23 Sep A Few Things About Trademarks… by John J. Davis III

Some things about that trademark you want to file:

At KMD, we file a lot of trademarks.  Literally thousands over the years.  We enjoy it, as it is a nice, cost-effective, and efficient way to show new and existing clients that we can do what we say we will do on time and on budget.  For many incubator, accelerator, and university or non-profit startup associations, we even provide free trademark filings (you cover the USPTO filing fees), to help get new companies moving and have some shiny certificates on the wall, as well as some strong protections related to the brand they are trying or may have already developed.

Over the years, and the thousands of trademarks, a few things I wish clients would have in mind as they contemplate their first or multiple marks for their business.

Trademarks matter, more now than ever. But what are they, and why?

• Trademarks are strong, cheap, broadly recognized, valuable assets, worldwide. Brand registries such as Amazon’s or Walmart’s take your trademark’s registration number and use that to block subsequent copycats or counterfeiters from selling goods on their platforms without your consent.  Without a registered mark, you cannot apply to these registries.

• Without a federal trademark, you don’t have standing in federal courts to enforce your rights against domestic and foreign infringers in opposition, cancellation, or other civil proceedings. You cannot claim significant statutory damages against your foes.  You lose a lot of leverage, as your opponent or some random third party might decide to rush out there and trademark it before you do, forcing your hand into costly proceedings to prove you are the first and superior user over them.   Once you identify what your brand is going to be, you need to get your trademark filed, just like you need to get your entity filed with your home state.  It should be first on your company “to do” list.

Brand recognition and protection matters. So, what do I need to file a trademark?

• First, you need to identify what your brand is going to be. Be unique.  The USPTO likes distinctive trademarks.  You cannot just register any generic or even sometimes merely descriptive words and call if your brand.  If you sell red apples, and you want to trademark the name for your business as “Red Apple Farmer”, you’re likely going to face some pushback from the USPTO.  And, in the event you do obtain that mark (See: Bank of America, Best Buy, or California Pizza Kitchen), you will still have to struggle with the reduced power of your trademark not being distinctive and original.   Think Intel.  Or Exxon.  Or SpongeBob.  Words that do not exactly evoke their goods and services through obvious meanings, simple surnames, or geographic areas.  Can you start off with generic or descriptive marks like that?    But they will start off on the Supplemental Register and remain there until you can show they have acquired distinctiveness.

• To apply for a trademark, you will need to:

• • Publicly provide the applicant owner’s identity and contact details, though they will be mildly redacted. We always recommend your entity holding/owning your trademark for privacy and liability purposes, so be sure to have your entity live prior to applying for the trademark.

• • Provide the final words or drawing of the mark, exactly as it will be used in customer-facing branding of your goods and services. We cannot change the words, colors, or imagery much after the application is filed, so do not submit works in progress that might later be substantially different once the goods or services are being provided.  The USPTO requires it to be nearly exactly as it was filed initially.

• • Identify the goods and/or services you will perform under this trademark. The USPTO provides a large database of suggested goods and services, but you can also describe your own.  We tend to pick the ones the USPTO has listed, as they are broad, already approved as appropriate goods and service descriptors, and make the application process easier to predict outcomes on.  For US trademarks, less is more.  If you are making vodka, we would say “spirits”.  If you are making jellybeans, we would say “candy”.  If you are making water soluble tablets for treating memory loss and dementia, we would say “dietary supplements”.  If your description is not specific enough, the USPTO will tell you to tighten it up.  If it is too descriptive, they will not correct you for that, and you then risk limiting the breadth of your brand protection, specifically saying “dog treats” instead of “pet treats”, or “scented candles” instead of just “candles”.  Pet treats would apply to all pets, and not just dogs.  Candles would apply to all candles, and not just scented ones.  Get the idea?

• • Provide examples or “specimens” of your trademark in use, on your goods or services. This can be done at the time of application if you are already in use, or you can supplement your application later by filing a Statement of Use.  Clients often have trouble with this, often for breaking the rule above in that they are providing specimens that do not match exactly the mark as it was applied for.  For example, if you had an apostrophe in the application, you must have it on the goods.  If you were using blue and orange in your website logo offering your services for sale, you can not provide a green and red logo instead, even if your favorite colors have changed.  In such cases, we would have to apply for a new mark and risk losing your priority in line with rights to that brand, assuming there are subsequent filers behind you trying to protect it.

So, you got your mark. Now what?

• Applying for and registering your mark is the beginning. It takes 8-12 months start to finish usually, assuming there is no drama, oppositions, or series of back and forths with office actions and responses on your application.  Once registered, trademarks do have to be renewed, once in the fifth year, then the 10^th year, and then every 10 years going beyond.   This process is pretty easy, assuming you are still using your mark as it was filed.  You will have to show you are still using it just like that, as you did in the initial application.  Most brands change a bit, of course, and such is why if you look into the trademark filing histories for Starbucks, or The Gap, Bank of America, California Pizza Kitchen, or even the Houston Astros, you’ll see that their branding changes and thus they have new trademarks filed to show their new branding.  Often, they will try and maintain their retro, original or legacy marks, and so they will issue limited edition, periodic runs of goods or services branded with old logos or phrases.  But the point is, they can show and do show that they have done this, live and in commerce.   You will have to do the same.

• Make sure your ownership is correct with the USPTO. If you convert your TX LLC to a DE Inc, you need to tell the USPTO that through their Assignment and Recordation Branch.  Just as you would update the Secretary of State for your business filings, it is important the USPTO knows who owns what and where they are.

I can do this by myself, right? Sure… you “can”.  But should you?

• The above is a lot to unpack. And though we always want to explain things to clients in a way for them to understand the how and why of what we are doing, perhaps even to a level where they feel like they can do it themselves, please be careful.  Making something look easy and it being easy are not the same things. The USPTO databases, like most business, patent, and copyright filings, are moderately public and permanent.  Even if you are correcting your mistakes in ownership, contact details, typos goods or services descriptions, failure to pay certain fees, or other mistakes you make in any of the above, everyone else can see that mistake and your attempt to correct it.

• Can you do it yourself?  Just like you “can” fix your own car headlights, roof shingles, sewage lines, or broken arm.  You “can” …. Yes.  But you will not do it as efficiently, painlessly, cost effectively, and/or confidently as professionals who do it regularly will.  You will likely have anxiety throughout the process as well as after the procedure is over as to whether you did it right, or more importantly that you did all the things you needed to do right.  Both have short- and long-term consequences.  If your business runs like my business, then those factors matter.  Downtime, confusion, and public mistakes my enemies see matter, and those should be considered when you want to risk running through things without attorney assistance.  The same also goes for if you want to maintain and monitor your marks on your own without having an attorney and the monitoring software we use to do so.  If you miss a deadline to respond to an office action or opposition, you have very few opportunities to correct that mistake, and a very short time window to do so.

KMD is a comprehensive business and IP law firm with multiple offices and licenses in dozens of states.  We are very experienced in trademarks, as well as patents, copyrights, and trade secrets.  If you need assistance on the above, or just want to talk shop a bit about your branding and exposure, feel free to reach out to me for a free consultation at jdavis@kmd.law or 713-936-9622.

Most businesses will only file a few trademarks in their lifetime, whereas this firm is filing a new trademark, answering office actions, responding to oppositions, or filing specimens for renewals multiple times a day.  Relying on that experience for efficiency and outcome predictions matters in business, especially if you are just starting out and you have precious resources to get something done the first time, quickly, and on budget.   We understand, and we can help.

Written by John J. Davis, III, Managing Member at KMD Law