Picking the right category of goods or services for a trademark application appears deceptively simple. After all, if you're selling handbags and hats, you'd choose the categories of handbags and hats, right? Not so fast.
I always tell my trademark clients that when it comes to trademark applications, the devil is in the details. What appears to be a straightforward, simple application is actually rife with potential pitfalls. Choosing the proper category is a huge minefield, and here's why.
If you've done a proper trademark search, you should already be aware of potential conflicts with your proposed mark. If you find a conflict, but it's in a different category of goods or services than your product and wouldn't be likely to cause confusion to consumers, you might feel good about submitting the application. The sticky part is what exactly would cause confusion with consumers? A lot more things than you might think.
Let's say you own a yoga studio and want to register your name in the category of yoga studios. You might find an existing registration that has a name similar, but not exact, to yours. This registration is in the category of fitness apparel. Apparel and yoga studios are different, right? Nothing to worry about? Don't count on it! The trademark examiner will carefully consider how similar the names are and whether this apparel brand has anything to do with yoga. Let's say the apparel is strictly for boxing enthusiasts. Maybe no issue. What if the apparel is for pilates enthusiasts? Getting closer to having a problem. What we do for our clients is carefully analyze what category of goods or services we might be able to choose that wouldn't cause a problem with an existing registration. It's a time consuming process, based on analysis of the trademark statutes and using our judgment based on prior experience. It's not easy to find answers online, it really does take some skill and expertise.
Keep this in mind when choosing a category for your goods or services. When in doubt, engaging professional help may cost more up front, but will cost far less in the long run if you can avoid an Office Action or other problems with your application. If you want to schedule a quick call to talk about how we can help with your trademark registration, schedule a call here.
Applying for certification as a minority or women-owned business enterprise takes a lot of work....and paperwork. If your business is looking to obtain government contracts, becoming certified as a women or minority-owned business can give you a leg up.
What kinds of documents might you need?
1) Be prepared to share financials. Many people are uncomfortable with this, but be prepared to show several years of business tax returns and financial statements for the business.
2) You must show information related to ownership and control of this business. This means a proper certificate of organization and other formation documents and a proper Operating Agreement showing that the business is owned and managed by at least 51% women or minority. If you don't have a proper Operating Agreement in place, this is going to be a huge problem for your certification.
3) Detailed information on employees, management and capital contributions to the business. If you haven't been documenting these things, it's time to get time together asap.
We can help get your legal documents together for certification, such as the formation documents and Operating Agreement. To schedule a call to discuss how we can help, click here.
We are excited to announce High Five Holidays! This November and December, up to 5%* of received legal fees will be donated to Toys for Tots. We are tremendously grateful for the support of all of our clients this year and are so excited to give back. We'd love to invite you to make a matching gift.
*excludes filing fees and credit card fees
I encourage all of my clients to draft a business plan on two occasions: 1) when first starting a business and 2) when expanding or after three years in business. In fact, I typically won't meet with new business owners that don't have a plan in place. Why?
A plan doesn't have to be a formal, mumbo-jumbo type documents with references to executive summaries and other corporate terms. A plan should be useful for the business owner and act as a roadmap and target. After all, if you don't know where you're going, how can you possibly get there?
A plan will help to refine business goals and establish financial viability. Yes, many of the numbers you will initially plug-in are total guesses, but you have to start somewhere. When you re-visit and re-draft your plan after three years, you'll have real data to relay on that will help you expand your business.
Many owners struggle with what information or data to include. A resource I recommend to all of my clients and that I personally use is Live Plan.
I personally love Live Plan because it lays out all of the necessary categories and financials in an easy to follow way. I never have to guess at what numbers to include and there's even a section that helps me develop my marketing plan.
If you're starting a business or expanding your business, it's time to consider a well thought out plan.
*any links to Live Plan are my affiliate links. I've used this software myself for several businesses after a client told me about it years ago. I may receive a commission if you sign up using my link.
What does it cost to hire a trademark lawyer? The real answer - it depends!
Depending on what type of trademark needs you have, trademark lawyer fees can range in the hundreds to the multi-thousands of dollars.
For a trademark search and application, many lawyers will charge a flat fee. Find out what is included in the flat fee. If an Office Action is issued, will the attorney include a response? In a trademark search and application, the process seems deceptively easy, but there is a lot of strategy that needs to go into the application in order to have the best chance at a successful trademark registration.
If you've gone the DIY route and now have to respond to an Office Action, fees can range again from the hundreds to several thousand dollars, depending on how complicated the issues are. Avoiding these fees and complications are why good strategy and research is critical before the application is submitted.
If you're facing a final refusal, an appeal before the trademark board can easily cost over $10,000. Same with prosecuting or defending an infringement action. Some of the most expensive litigation can be trademark litigation. Therefore, it's best to get your ducks in a row before ever submitting an application.
If you'd like to book a call to discuss how we may be able to help you with flat fee trademark registration, book a call here.
Sarah E. Holmes is a Philadelphia business attorney and strategist that helps start ups and established businesses looking to expand, protect their assets and increase their profits in an approachable, down-to-earth way. When you're looking for a business lawyer near you, we offer several convenient locations.