TRADEMARK FAQ's - The Creator's Law Firm

Q: Can a client perform legal work under our supervision? 

A:  Thank you so much for your inquiry and consideration of our trademark legal services. Due to ethical and liability issues, we are unable to enter into such an arrangement (i.e., allow clients to draft their trademark applications and/or perform any legal work under our supervision). 

With that in mind, our trademark legal service packages start at $3,000. If you would like to explore the benefits of our representation we are happy to do so on a discovery call.

If not, we wish you the best of luck in finding counsel to serve and support you with your IP portfolio.

Q: Providing Evidence of Use for the Trademark Application? 

A:  The USPTO wants to be sure that it is clear to the consumer that they are purchasing products from the brand “[™ NAME]”. As such, any proof we provide must show “[™ NAME]” in direct connection with the goods on the application. 

Could you update the header or footer of your product page to say “[™ NAME]”? For example, on this page here. 

Q: Can you estimate your fees and my potential losses if I were to lose my case in a Trademark Trial? 

A:  We find that we are able to overcome most Office Actions (i.e. requests for additional information) and have a 98.5% success rate when it comes to our trademark applications reaching registration. Our Pioneer package does not include OA responses, however, our Legal Legacy Package does. Responses to Office Actions can range from $1500-$2500 depending on the type of OA received (Procedural or Substantive). 

Q:  What does it mean for a Trademark to be “In Use” 

A: With respect to legal “use” of your trademark the following must be true:

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.  For purposes of this Act, a mark shall be deemed to be in use in commerce–

(1) on goods when—

(A) [the trademark] is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when [the trademark] is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

It is not enough by itself to create a sales page displaying the products and/or services. You must also make a sale of a product OR render a service.

Q:Various Outcomes After Filing Your Trademark

Q: What is a federal trademark?

A: A Federal Trademark is the protection of either your name, brand name, slogan or logo with the U.S. Patent and Trademark Office which (a) identifies the source of goods or services and (b) distinguishes such from the goods or services of others on the Federal level. 

Examples include:

1. “THE CREATOR’S LAW FIRM” as a word mark 
2. The Creator’s Law Firm logo: 
3. The slogan “We Help You Protect Your Smarts”

Q: What is the difference between a trademark, copyright and patent? 

1. A trademark is a word, phrase, design, or a combination that identifies your goods or services, distinguishes them from the goods or services of others, and indicates the source of your goods or services.
2. A copyright is an artistic, literary, or intellectually created works, such as novels, music, movies, software code, photographs, and paintings that are original and exist in a tangible medium, such as paper, canvas, film, or digital format.
3. A patent is a technical invention, such as chemical compositions like pharmaceutical drugs, mechanical processes like complex machinery, or machine designs that are new, unique, and usable in some type of industry.  (Thinking we can put this in a chart)

Q: Why should I register for a Federal Trademark rather than a State Trademark?

A: State trademarks protect a mark only in the registered state(s) and offer a limited amount of protection. Meanwhile, a federal trademark protects the mark(s) nationwide and potentially can be used to obtain international trademarks through the World Intellectual Property Organization and provide you with the greatest form of protection within the United States.

Q: How long does it take to Register my Trademark?

A: In total it can take approximately 9-15 months from when your application is filed for your mark to Register. (Wanted to add that there’s no guarantee here that it will register but I left it out for now).

Q: What if I know someone is using a similar name to me?

A: If you know of someone who is using a similar name to yours the legal team will be sure to take this into consideration when conducting your comprehensive trademark clearance search and provide you with clarity on the risk level to that in your opinion letter.

Q: Do I have to have a comprehensive clearance search for my mark?

A: YES! Completing the comprehensive trademark clearance search helps to identify any legal barriers to your company’s use or registration of its trademark before the company begins to actually use the trademark or apply to have it registered with the U.S. Patent and Trademark Office (USPTO).

Q: I have already checked the U. S. Patent and Trademark Office’s online trademark database. Why do I still need to have a trademark clearance search done?

A: Searching the U.S. Patent and Trademark Office search engine retrieves only records for registered and pending federal trademarks. It does not retrieve records of relevant state registrations or unregistered trademarks including company names, brand names, and domains, nor does it always provide you with a clear pathway to protection as the search engine only populates exact matches.

Q: How can a trademark clearance search help me avoid legal risk and save me time and money?

A: A trademark clearance search may significantly reduce the possibility of your company receiving a demand or legal action from a senior rights holder alleging infringement of their trademark by identifying such risks up front in terms of any pre-existing identical or confusingly similar trademarks.

Q: I’m not currently selling my goods or providing services to consumers, can I still file for my federal trademark?

A: That is a great question, yes! If you have not begun selling your goods or services just yet you can still apply for your federal trademark using the future use application. The future use application essentially holds your place in line until you are ready to begin use. However, please note that the USPTO will eventually want to see proof that you have begun selling your goods and services to consumers which can incur additional fees dependent on the package you invest in.

Q: Who reviews my application once it is filed with the U.S. Patent and Trademark Office?

A: A trademark examining attorney will review your application approximately 4-5 months after it has been filed (I know, crazy!) and will determine whether (a) we need to make changes and adjustments to the application, these are typically very minor procedural issues, (b) respond to a substantive office action refusal which is the examining attorney asking us to provide clarity and more information on your application or (c) nothing! They approve the application and it will proceed on the pathway to registration!

Q: I want to trademark my brand name, logo and slogan, do they belong on one application?

A: No, a brand name, logo and slogan are all separate and distinct trademarks which belong on their own application for review with the trademark office.

Q: What if I am using my trademark with certain goods and services but not all?

A: That is no problem! You can actually file a federal trademark application with both an in-use and future use section.

Q: What if I want to add goods and/or services to my application once it has been filed?

A: Unfortunately, we cannot add goods and or services to an application once it has been filed and accepted with the USPTO; however, we can always beef up an application before it is filed and if you decide not to render those goods or services we can always remove that language from the existing application. We can always remove, never add.

Q: How long does The Creator’s Law Firm (CLF) represent me?

A: The Creator’s Law Firm will represent you from when you retain us to when your mark has been registered with the USPTO. (There is no guarantee that your mark will make it to registration.)

Q: Do I need to Register my Trademark?

A: Not to use it. However, federal registration has several advantages, including notice to the public of the registrant’s claim of ownership of the trademark, a legal presumption of ownership nationwide, and the exclusive right to use the trademark on or in connection with those goods or services set forth in the registration. Federal registration also allows the owner of a trademark to sue for infringement in federal court and to stop the importation of infringing material. (HUGE!!)

Q: What is the difference between ™ and Ⓡ?

A: The ™ symbol is specifically for those individuals who do not have a federal trademark yet but are indicating to the general public that the words, logo or slogan are an identifier for goods and or services and would like to begin the trademark process. While the Ⓡ is specifically for those who have a obtained a federal trademark from the USPTO.

Q: What other legal services does The Creator’s Law Firm provide?

A: The Creator’s Law Firm provides an array of legal services to assist you in developing and protecting your legacy and brand. These services include:

1. Business Entity Formation
2. Business advice, restructuring and strategy sessions
3. World-wide Trademark Filings 
4. Copyright Registrations
5. Contract Reviews  
6. Contract Drafting
7. Contract Negotiation
8. Contract Disputes
9. Trade Secrets
10. Licensing 
11. Office Action representation 
12. Online Infringement Removal 
13. Cease and Desist representation 
14. Internet Law 
15. E-Commerce & Digital Commerce Protection

And monthly subscription and general counsel services aimed to represent and support your business to the fullest potential.