We are not lawyers and do not represent the following as legal advice. The following are suggestions based on our experience trademarking our own brand, combined with common patterns we have noticed among startups and new product ideas over the years.
After a blogging Hiatus during an exciting and busy summer and fall, we are returning to close out the 2022 with a followup on our previous post about trademarks.
In our first post we covered some basics of why they are important and included resources from the USPTO that could help those interested in filing their own. Today we will share some things we learned filing trademarks of our own.
To start, you can file a trademark application yourself or hire an attorney to do it for you. We filed two of our own both for cost-effectiveness and to learn about the process. Here are some of the highlights:
Color Claims: precision matters
We described our logo in great detail outlining how one shade of dark green layers on top of a bright green, etc. This description had to be amended for precise clarity. Generic color names: blue, red, yellow, etc. are preferred because “light blue” or “dark blue” are somewhat subjective and may vary from one reader to another. People may disagree on what constitutes “dark” blue but it’s not up for debate that the color is a blue. We are not sure if exact hex color codes would satisfy their requirements because we didn’t try them, though they are very specific and do not leave interpretation open to the reader as to the intended color in the claim; if you try it, let us know how it goes!
Office Actions & Examiners Amendments
If your application only needs a couple minor adjustments and you have a nice examiner, they may at their discretion email you and propose the small required change to move the application forward more quickly, without a formal office action. We are not sure under what circumstances they have the latitude to use this discretion but it happened to us for adjusting the wording in our color claims for one application. Our other application had more complex issues that needed resolving and we were issued a formal, non-final office action that would allow us to address them within 6 months.
Submitting Specimens: proof of use in commerce
Like many companies we have a couple different version of our logo: stacked text, single line, etc. Make sure any specimens you submit show use of the exact mark claimed in the design sample. This is part of why we were issued an office action, the header on our website used a more streamlined version of the logo we were claiming that had less text and was not an exact, identical match to the design we submitted which caused a mismatch problem.
Maintaining your mark.
Once a trademark if yours is published and finally issued that does not mean your responsibilities are done if you want continued protection of the mark into the future. Once you have your trademark, you will need to complete required maintenance filings to demonstrate you are sill using the mark in commerce, otherwise your mark could become fair game to others once again.
If you have a trademark and you need to allow others to showcase it in specific scenarios, you should consider creating brand guidelines that outline the proper use(s) of your mark, brand colors, etc. These will also outline any rules you may have for using or displaying your mark (minimum size, proximity to other elements, etc.). Need to build your Brand Guidelines? We can help!