*These fees are for qualifying marks. Marks that are deemed by Dowd Law as difficult to register, have potential conflicts, or may possibly infringe upon other marks do not qualify and may be quoted separately.
5 Reasons Why You Should Register Your Trademark or Service Mark
At Dowd Law, we understand that a business’s name and image are essential to building success. The purpose of a trademark is to protect your business by preventing other people from using your hard-earned reputation.
The primary reasons for registering your mark are to: 1. give you the presumptive right the name, slogan or image above all others; 2. an injunction preventing others from using your TM; 3. damages for injury to your marks; 4. profits made by someone for infringing on your mark; and, 5. above all else, get an award or attorney fees and costs. Trademark infringement lawsuits get very expensive, especially when they involve federal trademarks. If your marks matter, protect them!
What is a Trademark
Trademarks and service marks are commonly and collectively referred to as trademarks. This is because the term “trademark” refers to a unique word, name, symbol, slogan, phrase, image, or logo that identifies a business’s products or services. However, trademarks identify a business’s goods and products, i.e. “Nike®”, “Big Mac®”, “Audi®”, “Camaro®” Whereas, service marks identify a business’s services, i.e. “McDonalds®”, “Edward Jones®”, “Old Navy®”, “Starbucks®”. Marks that are registered with the US Patent and Trademark Office (USPTO) can use the “®” symbol after the mark. They can be distinguished from common law and state registrations which can use the symbols (SM) for service mark and (TM) for trademark. Marks that are generic, common or descriptive, typically will not be able to be registered as trademarks, or will they will be weak marks and difficult to enforce.
What is Trademark Infringement?
Any unauthorized use of a trademark or service mark that is associated with a good or service that is so similar as to cause confusion, deception, or mistake about the source of the products or services.
Why do a Trademark Search?
A lot of names sound unique. Unfortunately, that’s not always the case. There are many new businesses created every year throughout the United States. Before you invest considerable time and money into a mark, you should make sure you have the right to use the mark. A trademark search from an experienced attorney will ensure that your advertising budget and goodwill isn’t being thrown out the window. If you fail to verify your right to the mark, you could inadvertently find yourself on the losing end of a trademark lawsuit. In addition, you could lose a significant amount of goodwill, and you could owe damage to the other company. Also, you could owe your attorney fees, and theirs. A thorough trademark search will include a search of numerous databases including state and federal government databases to ensure that your trademark is unique and qualifies to be registered as a trademark.
Can Someone Else Use My Name?
Under common law you get protection only in the states where you continually operate and use your marks. If your business is located exclusively in one state and you do not sell into other states, then you only qualify for registration in the state where you operate. A state trademark registration will only protect you in the state where registered. If you operate in multiple states or sell into other states, or have significant ties to interstate commerce, you probably qualify for registration of a federal trademark. Federal trademarks protect your marks throughout the entire country. So if you have a common law or state trademark, then anyone can use your name in any state where you are not currently operating. If you have a federal trademark, then no one can use your name anywhere in the entire United States.
Common Law Trademark
If you are the first to use a mark and it is a unique mark, and you can prove it, then you might be entitled to protection under common law. Unfortunately, the answer to many of these questions is uncertain. Often it is limited to an injunction to stop someone else from using the name. No attorney fees or costs. Possibly not even damages. The cost of the lawsuit and the uncertainty of the outcome is usually enough to dissuade businesses from trademark lawsuits when they are relying on a common law trademark.
Registered trademarks are divided into classifications. Generally, Florida uses the same classifications as the United States Patent and Trademark Office (USPTO).. Class 1 through Class 34 are for goods, while Class 35 through 45 are for services. Find out more about the specific classifications in the Florida Statutes. When you register your mark, you must select the classification(s) that best cover the products and/or services that your mark is associated with. Marks that are the same or similar can be simultaneously registered if the classifications are completely unrelated.
Registering for a trademark in Florida is done through the Division of Corporations. .The filing fee to register a state new trademark or renew an old one is currently $87.50 per class. Marks are protected based upon the classifications you select in your registration application. However, you may only register marks that you are actually using. And, you may only register them in the classes that you are using them. Florida trademarks last five years in the state and must be renewed in the six months prior to expiration.
While filing for a state trademark is not terribly difficult, it is important that it be done correctly. Otherwise your mark may not be properly protected, or worse, not protected at all. And you waste the filing fees and a considerable amount of time. Registering a state trademark in Florida typically takes about 6 weeks from the date of filing. Mistakes in the application can add substantial delays to the registration.
Dowd Law can file your state trademark for you, which includes a state trademark search, for a flat fee of $400.00 plus filing fees.
Generally, registering for a federal trademark is done through the U.S. Patent and Trademark Office. The filing fee to register a federal trademark or renew an old one varies. This depends on the type of application being filed. Currently, the initial federal filing fees per class are either $225, $275, or $400. You may only register marks that are actually in use, however, you may file an “intent to use” application that will protect the name for until you begin to use the name. But you must register the mark within six months of the the Notice of Allowance from the USPTO or obtain an extension. Additional fees apply with an intent to use application. Federal trademarks are valid for 10 years. They must be renewed in the year prior to expiration.
Before you register a federal trademark, consult with a trademark attorney. Make sure no one else is using your mark, that your mark is protectable, that the application is correct, and that you meet the requirements for a trademark. Federal trademarks are more involved than state trademarks and there is usually more at risk. Generally, registering a federal trademark typically takes from 3 – 18 months from the date of filing and often times includes an office action from the USPTO that requires a response from the applicant. Mistakes in the application can add substantial delays to the registration.
Dowd Law can file your federal trademark for you, which includes a comprehensive trademark search, for a flat fee of $1,300.oo plus filing fees.
To learn more about protecting your marks give Dowd Law a call. We can help guide on choosing a strong mark and handle all steps of your trademark registration, including responding to any office actions from the state or USPTO. Our goal is to help you.