrase, or in this case a quote would belong to that individual as a right. At the same time, there are countless instances of small businesses, Etsy shops, and blogs using quotes from famous people, films, and media in their own products or marketing without directly having the rights or licensure. Are all these activities illegal? Actually, many of these uses are in fact legal, but only when meeting a few criteria.

While we offer trademark searches at Miller IP Law, we always recommend you do some of your own research before talking with a lawyer. It can save time, money, and better prepare you for the conversation you will have with them. To research trademarks, you can search the USPTO database to find domestic trademarks at the USPTO website.

Many famous quotes seen commonly on products and blogs are ones that have entered the public domain. Public domain material has no individual owner. This means that the owner’s rights to the mark(s) have been transferred to the public and are now fair use to use freely.

Whether or not the work fall’s into the public domain is a little challenging, however, as even if the person who the quote is attributed to has passed on, the work may still be apart of their estate or belong to another entity. Unless the author/owner has explicitly declared that the work is licensed for public use, it may take quite a bit of research to determine if the quote falls into this category.

If the quote does not contain a phrase that is trademarked, it does not explicitly fall under public domain, or you have not been able to get the permission of the person who said the quote, the mark may still be considered fair use. Fair use may apply if the use of the quote does not imply that person has sponsored the work in which you are using it. You can say “Friday is my favorite day” on a sign for instance, but saying “Friday is my favorite day” by Brock Phillips if you did not get “Brock Phillips” permission would falsely imply sponsorship.

Fair use does not guarantee that the person you quoted will not hold you liable, however. If your product is large enough to attract the attention of that author, show, or celebrity, fair use does not stop them from taking you to court. The message here is to be careful and considerate of what you use and why.

The answer to whether using a given quote in a product will fall under fair use or theft of intellectual property is determined on a case by case. We hope that this information helps you answer some of the questions you may have, and as always, we invite you to chat with one of our attorneys to better understand how intellectual property factors into your business.

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

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One of the important steps in building a business is considering what brand or name you will use to promote and identify the product. But what is a brand? Is it a trademark? Is it a company? The World Intellectual Property Organization (or “WIPO”) attempted to distinguish a trademark from a brand. WIPO defines a TRADEMARK as:

“any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark”

“any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark”

Essentially, some word or design which separates you from another can be a trademark. WIPO then defines a “brand” as:

“a name, term, sign, symbol, or a combination of them, intended to identify the goods and services of one seller or a group of sellers and to differentiate them from their competitors”

Confused?

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Trademarks are a valuable part of a business, including trademarking your company name or brand name. They provide a brand behind which you can position your company and grow. It is a unifying element telling your market that your products and/or services come from your company. It can be your shield and defense from counterfeit attempts. It can be the umbrella under which you can continue to grow and develop. Your trademark can become the face of your company and the core of your advertising campaign and the name by which your market comes to recognize what you are building.

If you’ve ever seen a mark on a product such as an “®,” a “TM,” or an “SM,” you are seeing an identifier for a trademark. The “®” denotes a federally registered trademark while the “TM" corresponds to an unregistered trademark and the “SM” indicates an unregistered service mark.

Given that a trademark can be so core to your company, what does it cost to trademark a name for your company?

First, you’ll need to know that there are at least three types of costs corresponding to a trademark. The first is the application cost or the cost to apply to have the mark registered, the second is the prosecution cost or cost to address any issues that may arise before it registers, and the third cost is maintenance fees or cost to keep the mark after it has been registered. Each of these costs can vary a bit.

Application Costs

Trademark costs in the form of application fees can vary a bit depending on the answer to a few questions.

First, we will need to identify a class or plurality of classes to which the mark will apply. Different classes identify different goods and services. Many trademarks designate a single class but it is not uncommon to associate a trademark with multiple classes. Each additional class provides an expanded protection under the trademark but also increases costs. Additionally, some classes for a single mark may be “Use in commerce” while others are “Intent to Use” which brings us to our next question: the filing basis of the trademark application.

The basis of a mark tells us whether 1) the mark is one that is currently used to sell products or services or otherwise put out into commerce, or 2) the mark is one that has not yet been used in the market? The answer to this question will determine if a “Use in Commerce” trademark application or an “Intent to Use” trademark application is required. “Intent to Use” marks will require that we show actual use later on while “Use in Commerce” marks will require that specific evidence be supplied at the time of filing the application.

Once we know the filing basis (Use in Commerce or Intent to Use), we can move to the next step, which is to determine if we can use the Trademark Electronic Application System (TEAS) to file a Plus Application or a Standard Application. Here are some of the differences between the two:

Cost: Plus applications are less expensive than the Standard variant but are also more restrictive as to the types of marks that qualify for a Plus application.

