Remember, a trademark is at its most fundamental level, a source identifier. The idea is that by merely observing a trademark tethered to a good or service, the consumer understands the source of that good or service and attributes characteristics to the product because it is adorned by the trademark. How many of us have purchased shockingly expensive tires simply because of the brand’s insignia stamped on the outer portion of the rubber (be honest :))? Trademarks tell the consumer something about the product that cannot be expressed by the product alone. A trademark is a story. A trademark is, in short, everything.
Conduct a Trademark Search in the USPTO Before Cementing a Brand Identity
Car enthusiasts make for the best car-entrepreneurs. They love the industry and approach the game with passion. However, a frequent challenge new startups far too often encounter is the predicament of having invested a huge amount of time, energy, and money in the production of branding materials and products only to discover that their trademark/s is already in use by another company. Worse, they are only made aware of their infringement upon receipt of a nasty trademark cease and desist letter from a competitor. In order to avoid this pain, it is critical for startups to conduct a trademark search in the USPTO before settling on a company name or logo. Conducting this search will substantially lower the risk of trademark infringement and simultaneously minimize the chances of having to transition to a new trademark at a later and far more inconvenient time.
Startups Should File Trademarks As Soon as the Trademark is Exposed to the Public
Trademarks are more than simply a name/logo/slogan; trademarks are branding devices used in the connection with the sale of a good or service. Without the “sale” aspect of this dynamic, the branding device is not a bona fide trademark. The astute reader may be wondering, ’If my automotive startup has not yet sold anything, how can I file a trademark?’ Well, in this scenario, the trademark applicant can file what is called an Intent-To-Use application (ITU). Here, the applicant is instructing the USPTO that while the mark is not currently being used in commerce, the applicant intends to use it in commerce. By filing an Intent-to-Use, the applicant locks in a priority date and puts him/her ahead of prospective competitors. When is the right time to file a regular trademark application (based on existing Use) or an ITU? As soon as the mark is exposed to the public market and thus potentially vulnerable to theft.
Which is better for startups: Intent-to-Use applications or Use-Based Trademark Applications?
Ideally, an applicant would file a Use-In Commerce mark, indicating that the trademark has in fact already been used in conjunction with the sale of a good or service. However, as we noted in the previous section, if sales have not yet been made, a startup should file an ITU trademark application. Not filing an ITU, in these situations, may translate into a competitor finding your trademark and applying for a similar mark before you get the chance.
How Much Does A Trademark Cost?
Every trademark application has two sets of fees; the legal fees for the search, preparation, and filing of the application and the Government filing fees (either $225/Class or $275/Class). Intent-To-Use applications will cost a bit more than Use-based applications because of the subsequent requirement to submit a Statement/s of Use, with the USPTO. Remember, in Use-based applications, specimens of Use in Commerce and their associated dates are filed and incorporated into the initial filing of the application. However, with an ITU, the applicant has not yet submitted evidence that the mark has in fact already been used in conjunction with sales and therefore, the applicant can expect additional Government filing fees when filing the eventual Statement/s of Use.
We Received an Office Action Refusal – Now What?
A trademark application may be refused registration on either “Procedural” grounds or “Substantive Grounds”. Under either circumstance, the applicant will receive a trademark office action outlining the outstanding Procedural or Substantive issues. A common example of a Procedural refusal would be the incorrect recording of the type of business entity associated with the company (the applicant lists the company as an LLC even though it is a C-Corp) while a common Substantive refusal is generally either due to “Likelihood of Confusion” (your mark “DUDEYEAR” is too similar to GOODYEAR) or “Mere Descriptiveness,” whereby a mark describes an aspect or quality of the related goods and services (FIRM TIRES).
A knockout search can hopefully help discern the applicant’s risk of refusal by “Likelihood of Confusion” and consulting with a trademark attorney will help mitigate any Descriptiveness issues. Remember, the devil really is in the details and an exact match with an existing mark is not necessary for an examining attorney to find a Likelihood of Confusion. Similarly, the mark does not need to perfectly “describe” the goods/services sold to catalyze one of these challenging office actions. Speak to an experienced trademark attorney to guide you through some of these trickier and more salient issues.