Can you protect your business method through ™ registration?

Can you protect your business method through ™ registration?

Framework. Style. Process. System. Method.

Whatever you call it, it’s taken your blood, sweat, and tears to perfect it, so it’s a no-brainer that you’d want to protect it.

But how exactly do you do that?

**First, a quick disclaimer: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

What is a business method?

In a nutshell, a business method is an innovative technique that involves multiple steps to complete a process.

But if your method simply acts as a system to get things done, it won’t qualify for federal trademark registration.

When your term is used to identify both the steps to complete a process and the services rendered by means of that process, then it may be registerable as a service mark.

In this case, your method would be considered a source indicator.

A source indicator identifies the goods or services you are selling, and you can’t register your business method as a trademark unless it’s used as a source indicator.

The key difference is that it’s not the actual method being protected by trademark registration but the underlying services.

The benefits of protecting your business method

Here’s the good news:

When your business method is being used as a source indicator, you already have a trademark from the moment you start using it.

So when you say you have a business method you want to protect, you’re really saying you have a trademark you want to register.

And as with any other business asset, protecting your method through federal trademark registration is a savvy move that grants you exclusive rights to the use of your unique framework.

What does a successfully registered business method look like?

If you can’t decide whether your business method is a source indicator or it’s simply a method, check out these examples:

  1. The Bar Method for exercise instruction

This particular method is distinguishable from a standard barre workout since physical therapists developed it to follow a unique set of instructions for ensuring safety and efficacy.

It requires training and certification and can only be used by authorized facilities. 

In other words, this method is a source indicator that identifies the services and doesn’t merely describe a framework or process.

  1. The Myers-Briggs Personality Test

Personality tests are a dime a dozen online, but this method is considered a gold standard in the field of physiological testing and scoring.

Training and certification is required to administer Myers-Briggs tests.

Again, this method is a source indicator to distinguish a particular type of personality test and isn’t simply a method.

When your business method can be protected through federal registration

The bottom line is that a framework, style, process, system, or method is only eligible for federal trademark registration if:

(1) the applicant is performing a service; AND

(2) the designation identifies and indicates the source of the service.

If you can check off both these boxes, it’s absolutely worth applying to protect your business method through ™ registration.

When you’re ready to apply or if you still need help figuring out whether your business method qualifies for trademark registration, book your consultation with Nicole Cheri Oden Law.

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

How Long Does Trademark Protection Last?

How Long Does Trademark Protection Last?

Whew. You did it!

You got approved for federal registration of your trademark, and you’ve earned the right to graduate from the standard ™  and SM symbols – to that fancy little ® symbol you’ve always coveted. 

(Wait, you haven’t made the switch yet? This is your sign to go do it right this minute!)

So now the world knows you mean BUSINESS.

But before you ride off into the sunset, never to worry about your trademark again…

Let’s go over what you need to do to maintain that registration.

Because you know what they say about trademark registration ownership:

If you don’t use it, you lose it.

(Okay, okay, maybe I’m the only attorney you know who’s saying that, but that’s because it’s true!)

**Real quick before we go any further – this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Does trademark protection last forever?

It can! But not without a little active participation on your end.

Unfortunately, trademark registration isn’t just one and done, and you’re good to go forever. 

You have to pay attention to renewal deadlines to continue benefiting from the exclusive rights that ownership of your registered trademark allows you. 

Between years 5 and 6

Mark your calendar between years 5-6 from the time registration is approved.

This is when you have to file a Declaration of Use Under §8 that indicates you’re still using the registration.

You also need to include a specimen that reflects that continued use in each class–the category of goods and/or services–your registration covers.

You’ll also need to pay the requisite filing fee. (But that’s just the cost of protecting your valuable business assets, right?)

If you miss this deadline, the USPTO will cancel your registration.

So make sure you plaster the date on your calendar, create a pop-up in your task management software, tattoo it on your arm (okay, but don’t actually do that last one)…

The point is–do whatever you need to do to keep track of this incredibly important deadline.

Every 10 years

Between years 9 and 10 after registration, you have to file a Declaration of Use and Application for Renewal Under §8 and §9.

Again, this is to verify that you’re still using the registration, so you’ll need to include a specimen for each class and pay the filing fee.