Description: Plus applications require the use of premade goods and services descriptions associated with the selected class(es). If there is no listing that is appropriate for the goods or services, we will need to create our own and file a Standard Application.

Nature of the Mark: Plus applications are for English words without any additional elements such as specific colors, artwork, previous trademark applications by the same applicant, name of a person, non-Latin characters, etc.

Prosecution costs

After an application is filed, it will be assigned to an Examining Attorney who will act as a gatekeeper to make sure there are no issues with the trademark as specified in the application. This may involve a refusal to register which will require a response in order to overcome any issues and proceed to registration. Having a skilled attorney at your side can increase costs but is also likely to vastly increase the chance of successfully registering the mark.

Maintenance Costs

Maintenance fees are charged between the 5th and 6th year of registration and then every 10 years from the date of registration.

In Conclusion

Those are the three main costs corresponding to a trademark. These will vary from situation to situation, so if you would like to get a more definitive answer for your situation, you should talk to your attorney.

If you don't have an attorney yet, Miller IP Law offers FREE Strategy Sessions, where we will go over your trademark & patent needs and give you a better idea of what you can expect. Sign up for one today, no commitment.

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Sometimes, the simplest questions require the most complex answers. For example, the question “How much does a trademark cost?” is actually quite difficult to answer because it depends upon how crowded the market is, attorney fees, and the likelihood of confusion with other marks out there

Here is an estimate of the likely costs you will face on the road to getting a trademark for your brand:

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While there are no hard deadlines for filing for a trademark, you should apply for a trademark as soon as possible to avoid others copying your brand or coming up with a similar brand. As you prepare to protect your brand, here are some of the most frequently asked questions about trademarks.

1) Can I trademark more than one mark at the same time?

You can only register one mark for each trademark application as each trademark application is examined separately for registration of the trademark. You will have to file separate applications for logos, business names, slogans, etc.

2) Can more than one company use the same trademark?

Yes, different companies can use the same mark in business as long as the products or services are not similar enough to cause confusion among consumers.

3) How much compensation can I get if someone infringes on my trademark?

The amount of compensation you receive depends on the case. Courts usually award one or more of the following: Profits related to the trademark Infringement Damages related to your brand Attorney costs and court fees

4) Can I register a trademark in my state?

If you do business only within your state, then filing a trademark application with your state's secretary of state may give you enough protection. If you are using or plan to use the mark across the US, in multiple states, or online then you will want a federally registered trademark.

5) Can I register an international trademark?

An international trademark doesn't exist, but you can register a trademark in separate countries. Typically you will have to register your trademark in each country of interest.

6) What is a service mark?

A service mark protects a business's services instead of its products and offers the same protection as a trademark for a product.

7) What is trade dress?

A trade dress refers to the visual appearance of a product and/or packaging material that serves as a signal of the product's source.

8) What is a counterfeit?

A counterfeit is a replica of a product from another company that includes a copy of a trademark and other features. A counterfeit is usually designed, intentionally or not, to deceive a consumer about the manufacturer or source of the product.

9) Do I need an attorney to register a trademark?

You don't have to hire a lawyer, but doing so can help your case. Experienced attorneys know what makes a strong trademark and can help you file the right paperwork to protect your intellectual property. You'll have a higher rate of success, and better protection, if you get help from an attorney. Additionally, the process may be much faster and smoother.

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If your business is all about its brand and reputation, trademarks can be an important way to protect the brand of your business. If you want to protect your brand here are some of the most common mistakes businesses make with their trademarks.

1) Assuming that using a mark first protects your rights to the mark.

There are some protections given by the Lanham Act to companies that use a mark first in business. However, the type of protection this provides is limited to your geographic location may not be enough to protect your brand or prevent others from using your mark. Only registered trademarks provide full protection for your brand.

2) Trying to trademark a copyright (creative work).

Only a copyright can protect creative works such as books, movies, songs, or visual art. You can't trademark a creative work.

3) Applying for a trademark instead of a patent.

The United States Patent and Trademark Office (USPTO) handles both trademarks and patents, but trademarks protect brands and patents protect inventions (e.g. devices, business methods, and industrial processes). You can't trademark an invention.

4) Attempting to trademark an idea.

You can't do much with an idea. You have to turn your idea into something. Once you have turned your idea into an invention, you may be able to patent it. If you turn the idea into a work of art, you may be able to copyright it. If you turn the idea into a brand you may be able to trademark it.

5) Confusing a trademark with a business registration.

