Trademark Practice: All About Marks and How to Get Them


Trademark Practice: All About Marks and How to Get Them


Trademark is an area of law that, in our experience, gets too little attention from nonprofit leaders. And with all the other legal issues on their plates (e.g., IRS compliance, contracts, employment), it is totally understandable! Yet trademark law is relevant to almost all nonprofits.

But what exactly is a trademark? The United States Patent and Trademark Office (USPTO) explains:

A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.

The USPTO goes on to say that a trademark is how customers recognize your business and distinguish you from your competitors. It is often a brand name, logo, or phrase associated with a particular business enterprise (including nonprofits).

The attorneys at Mission Counsel understand trademarks and how they apply to nonprofit organizations of all sizes. We consider our job to be navigating the legal terrain so that you don't have to. You can spend your time advancing your nonprofit's goals instead of worrying about whether you are legally compliant and protected. We're headquartered in Kansas City, Missouri, but we work throughout both Kansas and Missouri.

Three Types of Trademarks

There are three types of trademarks: A word mark, a design mark, and a combination mark. Let's take a look:

Word Mark

A word mark, as its name suggests, is simply a word or phrase that serves as a trademark. Another name for these types of marks is “standard character” marks. The words can be any font, style, size or color: It is the brand name, slogan or tag that is trademarked.

There are many examples of word marks. Some of the better known ones are Google, Coca-Cola, FedEx, Mobil, Panasonic, and on and on. The key distinction of a word mark is that it consists solely of a word or phrase.

Design Mark

A design mark is, as you might imagine, is a trademark consisting of a design. These marks do not contain words as such but words might be incorporated into the design. Some common examples are the McDonalds golden arches, the Nike swoosh, the twitter bird – among many others.

Combination Trademarks

Combination marks are trademarks that incorporate both words and designs. They are, in essence, a hybrid mark. Some common combination marks are Burger King, Starbucks Coffee, NBC, Bluetooth and Amazon.

Why Is This Important?

What difference does it make which kind of mark you want to register? The fact is, your choices are to register as a word mark or as a design mark. If you have a combination mark, you must decide whether to proceed with a word mark or a design mark because you can't register as a combination mark. It's simply not one of the options under trademark law.

Our head paralegal Heidi Forland-Fetty has explained how to choose between registering for a word mark or a design mark. She points out that registering as a word mark provides greater protection to your business than registering as a design mark. That's because a word mark protects the words themselves, while the design mark protects only the design. This is true even if the words are made one of the design elements. On the other hand, if you intend to use the mark on visual media such as websites, blogs, social media, brochures, flyers or magazines, registering as a design mark might be the better option.

Why Is Federal Trademark Registration Better?

In this post, we discuss federal trademark law. Kansas and Missouri, like many other states, also provide trademark protection. But state-level trademark protection is limited to protecting use of a mark only in that state. For that reason, most companies prefer federal registration. Federal registration of a trademark protects against infringement throughout the United States.

How to Get a Trademark

You must take several steps to obtain a trademark. In short, these are the things we will help you do:

Step 1: Select a Trademark

As we've written above, you can choose a word mark, a design mark or a combination of both types of trademark. We can help you select a word mark or coordinate with your designer if you choose a design mark or a combination mark.

This part of the process might seem straightforward, but it can be tricky. As you might imagine, the USPTO is bombarded by many, many requests for trademarks. A mark must be adequately distinct from all other trademarks to be registered. Otherwise, there would be no point in having a trademark.

Step 2: Perform Extensive Trademark Search

The next step is searching the USPTO database for trademarks that are similar to the one you want to use. The wording or design of a mark might be too much like a previously registered mark. Also, it might be used for related goods and services. If we find a mark that is too similar, then we work with you to change the mark prior to registration. At Mission Counsel, we utilize a sophisticated third-party platform that performs an exhaustive search of not only the USPTO database but also sources at the state level and even throughout the world. We make sure that we are aware of any potential conflicting marks prior to filing your application.

Step 3: Prepare, Submit and Monitor your Trademark Application

The next step is to submit an application online through the Trademark Electronic Application System (TEAS). The application is technical. For example, you must include a “specimen” of the mark, which is a precise depiction of it. You must select and include the appropriate listing from the Trademark Identification Manual. Further, if any of these apply to the mark, you must provide additional information about the trademark:

  • The same mark has already been registered with the USPTO by you, but the owner name in the prior registration is not the same as in the new application.
  • The mark includes color.
  • The mark includes a design or stylized font.
  • The mark includes non-English words.
  • The mark includes non-Latin characters.
  • The mark includes the name or portrait of a living person.
  • The mark is currently in use and the applicant needs to limit use to a specific geographic area and identify the other concurrent users.

It is important that a professional prepare the application. Otherwise, there is a high likelihood that the USPTO will reject it.

Like any government process, applying for a trademark includes complying with deadlines. You are responsible for making sure none of them slip by. We monitor your application closely and take the necessary steps to respond to requests or notices from the USPTO.

Step 4: After Submission

Initially, the USPTO will review your application to make sure it meets the minimum filing requirements. If your application passes muster, the USPTO will assign it a number and refer it to a USPTO examining attorney. Essentially, the examining attorney does the same sorts of things we've already done: The attorney searches the USPTO database for conflicting trademarks, checks for compliance with rules and laws and examines the specimen.

If there's a problem with your application, the examining attorney will contact us. This might be by telephone or email if the problem is minor. If the problem is a larger one, the examining attorney will write a letter explaining why the USPTO is rejecting the application and setting out any technical or procedural issues with it. We then have a chance to cure defects or otherwise respond. There is an avenue for appeal if the examining attorney continues to refuse approval.

Step 5: After Approval

Although you now have a trademark, we must take the appropriate steps to preserve it. The USPTO requires the filing of certain forms to maintain your trademark. If you don't keep up to date with the USPTO, then the USPTO will cancel your registration, or your registration will expire. If that happens, you must begin the entire process all over again.

And That's Not All

In this page, we have provided a bird's eye overview of the process of obtaining a trademark. There is much more to go into that is beyond the scope of a simple webpage. We welcome the chance to answer any questions you might have about the process. And we would love to help you navigate it. At Mission Counsel, we perform trademark searches and registrations for nonprofits and businesses on a transparent, flat-fee basis. Please schedule a free 15-minute call with us here or give us a call at (816) 368-1181. 

At Mission Counsel, let us help you solve problems so that you can focus on your mission.

Our desire is for our clients to see our services as an added value to their organization. We want to get to know not merely the legal needs of our clients, but also their missions, their visions and their values. We want to come alongside our clients and help them achieve their highest purposes.
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Mission Counsel is committed to serving nonprofit organizations in Kansas and Missouri.

We offer a free 15-minute consultation and we'll gladly discuss your case with you at your convenience. Contact us today to schedule an appointment.