And you’ll repeat this process every 10 years if you want those juicy registered trademark benefits to keep you protected.

Just as I mentioned before, if you miss the deadlines, the USPTO can cancel your registration.

Get that deadline notification system on lock!

Stay competitive: monitor the marketplace and new trademark filings

I think we can all agree that there are a lot of new businesses dropping into the mix every day.

You’ve already done the smart thing and registered your trademark.

Now you have to maintain your competitive edge by watching the marketplace and new USPTO trademark registration filings.

You’re on the lookout for copycats, infringers, and wannabes.

I know that being a lurker probably isn’t high on your “fun ideas” list, but if someone who isn’t you starts using your registered mark, your credibility is at stake.

The last thing you want is for someone selling an inferior product or service to confuse your potential clients and loyal customers.

And if you spend all that time lurking and never have to deal with an infringer, you won’t feel like you wasted your time, you’ll just be thankful you never had to intervene.

That said…

Take immediate action if you see an issue

If a copycat does pop up on your radar, be ready and know that you have the right and the tools to stop them.

You’ve worked hard to protect your mark, and now isn’t the time to quit. 

You could try reaching out to the infringer with a friendly request. It could be that they aren’t aware of their error, and your message will bring it to their attention so they can stop using your protected mark right away.

If this isn’t the first time you’ve had an issue, or if you want to cover your bases fully, you can go straight to a cease-and-desist letter drafted by an attorney. 

You could even initiate legal action.

However you approach it, you have an obligation to protect your registration.

If you don’t, you could be handing your mark over to the infringers if the USPTO decides your lack of action means your mark is no longer in use by you.

Keep your trademark registration as long as you need it

Registering your trademark is an exciting step for business growth!

And while they do require some upkeep, as long as you stay on top of the renewal and maintenance filing deadlines, you can keep your trademark registered–and your business protected indefinitely.

Want to keep Uncomplicating Trademarks™ for yourself?

Get on the exclusive podcast list and start listening today.

In-Use Trademark Applications: What Happens After You File?

In-Use Trademark Applications: What Happens After You File?

Congratulations!

You’ve officially:

-Conducted a knockout search

-Had an attorney conduct a comprehensive trademark search

-Been using your trademark in commerce (for goods or services)

-And decided to move forward and file your in-use trademark application with the United States Patent and Trademark Office (USPTO)

…Now what?

Well, you hunker down for a bit of a wait.

As of this post’s publication date, you’re looking at a minimum of 10 months for an “in use” application to be registered.

Assuming, of course, there are no hiccups in the examination process.

Read on to learn more about the process while you wait.

**But before we dive in – this post is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Overview of the in-use trademark application process

I always find it helpful to zoom out and look at the big picture before we get into the details.

So here’s a 10-foot view of the trademark application process:

  1. Application Submission

After conducting an extensive search and deciding to proceed with applying for a trademark, you’ll submit an application through the USPTO, with information about your mark, like:

  • The class of goods or services (there are 45 of them) you intend to use it for
  • What type of mark it is (word mark or design mark)
  • A specimen showing the use of your mark
  • When you started using the mark in commerce

And other information as needed.

  1. Application Assigned to Examining Attorney

After submitting your application, an Examining Attorney at the USPTO will review it and determine whether or not your application meets their requirements.

  • Option A: it meets requirements 

And you breathe a sigh of relief.

Your mark will now be moved to the publication phase. 

  • Option B: it doesn’t meet requirements 

And you’ve got some work to do.

You’ll receive an Office Action, which you have 3 months to address (more on Office Actions in the next section).

  1. Publication Phase

If the examining attorney finds no issues with your application (or the issues are suitably addressed after an Office Action is received), you move to the publication phase.

This is a 30-day period when your mark is “published” in the online Trademark Official Gazette.

Any member of the public who thinks they’ll be harmed by the registration of your trademark may oppose it.

Pretty simple when it’s laid out like that.

But what about when things get complicated?

Examining Attorneys and Office Actions

It can feel like a lot is riding on the opinion of the Examining Attorney your trademark application gets assigned to.

And it kind of is. 

The Examining Attorney will:

Evaluate whether or not your mark meets all of the criteria for registration. 

This includes evaluating how likely it is that another party can prove they have prior rights to the same mark in commerce based on an existing registration, as well as ensuring there are no other aspects of the mark that make it unregistrable. 