You should register your business with your state's secretary of state. This registration protects your business name in your state only and is not a trademark you can use to protect your brand.

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On average it takes about 1 year from start to finish.

Every trademark case differs and depends on a number of issues, such as whether you file an “in use” application or an “intent to use” application, whether any oppositions arise from others, whether the United States Patent and Trademark Office (USPTO) issues any Office Actions regarding your application, and so forth. In general, you should want to budget at least a year for your trademark to be approved and get the benefits of trademark protection. One positive note is that no matter how long it takes to get your trademark registered, when the process ends and your trademark is approval (assuming it gets approved), you are entitled to retroactive protection as of the initial date of filing your trademark application. Let’s take a look at some of the steps that comprise that time frame.

Trademark Application Process

The date from when you file your trademark application until the mark is approved known as an “application period.” Once you decide to register a trademark you will want to consult with a trademark attorney who has the experience to ensure that the mark you decide on has a good chance of approval.

Once you identify an attorney you trust and begin the process, your attorney will submit a trademark application to the United States Patent and Trademark Office (USPTO), where it goes into a queue for an examining attorney to review. It usually takes 3-4 months for your trademark application to reach the top of the queue and for examination to begin.

The examining attorney will then conduct a thorough review of the application including checking an accuracy on the application and any potential conflict with existing mark(s).

In the ideal situation, there are no conflicts with existing marks and your trademark will then move to a 30 day publication stage. This is a way of publicly announcing your pending mark and to open the floor to any objections from others. At this point, you are at nine to ten months from date of filing. Once your trademark makes it through the 30 day period, your mark is approved and the USPTO will move to make it official (issued) within 2-3 months after publication (for a total amount of time of about 12 months).

Potential Delays For Your Trademark Application

There are a few potential issues that may slow down the trademarking process. One is if the USPTO issues an Office action(s) requesting a clarification or correction to the mark or if the USPTO finds or a potential conflict or overlap with an existing mark. You’ll have six months to respond to an Office Action, at which point your application will either move forward or be denied.

Disputes during the publication period may also hold up your trademark’s approval, depending on the legitimacy of any claim.

If you filed your mark as “intent to use” application, you won’t be approved until you’ve filed a follow up to your initial application, proving use of your mark in commerce. You have a year to do this and this time may add to the overall time to approval.

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A trademark owner does not own a word or an image. Rather, the trademark owner owns the use of the mark to identify the source of goods or services.

Knowing what your trademark protects and how to use it is the key to maintaining your trademark.

When you apply for a trademark, you file a statement of use with the trademark application. The statement shows proof that the trademark is actually being used in commerce (i.e. in the market). A trademark protects the use of a mark to identify the source of goods and services.

If the trademark is not being used then the trademark should not be protected. Trademark protection does not allow for warehousing marks for future use.

How Long Do Trademarks Last?

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What Can Be Trademarked?

Phrases, words, symbols, sounds, and even colors are all eligible for trademark protection. Anything that identifies your brand and is used to distinguish your company or goods/services from other companies can be trademarked.

Lorem Ipsum is simply dummy text of the printing and typesetting industry. Lorem Ipsum has been the industry's standard dummy text ever since the 1500s, when an unknown printer took a galley of type and scrambled it to make a type specimen book. Trademark may be used to distinguish your company from others and indicate the source of goods/services. It is important to note that just because you have a trademark doesn't mean you own a complete monopoly on your symbol, logo, or name. Your trademark is linked to the same and similar types of goods and services associated with your trademark. For example, McDonald's may have a slogan that says "I'm Lovin' it," that is associated with the food industry but if you start using the slogan in the automotive industry you would be within your rights and would not be infringing McDonald's trademark. In determining whether your mark is trademarkable, the United States Patent and Trademark Office (USPTO) will determine whether any other marks already in use would create a likelihood of confusion with another brand. For example, if a consumer saw your brand and another brand and wasn't sure which company sold each good/service (e.g. the individual thought your company sold another companies goods/services or vise versa) then your mark is not trademarkable and may infringe another company's trademark.

What can't be trademarked?

