Trademark Application Principles:
Use in Commerce v Intent to Use & Wordmark v Stylized (or logo)
Do we file Trademark Applications? Well, of course, we do.
In this video, I just want to share with you a couple of little distinctions about different kinds of Trademark Applications that can impact your cost, the time to get your Trademark Application, and a few other factors. And these are really basics, but a lot of times, it can be confusing if you’ve not been in the “Trademark World” before. The first distinction that’s important is the difference between filing for a Trademark Application when a mark is being used already versus a mark that’s not in use already, which in the legal world we call this an “Intent to Use Mark” just what its called. You’re either using the mark or you’re not. You’re either using the name, slogan, or logo or you’re not. The cost of filing the two applications initially is about the same.
However, there are additional petitions that have to be filed for your application to mature to a registration if you’re not using the mark already.
Additionally, this is just my own experience, I found that examiner’s get a little bit less excited about allowing a mark and approving a mark that’s not in use because you’re kind of reserving a space in the market based on a promise that you’re going to go execute your product and service in that space.
Whereas if your mark is actually already in use, examiner’s tend to give a little bit more leniency in my experience. That’s not — Legally, it shouldn’t matter but that is something I’ve noticed. A second distinction that’s important is trying to register Plain Letters versus trying to register something that’s a
Stylized Logo. Now, in this particular case what the the Trademark Office will be asking is: Is your mark distinctive and unique enough from the competition to become uniquely associated with the thing that you’re selling under that that name or logo or slogan? If you use Plain Letters, then what you’re saying is no matter what the stylization is, no matter what else is attached to it, that you’re claiming that part of the market in terms of brand identity. And so, because it’s a little bit broader ask, examiner’s tend to scrutinize it a little bit more. When you’re asking for a logo or something that is stylized, you’re asking for a little bit more narrow ask, and because of the stylization in the logo, it just by definition is going to be a little bit more unique from other marks that are out there.
And for that reason, examiner’s give it a little bit less scrutiny, which means it’s going to be a little bit easier to get it allowed and push through for registration. The downside is this, when you go for a Stylized Registration or Logo Registration then every time you change the style or change the logo, then you need to file for a new application for registration. Now, kind of a long-term strategy you can use is to make your first registration for a stylized name or logo, then when you have a subsequent application for registration, you can make the broader ask, and sometimes it will be given to you.
BEGIN YOUR JOURNEY
The E5 Trademark Application System Starting Line
- One-on-One Consultation with an Experienced & Licensed Trademark Attorney
- Live Review of Your Digital Assets
- Federal Database Search & Review for Up to Three of Your Trademarks
- Comprehensive Branding Capture Strategy
- Complete Trademark Application Budget Based on Your Specific Goals
- You Walk Away with Clarity, or Your Money Back