Trademarks

In this post, I’ll be sharing what I know on Trademarks. Among other things, trademarks are most often a brand name (word mark) and/or logo.  Trademarks can also be a tagline, expression, or even be a sound (think NBC chimes).  I come from the licensing business so trademarks are familiar territory for me.  The process can be a bit confusing but it’s actually quite easy.

Unlike patents, trademarks can be gained through use.  So, my first word of advice is to start by adding a ™ to the end of your brand or logo.  Boom, you are trademarked!  This should of course come after a google search to determine if someone is already using your mark in your category of product (or service).  Really, you should do a deeper word mark search in the USPTO database. Even if you find your word mark being used, you may still be ok.  Trademarks get registered by classification (and there are ~45 classes).  That means, you can have two companies using the same trademark but in different classes.  It always baffled me that there is a United Airlines and a United Moving company.  This was likely due to the fact that both companies have been actively using the mark in their category for a long time.  If there weren’t a United Moving company today and I went to file the United trademark in the ‘moving services’ class, United Airlines may very well oppose the mark during the ‘published’ period.  As a service company who transports people, they could claim they have a likelihood to expand in a service that moves boxes. The take away here is to start using your mark publicly and do it soon. 

The next step is to formally file your trademark.  This is a surprisingly easy process and I used trademarkia.com which -- for a couple hundred bucks -- turned out to be great.  Keep in mind that some words may be considered generic and can’t be trademarked.  For example, Airlines or Moving may not be in the trademark for the United example above.  I don’t know for certain but both may be considered ‘descriptive’.  Over time, I do believe you can gain the full trademark (both words). Sometimes, you won’t be able to trademark a word and may need to rely on the mark.  For example, I’m not sure if Apple can claim the word apple but they sure have a trademark on the image of an apple with a bite out of it.  One word of advice is to challenge your lawyer.  They will always give you a worst case scenario.  Challenge them and push the boundaries; if you waited for every green light to turn green, you will never get past go. 

Generally speaking, an application that receives no objections from the Trademark Office will proceed from the initial application date to registration in about ten months.  The process goes like this:

1. Decide your mark and determine your class (helps to review & discuss with a lawyer)
2. Submit Application to Trademark
3. Response from Trademark Office in about 4 month
      • If refusal, six months to respond to Office Action.
      • If refused, submit Office Action response(s).
      • Trademark Office notifies mark will go to Publication, takes about a month.
    4. Publication (30 days)
      • If no third party objections received, application moves forward.
    5. Notice of Allowance
    6. Six months to respond by filing a Statement of Use or Request Extension of Time
      • Showing proof of use does have a cost associated with it, $100 in government fees + any legal fees.
    7. Statement of Use Accepted
    8. Registration – I think this is when you can move from ™ to ®.  Some brands never really embrace the ®.  For example, Discovery Channel still uses ™.  I’d love to know why brands wouldn’t embrace the registration. 

    We are happy to share the Pixl™ is a registered mark in the US!  It took a quick five months to get accepted.  The word Toys is more descriptive in nature so my attorney advised against registering it.  I’ll be using Pixl across a spectrum of brand extensions including Pixlplay™.  First and foremost, I wanted to put a stake in the ground and own the word Pixl in the toy space for my category and I’ll look to expand it over time through a combination of “use” and filing.

    You will notice this only applies to the US.  I will address my approach to the rest of world in time.  I hope this help someone out there!

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