Review any specimens submitted with your application. 

Specimens are pieces of evidence, such as packaging labels or product tags attached to goods, that show the use of your mark in commerce. 

Issue Office Actions as needed.

An Office Action is official correspondence from the Examining Attorney reviewing your application that outlines any issue they see. 

The issue may be non-substantive (meaning a procedural issue exists that can be corrected) or substantive (meaning there are issues with the trademark itself).

Common substantive reasons for an Office Action to issue include:

  • Your mark is geographically descriptive
  • Your mark is primarily merely a surname
  • Your mark is generic or merely descriptive
  • Your mark fails to function as a trademark (i.e., taken as a whole, it’s functional)
  • Your mark includes matter protected by statute or convention (e.g., the Olympics)
  • A likelihood of confusion exists (your mark resembles an existing registered mark)
  • Your mark includes the name, portrait or signature of any living individual or deceased US president, without consent
  • Your mark includes any flag, coat of arms or other insignia of the United States, any state or municipality, or foreign nation

If an Office Action is issued, you have 3 months to respond. 

If you’re able to make effective arguments to overcome the refusal, your mark will move on to the publication phase. 

If not, you will receive a Final Office Action – this indicates that registration will be refused and provides you one more chance to try and overcome the refusal. 

If you’re not successful on that last chance, registration will be refused. 

Sorry for the doom and gloom.

Let’s move on to what happens when your trademark application gets the Examining Attorney’s approval.

The Publication Phase and how it works

Your application has made it past the Examining Attorney and entered the publication phase!

To review, this is the 30-day period when your mark is “published” in the online Trademark Official Gazette so that it may be opposed by any member of the public who thinks they’ll be harmed by the registration of your trademark.

Let’s consider 2 scenarios:

  1. Your application IS opposed

In which case, you have 30 days to file an answer, and the Trademark Trial and Appeal Board (TTAB) will set a trial calendar with deadlines. 

**Pro Tip: If you receive a Notice of Opposition, it’s wise to retain counsel ASAP to ensure you’re complying with legal requirements and do not miss any deadlines.**

  1. Your application is NOT opposed 

This is it – your application will move on to the registration phase. 

It currently takes about 2 months between when a mark survives the publication phase and receipt of a registration certificate from the USPTO.

But the most stressful part is behind you!

Note: As of May 24, 2022, the USPTO no longer automatically issues paper copies of trademark registration certificates. 

If you want the version with the fancy gold seal (and not just a PDF file), you have to affirmatively request a copy – and pay for it – if you filed your application after May 24, 2022.

Officially graduate from in-use trademark application to federally registered trademark

Registering your trademark can look really daunting at first.

But knowing what to expect and understanding how registration will help ensure your trademark is valid and protectable can alleviate the overwhelm.

As can retaining a trademark attorney for your team.

Get to “graduation day” with less stress – book your trademark consultation today. 

Should You File An Intent-to-Use Trademark Application?

Should You File An Intent-to-Use Trademark Application?

There are 2 main types of federal trademark registration applications:

  • In Use: you would file for this when you’re actively using your mark in commerce at the time you apply (you just have to submit a specimen with your application that demonstrates use).
  • Intent To Use (ITU): you would file this way if you have NOT started using your mark in commerce but intend to use it in the future, allowing you to essentially “reserve” your mark (NOTE – there’s an extra step here which we’ll get into in a moment).

A case for intent-to-use trademark applications

Right about now, you might be wondering why you’d choose to file an intent-to-use application if it creates more work for you.

And I have a horror story to answer that legitimate question for you…

We’re more active and transparent on social media now than ever before, sometimes being entirely too trusting about what we share. ⠀⠀⠀⠀⠀⠀⠀⠀⠀

It’s easy to forget that some members of your audience may not have the best intentions.⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀

So, when an online business owner I know of shared their intent to use a mark before they actually filed an intent-to-use trademark application, they learned exactly why you’d choose to take the extra steps to do so.⠀⠀⠀⠀⠀⠀⠀⠀⠀

Someone in their audience actually copied the mark verbatim, applied for trademark registration, and got an ‘in use’ date first.⠀⠀⠀⠀⠀⠀⠀⠀⠀

I NEVER want to see this happen to you.⠀⠀

Let’s talk about how you can make sure it doesn’t.

