| Michael E. Byczek, Attorney at Law |
 |
 |
 |
       |
 |
 You are a business owner. Customers know you and the quality of your products. Revenue is good. The website has thousands of hits each day. Clients have placed orders from around the country. You are thinking about expanding and opening another location. The brand has developed a strong reputation. Hard work has turned into success. A new advertisement will appear in today’s newspaper. You eagerly flip through the morning edition and stop on page 4 just underneath an article about a struggling economy. It’s not your ad.
Somebody else is running a classified with your company’s name and identical products at half the cost. His website is the same, just with a .net domain instead of .com like your site. The slogan is the same. He sells everything that you sell. Offers everything you offer. The bottom of the ad reads “Call us and save money. New discounted prices”. They have four locations. One block south of you, one block east, one block north, and one block west. Within weeks you are forced out of business. What do you do? What could you have done?  Own the Exclusive Name Rights: Trademarks are a federal solution to help businesses protect their reputation and brand. You may have seen the symbols with an R inside a circle or the TM and SM mark. The R inside a circle means that the company was granted federal registration. TM or SM is a signal that the company has claimed that name as an identifying mark, but may or may not have submitted a federal application. TM refers to trademarks and SM is for service marks. The two terms are equivalent, just one is for products and the other services.
After a rigorous examination of your application, the USPTO may grant you the exclusive right to use that name, if nobody else registered the same term. Once complete, the owner may sue in federal court to stop infringement. However, you cannot stop competition. Trademark law only protects you from another business using the same name, confusingly similar terms, counterfeits, or imitations. You can’t prevent use of the same name, if they sell totally different products, or similar products in a completely independent geographic region. What is a Trademark Legal Coach?  Michael Elliot Byczek is a licensed Illinois attorney. He assists business owners with trademark applications, forms, drawings, specimens, and searches.
How Do I Get a Trademark? The federal application fee is $325 for an electronic submission, $375 for paper. A more rigorous application called "Plus" costs $275. After five years, an optional Section 15 Declaration of Incontestability will cost $200. This proves that you are the true and absolute owner of that name. Between the 5th and 6th year, you must file a Section 8 Declaration of Continued Use for $100. Otherwise, the registration will terminate. Between the 9th and 10th year, a Section 8 and Section 9 Application for Renewal ($400) must be filed. Otherwise, the mark expires. Every 10 years after that, you must file a Section 8 and Section 9. Otherwise, the mark expires. This means that the initial trademark registration will cost between $275 and $375. If you do nothing, the mark will expire after the 6th year. To continue using the mark, you will pay $100 in the 6th year. It will cost an additional $500 in the 10th year, and every subsequent 10 years. Federal registration is not mandatory. The benefits include constructive notice to the public of your ownership in the mark, ability to sue in federal court using federal trademark laws, legal presumption of the owner’s use and exclusivity, basis for foreign registration, and ability to file with the U.S. Customs Service to prevent importation of infringed foreign goods. Without federal registration, you will have to sue in state court using state laws. Usually, this requires you to prove unfair competition. It is much easier having a federal registration. A question may even arise during litigation, "Why didn't you file a trademark if the name is so important?" Copyright © 2008-2010. Michael E. Byczek. All Rights Reserved. |