By merely using a logo, the owner acquires limited trademark rights, but for maximum trademark protection, logo owners should apply for a federal trademark registration with the USPTO.
When a company designs and develops a logo, often costing a lot of money to create, they often seek to obtain trademark protection for their logo to prevent competitors from using a similar logo.
Although individuals or companies that use a logo obtain limited trademark protection via common law trademark rights by using their logo, the best way to obtain trademark protection is to apply for and receive a federal trademark registration with the United States Patent and Trademark Office (USPTO).
Conduct a Trademark Search Before Applying for a USPTO Trademark Registration
Before filing a trademark application, the trademark owner, or their trademark counsel, should conduct trademark searches to confirm that no third party is using a “confusingly similar” logo in a related field of products and/or services.
Failure to conduct a trademark search, especially a USPTO knockout search, can result in the trademark application being denied and the trademark owner losing money all the money they invested in the USPTO application and may even require the adoption of a new logo.
Whether one trademark is “confusingly similar” to another trademark is a legal test that relies on many different factors. For a proper analysis of whether one logo is too similar to another for trademark purposes, it is best to consult a trademark attorney.
The worst case scenario for a company that begins using a new logo is to receive a cease and desist letter followed by a costly lawsuit claiming trademark infringement. If the claims have merit, the company will lose any money they invested in creating the logo and advertising the logo, and will need to start over again creating a logo.
Applying for a Trademark Registration with the USPTO
The process for obtaining a trademark registration from the USPTO for a logo is essentially the same as applying for a trademark registration for a company or product name. The trademark owner must apply with the USPTO for a trademark registration.
The trademark application must include a drawing of the logo, the date the logo was first used in commerce, a list of goods and/or services used in connection with the logo, a trademark specimen showing the logo used in connection with the goods or services applied for, the owner of the logo and all the other minimum trademark requirements.
There are a lot of aspects of the initial trademark application that can result in the application being delayed or even rejected completely by the USPTO. If an application is rejected, there is no refund of the trademark application fees which can quickly add up to hundred or even over a thousand dollars. Hiring an experienced trademark attorney will limit the risk the trademark application will be denied.
Timeline to Receive a Trademark Registration with the USPTO
One common problem for people who apply for their own trademark registration often struggle with is they think once the trademark application is filed, they already have or quickly will have a trademark registration. The reality is that the trademark application process takes at least eight months, and often takes longer.
One a trademark application is filed with the USPTO, nothing happens for the first three months, when it is then assigned to an “Examining Attorney.” The Examining Attorney’s role is to review the trademark application to determine whether it meets all the necessary requirements to become a trademark registration.
If the Examining Attorney finds some defect in the trademark application, he or she will issue an “Office Action.” Office Actions explain the specific issue(s) with a trademark application and allow the trademark owner to respond to the defects. Sometimes the responses convince the Examining Attorney to reverse their decision. If the response does not convince the Examining Attorney there is no defect in the trademark application, the trademark application will be denied.
If an Examining Attorney finds no issues with the trademark application, he or she will approve the application for “Publication.” During the Publication phase of the trademark process, any third party can “Oppose” the trademark application if they think it will cause them harm. If the company applying for a trademark registration for their logo conduct proper trademark searches, the opposition period should not be an issue.
Flowchart of the USPTO Trademark Application Timeline
Benefits of a Trademark Registration
Successful USPTO trademark applications become registered USPTO trademarks. Federal trademark registrations give the owners of logos added protections and benefits such as:
Use of the ® symbol after the logo;
Puts competitors on notice not to use a similar logo;
The USPTO will not register a confusingly similar logo;
Provides nationwide protection;
Presumption the trademark is valid and owned by the listed owner;
Easier to enforce trademark rights in civil litigation;
Easier to stop counterfeit products from being imported;
Treble damages in victorious trademark infringement lawsuits; and
Much much more
The only way to obtain federal trademark rights, and the associated benefits, is to obtain a federal trademark registration from the USPTO.
Do you Need a Lawyer to File the Trademark Application for a Logo?
There is no requirement that a trademark applications needs to be filed by an attorney. However, trademark applications filed by attorneys are much more likely to be successful.
An experienced trademark attorney will conduct trademark searches and foresee any potential issues before filing the trademark application. Trademark lawyers that foresee issues can avoid them so trademark applications do not receive Office Actions that prevent the trademark application from being denied.
Additionally, the trademark application process and timeline is confusing for most people. Rather than waste time and resources figuring out the process, it may be more cost efficient to free up that time by hiring an attorney to do the heavy lifting so you can pursue aspects of your business you are best at.
Do you want help understanding how to trademark your logo? Contact us today for a Free Trademark Consultation and one of our experienced trademark attorneys will contact you within twenty-four hours.