What is one of the most valuable assets for a startup? In my opinion, I believe it’s the startup’s intellectual property and more specifically, the startup’s trademark. This includes the brand assets, logo, company name, and tagline.
Trademarks help keep your brand ID safe; no one else in your market is supposed to be able to use your brand or trademark for a similar concept. But how much do you understand about the trademark process, when to register, if you have your mark claimed by purchasing a domain, and how long does the trademark process take? Here are the answers to 3 of the most frequently asked questions we get surrounding trademarks:
- Should registering our trademark be a priority when our startup has limited funds?
You’re a bootstrapped startup with a killer name but you don’t want to spend a pretty penny to register a Trademark. You’re not alone; many bootstrapped startups are working with a limited budget and prefer just to register a single trademark, or operate with a common law trademark. The reality is, registering a Trademark under the USPTO (the United States Patent and Trademark Office), can be expensive. Keep this in mind when registering a mark that the USPTO charges a filing fee per class of goods or services. Naturally, you’ll be paying a higher fee if you register in more than one trademark class. Roughly, an applicant may spend $225.00 for one class of goods or services and spend approximately $2,000.00 in filing fees registering a mark under every class of goods and services that it may fit. If your startup is strapped for cash, then it is wise registering the business name under a standard character claim (the standard format of a mark in a non-stylized form).
A standard character claim essentially means your registration broadly covers your name regardless of what font or stylistic elements used, i.e., logos, stylized fonts, etc. Keep in mind this protection doesn’t offer protection for the design elements of your logo. However, the best strategy moving forward for a bootstrapped startup is filing a standard character mark for the mere fact that if for whatever reason you decided to protect the design elements of your mark and not the name and you change your logo (trust me it will happen) you must reregister your new logo.
- Did I claim my mark by obtaining a domain name
Here’s a tip: if a search on GoDaddy tells you that your domain name has not been claimed, and you actually claim it, that still doesn’t mean you’ve claimed your mark; you’ve become an online squatter (sort of)! To claim a mark, you should go through the application process; however, there’s an essential question asked before applying: are you applying for 1) In Use, or 2) Intent to Use?
In Use: this means the trademark applicant is alerting the USPTO that the mark is in actual use in commerce, either across state lines or between the United States and another country. This doesn’t mean when you obtain your domain name or incorporation that you satisfied the requirement. This is the sort of confusion most startups have. Actual use essentially means that you’re telling the USPTO that the mark is in commerce either across state lines or between the US and another country. In other words, if you made a sale across state lines using your mark, you’ve satisfied the requirement.
Intent to Use: This one is pretty self-explanatory: either you haven’t used the mark in commerce, or it’s in commerce inside one state boundary. Also, the USPTO WILL NOT register the mark until the applicant begins actual use (see above).
- How long does it take to get a trademark
This is a common question, and the answer is usually not what a start-up wants to hear. Here’s the math:
- Review the application: 4 to 6 months
- Response to the Office Action: around 6 months
- Publication period in the Official Gazette: around 3 months
- Issuance of the certificate of registration: around 2 to 3 months
- In total, it takes about 13 to 18 months to get a trademark!
If you have any questions or need a consultation email me at adam@yormacklaw.
Adam Yormack, Esq., is the principle attorney at Yormack where he focuses on corporate and commercial litigation, franchise, and real estate law. You can reach Adam directly at firstname.lastname@example.org.
The materials in this article are provided for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any potential questions or concerns, etc.