Obtaining a registered trademark for your name, logo or tagline is a process. It can take time. It can take money. And, there are times throughout the process when you’ll ask yourself, is all this worth it?
At Trillion, we think that answer is yes, especially if you’re building value in the products and services you offer your customers. Since our founding in 2014, we’ve helped many clients through the process. Over the last year, we went through the process ourselves and saw the best and the worst of it. We think sharing our experience will be helpful to you, as will outlining the ways we can help get you started and through it.
Sometimes trademarks are registered without any issues. Sometimes you might need to contest a decision. Other times, we’ve seen our clients’ attorneys negotiate fair terms with non-competing trademark owners in order to allow their trademark to become registered. When applying for a trademark, you have to be prepared for anything and everything.
The definition of a trademark by USPTO
Let’s start with how the United States Patent and Trademark Office (USPTO) defines a trademark:
A trademark is a brand name. A trademark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.
A registered trademark offers special benefits
Federal registration of a trademark is not required but it does have advantages, including:
- Notice to the public of the registrant’s claim of trademark ownership
- Legal presumption of ownership nationwide, not just in a select state which can protect your trademark from being diluted from other companies and individuals
- Exclusive right to use the trademark on or in connection with the goods/services listed in the registration
Why did we decide to trademark our name?
We’d been using the Trillion name and logo with a “TM” since 2014 and had all the requirements in place to apply for a U.S. registered trademark so we could swap out the “TM” for “®” (read our article What Does TM or R in Circle Mean for a Brand or Logo Design?). We performed a clearance search of federal and state trademark databases. The Trillion name was inherently distinctive for the work that we do. We were also providing services in many states, proving we had “interstate commerce.” From time to time, we’d searched “Trillion” to see what would come up, and nothing threatening to our brand ever did.
In the meantime, we were seeing increased value in our design services and digital content which had grown over the years. Plus, the Trillion website was seeing hundreds of thousands of website visitors, and more and more opportunities were coming to us through it. We knew we needed to protect our existing and future intellectual property. The time had come to go through with the trademark registration process.
Trillion’s Trademark Timeline
On April 8, 2019, we applied for a U.S. trademark of “Trillion” in the goods and services categories 35 and 42. You can’t imagine our disappointment and disbelief when we learned that another company was about to get approved for a similar name! We were literally just a few days late in stopping their application. Our initial application was denied.
Initially our application was denied.
Upon further examination, it appeared as though this same company was attempting to register their URL name and it covered “branding services”—one of the key services for our application. Our company was utilizing the “Trillion” name for that service for a longer period of time. That company also said it was using the mark in commerce which didn’t prove to be true. And, it later seemed that it abandoned the mark. Even with these facts in our favor, we needed to file a cancellation with the USPTO and invest even more money to have our attorney file the proper documentation and requests. Also, there was some waiting time for the company’s response.
Eventually we did succeed in cancelling the other company’s trademark and proceeded with ours. Once we had what appeared to be a clear path to registration of our trademark, we faced one final hurdle: the opposition period. During the 30-day opposition period the public can file an objection or opposition if they believe their business will be harmed if the trademark is registered. This can not only prolong the procedure but also add significant cost. Luckily the opposition period came and went. We were onto registration and waited till the arrival of the official document and our registered trademark, dated April 28, 2020.
Patience is a virtue
If a prospective trademark moves through the USPTO system quickly and without issue, you can receive your official registration in approximately six months. Because of the obstacles we encountered, it took us over a year. Obstacles like this are not uncommon, and the procedure does take patience. Still, it makes good sense to think about trademark as you get started with your brand development process, so don’t let these long timelines deter you.
Speaking with an intellectual property attorney will help you make an informed decision about your odds of successfully registering. We can certainly help you develop the branding and design to complement the trademark just as we’ve done with the many companies and non-profits who have become Trillion clients.
We work hand-in-hand with our/your trusted legal partners to provide our clients with the best advice on the legalities, pros, cons, and risks of how to proceed.
Give us a call at 908.219.4703 if you are about to start the brand development process and think ahead to trademark. We will get you started on the brand and design, and our legal team will help you bring the trademark home.