Before we talk the standards for what is trademarkable, it is worthwhile to note there are several words and phrases you typically cannot trademark (with a few exceptions): Proper names or surnames Generic terms or phrases Government symbols or insignia Vulgar or disparaging words or phrases The likeness of a U.S. President, former or current Immoral, deceptive, or scandalous words or symbols Sounds or short motifs that are covered by copyright instead. Descriptive names that can't be distinguished from those of other products Names that include a geographic location, such as California Pizza Kitchen Generic names Deceptive names Lacks any distinctive properties or characteristics Consists of signs or designations that define how the product is made Has become customary language in the country of origin

Strength of your mark

Aside from the exceptions above, almost any word, phrase, or logo/design may be trademarked. However, not all trademarks are created equal. Some trademarks are stronger and more valuable because the court system is not likely to find the trademarks invalid: Generic Terms. These typically cannot be trademarked because consumers use them to describe a general type of goods/service. Examples include Thermos, Kleenex, Q-Tip, Aspirin, Dumpster, and Band-Aid. Descriptive Marks: These directly describe what the product does or a characteristic thereof. Example include fast to describe a phone or light to describe a laptop. Suggestive Marks: These stand for a product, yet don't describe it. Examples include: MICROSOFT (suggestive of software for microcomputers), NETSCAPE (suggestive of software which allows traversing the "landscape" of the Internet), SILICON GRAPHICS (suggestive of graphic oriented computers) Arbitrary Marks: Words common to the English language, yet meant to describe something else. Think Apple. Fanciful Marks: Names that are unique and original, such as Tylenol or Xerox. Note, a trademark also refers to an entire trademark and not pieces that add up to a total trademark. For example, the words "dry" and "baby" can describe diapers, but on their own they cannot be trademarked. However, if you put the two together to form a brand called "Baby Dry," it would be a valuable trademark because of its distinctive nature.

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Why would I trademark a word/phrase

Trademarking helps ensure that no one else can use a similar word or phrase to promote similar products or services. For example, Nike has built its brand on the trademarked phrase “Just Do It” and has trademarks to protect the use of that phrase. To get a trademark on a word or a phrase, you must use the word or the phrase in commerce or intend to use it in commerce by selling goods or services that use the mark. Second, you must identify the types of goods or services that you want to use your trademark on. Third, you can’t trademark a phrase or a word if it is confusingly similar to a phrase or word that’s already been trademarked for the same type of goods or services. Words or phrases are confusingly similar if people are likely to be confused about the source of a product or service. Once you are ready to use the word or the phrase, known the types of goods/services you will use with the word or the phrase, and have done some homework to make sure others aren't using the word or the phrase for the same goods/services, you are ready to file a trademark on the word or the phrase.

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One of the fears every company has when building a brand is that as soon as they get some notoriety a copycat will come along and knock them off. How do protect your brand from knockoffs and copycats? With trademarks. The first step on the path to getting a trademark is a trademark search.

Trademark Search

Trademark searches help you determine whether there are similar goods or services already out there that may cause trademark infringement issues. Trademark protection exists so that consumers know the source of goods and services. A trademark has to uniquely identify your goods and services as coming from your business. If someone else is using a similar mark for a similar purpose then their use of the similar mark may restrict your ability to protect your brand.

Any entrepreneur who wants to register a trademark can use several free resources to conduct an initial trademark searching The trick is knowing what to look for and how to find it. 

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It is hard work to brainstorm and design a name and logo for your brand. If another business starts using your trademark what can you do?

Trademark law can be confusing to startups and small businesses (and even large businesses). Here are a few steps to try and make the process or protecting your brand a little bit easier.

Determine if there is actually trademark infringement

Before jumping to a lawsuit, you need to determine if a problem actually exists.

Trademark infringement occurs only when consumers will likely be confused by the dual use of the trademark and whether the mark is being used for the same/similar goods and services. 

Additionally, you need to consider the regions where your business and the other business are selling your goods or services. If you operate a business Utah and someone opens a similarly named business in Hawaii, this likely isn’t considered infringement because customers in Hawaii probably won’t mix up their local store with one in Utah. Note, e-commerce and the internet are shrinking geographic barriers and courts may consider how someone’s online presence can impact another’s business.

Also, business names can infringe on one another even if they aren’t identical. Courts often consider “sight, sound and meaning” when determining if two marks are similar.

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A trademark is associated with specific types of goods and services and protects your brand from being used by other companies for the same or similar types of goods and services.

While companies can use your trademark if they sell different and unrelated types of goods or services, companies in the same industry using your trademark to counterfeit your brand and confuses consumers infringement your trademark rights. When an individual or company infringes your trademark rights, you can issue cease and desist or enforce your rights in court.

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A trademark allows a business to protect its brand (the business's name/product names/logos) from use by others and prevents unfair competition.

A trademark also helps consumers identify a product or a brand with a certain company to prevent confusion. The brand identity help consumers identify goods and services with a given standard of quality or reputation.

Trademarks define a source of products, such as a manufacturer or a seller. While it is not required by law, it is recommended to register the name of your business and products with trademarks. In the event that another business tries to use the same or similar name, you will have legal recourse to stop it.

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