**Real quick, first: this post is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

The extra step to filing an intent-to-use trademark application 

Now that you have a compelling reason to file an intent-to-use trademark application, this extra step won’t seem like much.

When you file before you’re actively using your trademark in commerce, you don’t have to worry about submitting a specimen with your original application that proves the use of your mark.

What you DO have to consider is that your mark is only “reserved” for 6 months*.

You have to file an additional document – a Statement of Use – with a specimen demonstrating your use of the mark within 6 months* of receipt of a Notice of Allowance.

Once you do that, your mark can officially reach registration status (and you can use that coveted little ® to prove it).

*Note: you can request up to 5 extensions so that 6 months could actually be 36 months (3 years) to use the mark in commerce and file your Statement of Use after the Notice of Allowance issuance date. 

What “in use” in commerce actually means⠀⠀

All this talk about specimens and proving your mark is “in use” deserves an explanation.

Section 45 of the Lanham Act defines “use in commerce” as “Bona Fide Use of a trademark in the ordinary course of trade.” 

Great. But what does that mean?

It actually means different things depending on what your mark will be used for. 

If your application is for goods, then:

  1. Your mark is on the products, product packaging, labels or tags affixed to the products, and/or documents that are distributed with the products (think instruction manuals and invoices), 

AND

  1. Your products have actually been sold or transported within the United States.

If your application is for services, then:

  1. Your mark is used in advertisements (like brochures, radio ads, television commercials, and/or on websites) that promote your services, 

AND

  1. Your services have actually been rendered in the United States.

Plus (most of the time), your goods or services have to cross state lines. 

This is because you can only seek federal registration of your trademarks if you’re involved in commerce that’s regulated by Congress, aka federal law. (And this is thanks to the Lanham Act and the Interstate Commerce Clause.)

Benefits of filing an intent-to-use trademark application

The biggest benefit is that you get to avoid the absolutely gut-wrenching moment when someone takes your mark and registers it first. 

By filing early, you get the benefit of “constructive use and secure priority.”

Let’s say you file an intent to use trademark application in January but don’t actually start using the mark in commerce until May. 

(Which, as you now know, is fine. You still have time in your 6-month window to file that Statement of Use specimen you need for federal registration.)

If a third party starts using a confusingly similar mark for similar goods or services in March – after your filing date but before you start using the mark in commerce – YOU have priority because your January filing date predates their March use.

An intent-to-use application puts your competitors, potential infringers, and copycats on notice that you are going to be using a mark in commerce, and their use of any confusingly similar mark is done at their risk.

Not yours. 

Filing your trademark for intent-to-use is a CEO move

By choosing to file early, you’re taking your brand seriously. 

Rather than hoping your mark is still available by the time you make it through the extensive startup process, you’re taking control of the situation and ensuring your mark is yours to claim when you’re ready. 

And not trusting your brand to fate is just smart business ownership.

Make that CEO move and book your trademark consultation today. 

 

How to Choose a Strong Trademark for your Brand

How to Choose a Strong Trademark for your Brand

Imagine you’re driving down a busy street, looking for the business someone referred you to.

You can’t remember the exact address, and you realize there are a whole lot of storefronts with the name you were given!

That’s what today’s online marketplace is like.

It’s incredibly saturated with “look-alike” brands. And this forms a compelling argument in favor of registering your trademark.

Trademarks–which can be a word, phrase, logo, or other design–act as a unique identifier that helps customers distinguish your goods or services from those of other businesses.

They play a critical role in brand protection and recognition by making it easy for clients and customers to find your business through all the other distractions.

The last thing you want is for your customers to be scrolling around the internet, wondering which “store” is yours.

Choosing a strong trademark to register is a great way to put out a distinguishable signpost!

**Real quick, first: this post is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2. Please chat with an attorney in your area to make sure you’re protecting your business.**

Choosing a strong trademark: understanding levels of distinction

For a trademark to be registrable with the USPTO (United States Patent and Trademark Office), it must be distinctive. 

But not all levels of distinction are created equally.

