All +
All -
Should you register a trademark?
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Do you need to register with the USPTO (Federal Registration)?
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not file anything (rely on common law rights)
- common law trademark rights arise from use
- protection limited to geographical areas of use
- would need to prove ownership and exclusive rights in litigation
- greater potential for innocent infringement by third party (not on fed database)
- can use "TM" but not "circle r"
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could register with State
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cheaper than fed registration ($15 vs $325 in filing fees)
- protects within state only
- junior user could freeze use to one state (i.e., lose right to expand to 49 other state)
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benefits of Federal Registration
- nationwide constructive use from filing date
- nationwide notice to potential innocent infringers (easily searchable database)
- statutory benefits in litigation (potential for lost profits, damage, costs, treble damages, attorney's fees)
- potential to obtain incontestable status after five years on principle register
- basis for ICANN proceeding (domain dispute)
- can use "circle r" symbol
- prima facie evidence of validity and exclusive rights
- option to extend rights to other countries
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What kind of Federal trademark application to file?
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What to file?
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standard characters?
- typically broadest protection
- but,increases likelihood that trademark office will find conflicting registration
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stylized form
- narrower protection
- more likely to avoid prior registrations
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Cannot get trademark that merely describes good/services
- cannot get "APPLE" for selling apples
- can get "APPLE" for selling computer (if first to use)
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What you DO NOT get
- someone to enforce trademark for you
- someone to defend you from claim of trademark infringement
- blessing that your mark does not infringe another's mark
- blessing that your business complies with any laws or regulation
- permission to sell the product or service being trademarked
- any endorsement of commercial value
- right to stop other from making same product or service and calling it a different name
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What you DO get
- right to stop others from using a confusingly similar mark
- see also benefits of Federal Registration
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Customs Office will stop incoming violating trademarks
- trademark must have been registered
- register with Customs
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Do you need a search?
- may not make econimic sense if already using mark for long time and not about to change now
- may not want to incur fees if "intent to use" (let TM office do search)
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self help search
- hire a trademark search firm
- hire a trademark lawyer
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How much does it cost?
- application filing fee for state - $15
- Application filing fee for federal (per class) - $ 275 - 375
- Legal fees to prepare application $ 350 - 550
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Credits
- This roadmap was developed by Marco Messina, Maricopa SBDC Dir. of Technology Programs and validated by Joseph R. Meaney, IP attorney, to assist clients in exploring relevant considerations and making decisions pertaining to patent protection.
Further information is available from :
Marco Messina, SafeTnet Consulting LLC 602-325-3213 marcomessina@safetnetconsulting.com or
Joseph R. Meaney, IP Attorney, Venable, Campillo, Logan & Meaney, P.C., Phoenix, AZ (602) 635-4504 jmeaney@vclmlaw.com