New Year, New Trademark Fees

As an entrepreneur, your brand is critical to your company's image and growth. One of the most important parts of your brand is your trademark. Trademarks are the words, symbols, phrases, and other designations that communicate that your products and services come from you.

One of the best ways to protect your trademark in the United States is through filing a federal trademark application with the United States Patent and Trademark Office (USPTO). The cost to do so is about to get higher because the USPTO is raising a number of its fees on January 14, 2017.  

Of note, the fee for an initial application filed using the USPTO's electronic system will increase from $325 to $400.  The fee for an initial application filed on paper is going from $375 to $600. You can read more about the other fee increases in the announcement on the USPTO's website.

If you'd like to get your federal trademark applications filed before the fee increases, please reach out to us by clicking here. We're happy to help you save every penny you can before the fees go up!

What Does it Mean to "Use" a Trademark?

As I've written about elsewhere, the three requirements for trademark protection are use, distinctiveness, and non-functionality. The requirement of "use" can really trip people up.  These three simple letters are actually pretty complicated when it comes to trademark law. I'll explain some of the basics below, but keep in mind this stuff has a lot of nuances. 

In the United States, you don't get a trademark just by saying you have one - you have to stake your claim in it through something called "use in commerce." This is true whether or not you register your trademark with your specific state or with the nationwide US Patent and Trademark Office (there's an exception to this if you're filing something called an "intent to use" trademark application - I'll address this in another post). The legal rule on this states that:

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 chapter, a mark shall be deemed to be in use in commerce—

(1) on goods when—

(A) it 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 it 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.

What does all of this legal terminology mean in plain English? Essentially, if you're selling a product, the trademark has to be placed on those products, or the product's packaging, while you're selling and/or advertising it. If you're providing services (as opposed to selling products), the trademark has to be displayed during the sale or advertising of your services. 

Use cannot be sporadic, occasional, or casual. If you're staking a claim in a trademark, make sure that your use is consistent in all forms. You want to use the same colors, size, font, placement, etc. each time you place the trademark on something. If there's ever a question about whether you've used the trademark in the appropriate way, this will help.

The words "in commerce" mean that you've actually sold something. The trademark rules require that your goods have been sold or transported, or that your services have actually been rendered to others.

With sales, they must be real, legitimate sales where money is exchanged with someone outside of your business. It won't fly if you're just selling a "sham" product/service here and there, or shipping things within your company to your sales reps. But, small companies, don't get worried - if you're a small business without a lot of sales, this is okay. The law requires your good faith, legitimate, bona fide efforts, not millions of dollars of sales.

You want to keep track of this kind of thing and document when and where you're using the trademark in the legal way. If you decide to register your trademark, the application will ask for the first day (month, day and year) that you used your trademark in commerce.

For a federal trademark application through the US Patent and Trademark Office, you'll also be required to prove your use through something called a "specimen," which shows your trademark's use in commerce. Here's some guidance from the US Patent and Trademark Office on what is considered an appropriate specimen:

Appropriate For Goods: Usually, a specimen for a mark used on goods shows the mark as it appears on the actual goods, or on labeling or packaging for the goods. For example, your specimen may be a tag or label displaying the mark, or a photograph showing the mark on the goods or its packaging. A website is an acceptable specimen if the mark appears near a picture of the goods (or a text description of the goods) and your customers can order the goods from the website. A website that merely advertises the goods is not acceptable.

Inappropriate For Goods: Invoices, announcements, order forms, leaflets, brochures, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods.

Appropriate For Services: A specimen for a mark used in connection with services must show the mark used in providing or advertising the services.  For example, your specimen may be a photograph of a business sign,  a brochure about the services, an advertisement for the services, a website or webpage, a business card, or stationery showing the mark.  The specimen must show or contain some reference to the services, that is, it is not just a display of the mark itself.

Inappropriate For Services: Printer’s proofs for advertisements or news articles about your services are not acceptable because they do not show your use of the mark.

State applications may have different rules - you should check the rules of your state if you go that route.

I hope this helps -- if you want to schedule a consultation to get your specific questions answered, please contact us here.





How to Get a Trademark In Your State

If you have a brand name or logo for your business, you may want to consider protecting it. As I've written about elsewhere, there are three basic ways to protect this kind of thing: common law protection, state trademark registration, or federal trademark registration. Federal trademark registration is the most expensive. 

For the entrepreneur/startup who isn't quite ready to plunk down a few thousand dollars on a federal trademark application, a state application is usually a lot cheaper and may serve your purposes for the short (or long term). If you plan on operating solely in your state, a state trademark will protect your brand or logo within your state's borders.

Each state has different application requirements. You can find links to your state's trademark information below.

The Most Important Parts of Your Business You Don't Even Know You Own

Without question, most entrepreneurs do not understand the true value of their company. Yes, we all value our customers, employees, and the products we sell. But, the most overlooked asset for a lot of new companies is intellectual property.

Intellectual property is basically the stuff you've created using your brain. Your list of customers, the things you've posted on social media, the catchy slogan or logo you designed....all of this is the way you're setting yourself apart in the marketplace! Maybe its the customer service script you read when you talk to customers. Perhaps its the really awesome book you wrote that is selling thousands of copies on It could be fabulous jewelry you're making for men and women to wear. These things are why your customers love you and why you'll make more money than your competition.

I can't state enough the importance of owning your intellectual property. It is so important that Oprah Winfrey has attributed much of her success to owning her own intellectual property (through owning her own show when she first got started). Jeff Jacobs, the president of Harpo, Inc. (Oprah's company) has stated that Harpo is ultimately an "intellectual property company." Do you see where I'm going with this?

Surprisingly, though, a lot of people never take [the relatively] simple steps to ensure that another person or company can't swoop in and take their creations. The goal of this post is to help you identify the intellectual property in your own company so you can take the critical steps to protect yourself and your business!

Re. intellectual property, the most common types are copyrights, trademarks, patents and trade secrets:

Copyright law protects tangible, original works including things like art, poetry, books, movies, songs, videos, computer software, and architecture. Some components of a company’s website might also be included.

Trademark law protects words, phrases, symbols, or designs that you use in the marketplace to distinguish your products and services from your competitors. This might be a logo, word or words, or even a color, scent or sound. Think Nike’s symbol or the word “Apple” for computer products.

Patent law protects inventions that are new and useful. The invention must also not be obvious to others in the field.

Trade secret law encompasses confidential or classified information including formulas, practices, processes, designs, instruments, patterns or compilations of information that give your business an economic advantage over competitors. Think KFC’s fried chicken recipe or Coca-Cola’s formula for coke.

Used right, these areas of law can help you add tons of value (financial and otherwise) to your business. They can also protect you and your business. Think of it this way -- if you'd be pissed that a competitor started using something you created, you probably want to protect it! Protecting your intellectual property could save you a lot of time, headaches and money as your business grows.

Not all types of intellectual property are important for every person or business, but most people are surprised at how much intellectual property their business actually has and how valuable it is.

So how do you know what is relevant for your business? The answer to this question really depends on your circumstances and the type of business you are building. A simple place to start is by asking the following questions:

  1. What types of original things have I created and written down on paper?
  2. How do I connect with my customers and how do I distinguish myself from my competitors (via logos, songs, words, slogans, etc.)?
  3. Have I invented anything new that I haven't seen in the marketplace?
  4. Are there secret things that give me a competitive advantage with my customers?

Answering these four questions will help you start to identify the intellectual property in your business. You may ultimately need to work with a lawyer to adequately protect them.

Do you think you're overlooking valuable assets in your company? Leave me a comment and let me know what you're wondering about!

With gratitude,