There are five levels of distinctiveness, from fanciful (offering the strongest level of protection) to generic (offering no protection at all). 

levels of trademark distinctiveness

Fanciful distinction

Fanciful words can’t be found in your dictionary or anywhere else.

They’re words that have been invented for the sole purpose of functioning as a trademark

For example, “Kodak” and “Lexus” are both fanciful words.

Fanciful distinction offers the strongest trademark protection because it’s impossible for anyone else to use a word that doesn’t exist!

Arbitrary distinction

Arbitrary words are real words, but they have no association with the goods or services connected with them.

Great examples of arbitrary words include –

Apple: it has nothing to do with tech

Amazon: originally not a word associated with an online marketplace

Arbitrary distinction is the second strongest trademark protection level. 

It would be pretty difficult to choose the same arbitrary word as someone else in connection with your own goods or services.

Suggestive distinction

Suggestive words aren’t completely arbitrary, but they require some imagination, thought, or perception to connect them with the relevant goods or services.

These are words that suggest a quality of the goods or services without saying it outright.

Suggestive examples include –

Coppertone:  “Copper” suggests the skin-darkening properties of a tanning oil

Jaguar:  “Jaguar” suggests the qualities of speed, agility, and strength in a vehicle

Suggestive distinction is the third level of trademark protection. 

It’s not as strong as fanciful or arbitrary distinction, but it still offers some degree of protection from copycats.

Descriptive distinction

Descriptive words are just that–words that describe the nature or a particular characteristic of the product or service with no distinctiveness.

For example, “Comfortable chairs” describe, you guessed it, chairs that are comfortable.

Descriptive distinction offers the weakest level of trademark protection.

A descriptive mark will be refused registration with the USPTO unless you can show it’s acquired a secondary meaning. i.e., a consumer recognizes the mark as indicative of the brand and not just as a word.

It’s also possible for a descriptive mark to qualify for the Supplemental Register. (This is like the celebrity B-List of trademark registration, which provides more limited protections)

And after 5 years of continuous use with Supplemental Registration, you can file a new application for the Principal Register.

Generic distinction

A generic word is one that’s become synonymous with the underlying product or service to the point where it can no longer function as an identifier for a particular brand.

For example, ‘cereal’ or ‘law.’

Generic words don’t make strong trademarks! They are so weak that they can never be registered as a trademark with the USPTO.

As a note, a trademark can also become genericized if the mark becomes identified with a type of product or service in the public’s mind rather than a particular brand. The trademark registrations for aspirin and cellophane both lost their trademark rights because of this!

Other things that can never be registered as a trademark

In addition to generic words, several other things will be refused for trademark registration.

They include:

>> Commonly used phrases.

You can’t register a phrase that’s part of common, everyday speech as a trademark.

For example, you can’t register “Drive safely.”

>> Phrases not used for business purposes.

Just because you use a phrase regularly doesn’t mean it identifies your brand.

For example, you can’t register “Have a nice day!” as a trademark.

>> Functional aspects of the product.

You also can’t register anything functional (i.e., necessary for the proper operation of the product) as a trademark.

For example, you can’t register the design of a drinking glass as a trademark.

Sidenote: You could talk with a patent attorney about these functional aspects.

>> A phrase on a t-shirt or other goods.

You can’t register as trademark phrases printed on t-shirts, mugs, or other merchandise unless it meets certain conditions

For example, you can’t register as a trademark the phrase “I heart NY” if it’s screen printed on the front of your merchandise.

(However, you could if it’s being used as part of your brand on the tag or hang tag and not just as a decorative phrase.)

These types of applications will receive an ‘ornamental refusal’ since the mark is being used as decoration and not a brand identifier.

There are also some additional rules about what you can and can’t register as a trademark when it comes to geographic terms, surnames, and government symbols.

Strong trademarks set your business up for success

This list is by no means comprehensive, but it should give you a solid place to start as you choose a strong trademark.

Set yourself up for whole brand protection. 

Schedule a consultation with Nicole Cheri Oden Law® to get started building a strong trademark for your brand. Our consultations include:

  • Getting to know your business and goals
  • Explanation of the federal trademark registration process
  • A “knock out” search and identification of any red flags to help you save time and money (and identify if registration of a mark may not be worth pursuing)
  • Answers to all your questions about the federal trademark registration process so you feel comfortable and confident in moving forward

 

 

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