Trademarks: Ten Quick Answers

Question 1: Why Should We Register Our Trademarks?

A: Federal trademark registration on the Principal Register provides:

  • A legal presumption of your ownership of the mark and your exclusive right to use the mark (nationwide) on or in connection with the goods/services listed in the registration;
  • Public is deemed to be on notice of your ownership of the mark;
  • Listing in the U.S. Patent and Trademark Office’s (“USPTO”) online databases; government attorneys search these databases before registering other trademarks to ensure a confusingly similar mark does not register;
  • Basis for removing counterfeit goods and incentivize retailers (such as grocery stores) to purchase a license to use from the school or district before selling goods with your logo on them; and
  • The right to use the federal registration symbol “®”.

 Question 2: When Can We Apply for a Trademark?

A: You can apply to register your trademark anytime. It does not matter if you are just rolling out the mark, or you have been using it at your schools for years.

Question 3: When Should We Apply for a Trademark?

A: Now! Time is always of the essence with trademarks because the United States is a first-to-file system. First to register controls the trademark, and a fight to preserve or acquire rights after someone else registers the mark can be quite costly.

 Question 4: What information do you need?

A: The mark you seek to register, the goods or services you will be using it on, name of the mark’s owner, address of the mark’s owner, and a government fee of $275.

Question 5: How much does registering a trademark cost?

A: The average cost of a trademark application is $1,500-1,750. This includes a search for conflicting marks and an analysis of likelihood of success, government fees for filing the application, legal fees for filing the application, and non-substantive responses.

Question 6: How long does the process take?

A: On average, a mark already in use can register in approximately nine months.

 Question 7: Why Should We Seek Federal Trademark Protection Rather than State?

A: The federal trademark system supersedes state trademark rights. As a result, registering your mark in Texas does not prevent another entity from registering the same mark federally and then demanding you cease using the mark.

Question 8: Don’t Federal Trademarks Require Our Mark to Be Used Throughout the United States?

A: No. While federal trademarks must be in use in interstate commerce to register, that standard is quite low. The fact that your mark is accessible and used outside the State of Texas to refer to your district or school is likely enough to meet the standard. For instance, if someone outside of Texas can search for your school or district on the world wide web and see your trademark, then your trademark likely qualifies as in interstate commerce.

 Question 9: Can a Registered Trademark Make my District or School Income?

A: Yes! There is a demand in many communities for merchandise bearing the school logo or mascot. Grocery stores, pharmacies, eBay and ETSY commonly offer the sale of merchandise bearing the marks of schools. With a registered trademark, those unlicensed goods can be taken down. Further, a licensing agreement can be negotiated to ensure the district or school receives some of the proceeds from the sale of merchandise bearing the school’s mark.

 Question 10: Are Other Schools and School Districts Registering their Trademarks?

A: Yes! See below for a few examples.

Brackett & Ellis, P.C. is the only Dallas/Fort Worth law firm to offer the expertise of a former trademark examining attorney from the United States Patent and Trademark Office. The firm’s experienced trademark practitioners are ready to assist you in protecting your trademarks, logos, and other intellectual property.  Please contact us at 817-338-1700.

 

All registered trademarks in this document are the property of their respective owners. These marks are shown for demonstrative purposes only and do not indicate endorsement or a client relationship between these entities and our firm.

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