Trademark 101…How to Slay your Brand
There are many moving parts when it comes to securing your brand. Knowing the intellectual property for which you can file can be confusing when you are trying to process the next steps. Intellectual property is a category of property that includes intangible creations of the human intellect. There are 4 types of intellectual property although not all types are needed for every business or brand, The 4 Intellectual Property (IP) Types are:
4. Trade Secrets
Understanding how to protect your intellectual property may seem complicated. The main question is where do I start? Let’s simplify the differences of each IP.
A Trademark is a source identifier for consumers to relate with a product or service. You can trademark a name, slogan catchphrase, word and logo of a good or service. Look for: TM (filed trademark) ® (registered trademark with the United States Patent and Trademark Office- USPTO) after the name, slogan or logo.
A Copyright is a type of intellectual property that gives its owner the exclusive right to copy and distribute a creative work (books, poems, music, photos) usually for a limited time. Look for © after the copyrighted creative work names.
A Patent is government authority or license conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention. Take Super Soaker for example. Johnson’s first water gun patent was issued in 1986. Another patent in 1991 would ultimately be commercialized by toy manufacturer Larami as the Super Soaker®. A 1992 patent described further improvements to the design using air pressure instead of water pressure. Genius idea! Protected, by not only a patent, but Super Soaker® is a registered trademark!
Trade Secrets are intellectual property (IP) rights on confidential information which may be sold or licensed. In general, to qualify as a trade secret, the information must be commercially valuable because it is secret, be known only to a limited group of persons, and be subject to reasonable steps taken by the rightful holder of the information to keep it secret, including the use of confidentiality agreements for business partners and employees. Think Coca-Cola or KFC’s secret recipes.
Every idea, product, service or creative work must be protected. It is your hard work and ideas that are vulnerable if left unprotected by not filing for the correct IP. And while every IP is not needed for every business or brand, a registered trademark is a great place to start for every brand and business as you expand and grow.
As mentioned above you can trademark a name, slogan, catchphrase, word or logo. By securing those with a registered trademark, you are protecting your brand from the start! Let’s take NIKE ® for example. They have their name, logo(s), and slogan trademarked. Trademarks do not just protect your name itself, but also any likeliness that could infringe on your brand. For Example, if you own the trademark for Luxury Hair Extensions, and another brand pops up as a Luxuri Hair Extensions… that would be considered an infringement on your registered trademark. You would then send a cease-and-desist letter on that likeliness, since the brands could be easily confused in the same class according to the USPTO.
Two brands with the same name can co-exist if they are filed in different classes—think of classes as departments in stores. Take Dove Chocolate and Dove soap, Delta airlines, and Delta appliances, and Pandora jewelry and Pandora music for example. These brands are in different classes, which allow them to share the common name while they operate in very different capacities. There are 45 different classes within the USPTO. So your registered trademark can co-exist in the world with another registered trademark if they are in different classes serving as different goods and services.
So how do you become a trademark owner?
Let’s start with a good development of a name—be distinctive! Research the name and slogan you want to include in your brand to make sure it is not currently in use in the same class you are wanting to file in. Next, decide who will own the trademark. Your trademark can be owned by you (an individual), your business (LLC, or corporation), your trust…there are various ownership options that can work for your brand! Once you have decided what you will trademark and how the ownership will be handled, we can start the application process!
Filing for a trademark application can take 3-4 months for the government to review. Once approved there is a 30 day period that allows for public opposition. Meaning they will post your trademark publically and if no one opposes, then 12 weeks after 30 days public period ends you will have your trademark!
Now, let’s say there are some issues during the review process, this would call for an office action (OA). If it is technical (i.e., spelling error, missing information) this is considered a non substantive response. The R.J. Pierce Law Group, P.C. will resolve the issue at no additional cost, and keep it moving with updates to you along the away. If there is a legal reason that prevents you from receiving approval, an OA will be issued as a substantive response This will require a legal brief from the legal team, which include research and copy writing hours—and will be accompanied with a cost.
Having a legal team behind you during this 8–12-month process is critical in ensuring your brand is properly represented from initial filing to approval. R.J. Pierce Law Group, P.C. also offers the option to have watch services over your trademark. Weekly reports are sent to the trademark owner to ensure that no one else is trying to apply for a trademark with the same name or likeliness to your brand within your class. We process cease-and-desist letters and proceed with a plan of action accordingly.
My trademark is officially registered, now what?
Great question—first, congratulations! You have secured your brand! But now, you must maintain that brand. 5 years after your trademark is officially registered with the USPTO, you must file for maintenance for your registered trademark or it may be cancelled. After your first maintenance filing, additional maintenance filing will need occur every 10 years. Keeping up with this is a task that can be delegated to our team! We offer watch services to ensure that your brand stays protected by our legal team running routine searches on your trademark and proceeding accordingly with cease-and-desist letters and keep you posted on the next steps! It’s so empowering to have your brand secured, you will want to do it again!
There is also protection as you build out your trademark family. A trademark family are names, slogans, logos, words, phrases, that go complement your brand. For example, McDonalds, has McNuggets, McFlurry, McMuffin… they have established a family of names within their brand. And if Wendy’s decided tomorrow to have a McFries (despite McDonalds not having that name already), there could be a confusion of likeness and the USPTO would NOT approve this trademark filing request.
The protection your brand has with a registered trademark is so powerful to the integrity of your business and brand!
The Biz Lawyer®, Rosezena Pierce, CEO of R.J. Pierce Law Group, P.C. has created a trademark family. She has: The Biz Lawyer®, The Biz Law Boutique®, The Legal Lounge®, Marks of a Mogul®, Secure The Brand®, Trademark Tea®, Secure Your Legacy™, Bizpreneurs™, and The Owners Club™. These trademarks all fit in the brand she is building and secures her with opportunity to grow!
The protection and security that comes with filling and obtaining a registered trademark is beyond a legal matter. It is your legacy and all your hard work and ideas appropriately credited to you! It is a very serious business and personal strategy to secure and protect your brand!
There is a lot of buzz swirling around trademarks in the media as the Metaverse is creating a virtual reality that is much like real life. Nike®, Birkin®, Wingstop® and even Chuck E. Cheese® have filed for trademarks in the Metaverse to secure their brands in a virtual reality setting. This action proves the importance of protecting your business, brands, ideas, and creative works. It is greater than now, it is your future! Stay tuned for how you can Secure the Brand® in the Metaverse Masterclass. Presented by The Biz Lawyer® coming soon!
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