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Trademark Law

Have you ever researched the quantity of trademarks owned by large companies?  The numbers may surprise you.  They frequently own not dozens, not hundreds, but thousands of trademarks and service marks.  A non-exhaustive list of Apple’s trademarks and service marks (categorized separately by type) can be found by a few keystrokes through a search engine.  The Coca-Cola Company dedicates a page on its website to its trademark chronology.  Amazon has its own trademarks page, and the bottom of this page indicates that Amazon has its own trademarks team (with an associated email address) to answer any trademark questions.  For those who are fans of Bill Gates and his software company, Microsoft has a very impressive, alphabetically-categorized trademarks webpage that one could spend some time with, including the well-known brands Age of Empires, Excel, Internet Explorer, Skype, and Xbox.  A search performed via the USPTO’s Trademark Electronic Search System reveals in excess of 3,000 records under the search term “Bank of America” in connection with the “Owner Name and Address” field, yielding results such as Merrill Lynch, Billion Dollar Index, and U.S. Trust.  A similarly structured search, substituting “General Electric” for “Bank of America”, reveals in excess of 2,900 records and produces brands such as GE and Spacemaker.  The trademark portfolios of some large companies are truly impressive, even overwhelming.

Small companies may not be able to afford, let alone manage, thousands of different trademarks, but they often find excellent value in owning anywhere from one to perhaps a few handfuls.  Sometimes owning a single trademark can be a difference-maker for a small business, separating it from the pack and helping protect it from those with bad intentions or those who do not respect the economic and creative investments made by others.  The registered trademark symbol, ®, sends a powerful message to third parties and (apart from its legal value) may even indicate a degree of sophistication by its user.  We have written a brief blog post about the potential benefits to filing a federal trademark application if you would like to read more about this topic.

Business Logo or Design Shown on Federal Trademark Registration Certificate

Business Logo Trademark Registration Leawood, Kansas

An ordinary small business may wish to consider obtaining federal trademark registrations for three pieces of intellectual property, spanning the categories of standard character marks and special form marks: (1) its business or trade name, (2) its logo or design, and (3) its slogan or tagline.  This would be done with a series of three separate and distinct applications with the USPTO.  Each application would be separately evaluated by a trademark examining attorney and would mature to registration or fail to mature to registration based on a number of factors.

The USPTO, when citing the benefits of hiring a private trademark attorney, states that it “strongly encourage[s] you to hire a U.S.-licensed attorney who specializes in trademark law to guide you through the registration process.”  Indeed, word for word, the USPTO additionally states as follows:

We take the unauthorized practice of trademark law very seriously.  Your trademark submission can be rejected, or the legal validity of your trademark registration could be jeopardized, if you take advice or receive assistance from someone who is not authorized to practice law before the USPTO.

Those are some very strong recommendations and admonitions!  This law firm has successfully obtained federal trademark registrations across the areas or industries of law, information technology, business consulting, software, mental health, speech-language pathology, roofing, and hemp.  We would welcome the opportunity to potentially increase our registrations across those areas or industries, and we would also welcome the opportunity to work with others.

The minimum fee charged by the USPTO per application is $250.00, known as the TEAS Plus filing option.  This amount does not include the trademark attorney’s fee.  Some trademark applications can cost several thousand dollars in government fees alone.  The application process is somewhat complicated and technical, and it can take many months or even a few years from beginning to end.  Many applicants receive a letter from the USPTO called an “Office Action” that outlines any issues with the application or with the mark itself (commonly based on likelihood of confusion or mere descriptiveness), and it requires a legal response.  This response generally must be filed within six (6) months from the date it was issued, but other deadlines may apply.  There may be strategic reasons for waiting towards the end of the deadline to file a response or, alternatively, putting a response on file as quickly as possible.  Each situation is unique.

If you would like to make an appointment with Kincaid Business & Entrepreneurial Law, LLC ® regarding a trademark law matter, whether in connection with a cease and desist effort, trademark application, or trademark litigation case, please feel free to conveniently schedule with us here.