What is a Trademark?

A trademark is a word, phrase, symbol, design or combination thereof that identifies and distinguishes the source of goods or services.

How do you get the broadest protection in the U.S.?

To receive statutory protection for your mark, you must apply for federal trademark registration with the United States Patent and Trademark Office (“USPTO”). USPTO fees are determined by the number of classes of goods/services associated with your mark and range from $225-$400/class (correlates to type of application you file).

If you are not yet using the mark in commerce (e.g., in at least 2 states; in the US and foreign country) you are still able to file an “intent to use” application, presuming you have a good faith intention to use the mark in commerce in the future (e.g., a nice little perk!)

Approx. 3 months after you file, an Examiner is assigned to your application to review it for errors or reasons to refuse registration (e.g., your mark is confusingly similar to a registered mark or pending application filed before you; mark is “merely descriptive”, among other reasons). If any of those apply to your mark, the Examiner will issue an Office Action, for which you will need to timely respond. If no such issues are apparent, the Examiner will approve your mark for publication in the USPTO’s Official Gazette.

Your mark will publish in the Official Gazette for 30 days (unless an extension request is filed by a third party), which allows third parties to file oppositions to your mark proceeding to registration. If no registration, and assuming your application was based on use of the mark in commerce, approx. 3 months later the Examiner will issue your registration (different procedures apply when you filed the application based on an “intent to use” the mark in commerce).

Although U.S. applicants are not required to hire counsel to prepare and file trademark applications with the USPTO, Intellectual property lawyers can provide insight into potential issues, help determine the appropriate class(es) for your mark and properly respond to Office Actions, which can certainly be tricky!

New USPTO Requirements

Also, DIY friends filing and/or maintaining U.S. trademarks – See below for some new USPTO Requirements (with a few exceptions), effective February 15, 2020:

• Must electronically file applications, subsequent documents involving applications, and registration documents;
• Must maintain a working e-mail address with the USPTO at all times, so they may correspond with you re: applications/registrations;

• Provide and maintain an accurate physical address as backup for the USPTO to contact you, should they have problems with your email on file; and

• Specimens (examples of use of the mark in commerce) must also be submitted electronically (with a few exceptions). The USPTO requires 1 specimen per class of goods/services showing the mark as it is actually used in commerce (required for new applications, amendments to allege actual use, statements of use, affidavits/declarations of continued use/excusable nonuse). A key change for webpages submitted as specimens is that the specimen include the URL and access or print date! Additionally, specimens must contain specific content to suffice (check out the USPTO to see what’s required for 1) specimens for trademarks (e.g., goods) and 2) specimens for servicemarks (e.g., services).

Understand the USPTO rules and requirements to avoid delaying your application and/or mark maintenance!

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Michelle is a Partner at Swanson, Martin & Bell, LLP and is licensed in Illinois and Indiana state and federal courts. With a Masters of Law in Intellectual Property, Michelle is the Vice Chair of the firm’s Entertainment and Media Practice Group and a member of the firm’s Intellectual Property Litigation and Transactional Services Practice Group. Her copyright and trademark practice focuses on intellectual property prosecution and related transactions, including performing trademark availability searches and providing advisory opinions, as well as preparing and filing trademark applications with the United States Patent and Trademark Office, and copyright registrations with the United States Copyright Office. Michelle also assists with the oversight of the firm’s extensive trademark docket and conducts required monitoring and maintenance of clients’ trademark portfolios, as well as provides clients with corporate counseling and innovative corporate solutions to address their respective needs.

Michelle further provides comprehensive representation in the drafting, negotiating and executing of various entertainment-related contracts and licenses, including but not limited to band member agreements, artist management agreements, session player agreements, performance agreements, sound engineer agreements, recording and personal services agreements, publishing agreements and licensing agreements. As a former artist manager, she has implemented many facets of national and regional tours, assembled benefit and charity concerts, communicated with various industry personnel, facilitated radio and internet publicity campaigns, arranged radio, print and internet interviews, and assisted in the development of press kits and websites promoting local talent. Michelle has also guest lectured on entertainment and intellectual property-related topics at The John Marshall Law School, DePaul University College of Law, Chicago-Kent College of Law and Azusa Pacific University (CA), as well as served as a panelist on various other entertainment-related continuing legal education courses. Michelle is an author and editor of the Litigation and Industry Updates Column of the ABA’s Entertainment & Sports Lawyers Journal and has also had numerous articles published by the Chicago Music Guide.

In addition, Michelle serves as Chair of Swanson Martin & Bell, LLP’s Community Service/Pro Bono Committee and proudly volunteers her time as President of the Associate Board and as a pro bono attorney to Lawyers for the Creative Arts, a non-profit organization that provides free legal services to eligible clients in all areas of the arts. She also currently serves as Events Chair for the Chicago Chapter of Women in Music, a non-for-profit organization dedicated to fostering equality in the music industry through the support and advancement of women. She recently served as Chair of the Young Lawyers Division for the Illinois Association of Defense Trial Counsel, where she was recognized as the Rising Star recipient and received a Meritorious Service Award and President’s Commendation.

DISCLAIMER: The information contained in these articles constitutes general information and guidance and shall not be construed as legal advice applicable to or provided for any particular person or entity, and shall not be deemed to create an attorney-client relationship between Ms. Wahl and anyone who elects to read and/or rely, to any extent, on the material provided herein. In that respect, Ms. Wahl hereby expressly and specifically disclaims any such legal relationship, but encourages any person or entity seeking a legal advocate pertaining to the issues addressed and discussed herein to contact her directly for further information. Ms. Wahl may be reached at Swanson, Martin & Bell, LLP (330 N. Wabash, Suite 3300, Chicago, IL 60611 or via telephone at her direct line: (312) 222-8585 or e-mail at: mwahl@smbtrials.com.