IPfever

Atlanta law firm for global business

Category: Trademark

  • Amazon Suggests Branding for All

    Amazon Suggests Branding for All

    Approaching the 2017 holiday shopping season, the e-commerce giant Amazon’s stock price is heading to $1,200. Amazon.com, often quoted as “The Everything Store”, reportedly accounts for 46% of the entire online retail sales.

    An interesting thing about shopping at Amazon.com is that you do not particularly notice the items sold directly by Amazon. All items sold at Amazon receive the same treatment, and the same format applies to all product pages. The product order is determined by objective statistics like sales, rating, and price. Quite often, items sold by third-party sellers are bestsellers or Amazon’s Choice.

    As such, consumers can gather reliable product information and compare them conveniently, finding little reason to go another place to shop. In addition, since all the retailers who sell identical products are competing for the lowest price in real time, you will likely find a great deal.

    On the other hand, the price competition among online retailers is not the merriest news for the manufacturers and offline retailers. Even worse, if a product sells well, then there appear hordes of copycats selling similar products with look-alike photos and descriptions. That certainly induces angry moments for companies who went all the way to market a new product.

    In the Online Space, Branding is Especially Important.

    Consumers do not possess means to tell whether an article was manufactured in the same production line or not, so they refer to brand labels. Without branding, there is no way to distinguish your products from others’ similar goods. Your investment on quality assurance and customer service will be rewarded only if you have a brand name that consumers remember.

    For this reason, retailers let alone manufactures and wholesalers often create their own brands and sell branded items at Amazon.com. Especially, standardized products with little variation and goods that do not require special manufacturing technique or know-hows often get branded by retailers.

    Amazon recognized the importance of branding early on and created “Amazon Brand Registry” to help companies to protect their brands. Once registered, the companies who own brands can efficiently monitor and control products marked with their brand names and logos; now Amazon is requiring brand owners to register their brands with the United States Patent and Trademark Office first, for which I get an increased number of inquiries.

    Even if you sell only via offline channels, you need a U.S. trademark registration to protect your names in the online space. For example, if a retailer opens an Amazon Seller account in a name well known as a local beauty supply store, consumers in the local area may make online purchases relying on the local retail store’s good will. This is an outright trademark infringement, but without a trademark registration you may not stop them easily.

    Trademark registration is a simple but important legal process.

    If you understand the process and prepare accordingly, you can greatly reduce the cost of registration. You may visit the USPTO website to learn about the process. For your information, I estimated the typical cost and time required for the following hypothetical situations.

    1. If you are registering a mark that is already in use,
    • You need one or two days to gather relevant information and evidences of your use. Most of all, you need pictures of your product, advertisements, and logo image, among others, and you need to confirm that the mark meets legal requirements.
    • Filling out an application form takes only minutes (up to an hour for a novice applicant) using the Trademark Electronic Application System by the USPTO for free1. You can use your credit card to pay online for the application fees, which are around $250 in most cases.
    • In three to four months, the examination begins, and in a month your trademark can be officially registered.
    1. If you are registering a mark that you intend to use in the future,
    • Although the process is not too different, you probably want to consult a professional2 about the appropriateness of your intended mark i.e. whether the mark will be legally enforceable. A short consultation that costs only 20 minutes of your (and your attorney’s) time can be extremely productive.
    • You need to provide an evidence of your actual use within a required period, which is usually 6 months, to complete the registration process.
    1. If you already have a USPTO registered trademark,
    • Trademark registration must be renewed, but many trademark owners fail to do maintenance and end up abandoning their rights.
    • Regardless of a continued use, the registration can be cancelled unless you pay maintenance fees (from $100 to $425) at 5-10 years interval as prescribed by the USPTO.

    Now, small to mid-size retailers can reach the national market thanks to the advancement of logistics and order fulfilment services. This also means even if you are focusing on a local market, you need to compete with retailers and wholesalers across the country.

    If you have not registered your trademark or only registered with the state government, you should take steps to protect your brand and your customer’s trust with a USPTO trademark registration.

    1. Online trademark registration websites charge around $50 fees for online filing, but anyone can use the USPTO online application system online for free. ↩︎
    2. Most Intellectual Property (IP) attorneys can provide competent consultation on trademark issues. ↩︎
  • What is Trademark?

    What is Trademark?

    A trademark is a mark you use in order to identify your good or service.

    For instance, IPfever is a trademark as it’s associated with services and contents offered at IPfever.com. If a law professor wants to start a blog about IP, she shouldn’t name it IPfever. Such naming would mislead people to think that the blog was associated with IPfever.

    But, on the other hand, if a medical researcher encounters a feverish symptom related to Information Profession, she’s free to call it “IP fever,” to publish a paper titled “IP fever,” and so on. There’s no problem with such designation because the trademark IPfever, at the moment, has nothing to do with medical diagnosis.

    So, you can freely catch an IPfever, and you may sell an IPfever brand roasted coffees. But you may not provide an IPfever service if that’s related to what is offered on ipfever.com.

    That’s a brief overview of what trademark does and doesn’t. Let’s find out more.

  • US Trademark Backlog in the 1Q 2018?

    US Trademark Backlog in the 1Q 2018?

    There’s been reports about a huge number of applications, originating from China. See e.g. this WJ article at https://www.wsj.com/articles/flood-of-trademark-applications-fromchinaalarms-u-s-officials-1525521600.

    Then, is there a backlog created by the increase of Chinese trademarks?

    I had a chance to look at the dates of applications filed on behalf of my clients from 3Q to 4Q of ’17 and to figure out what’s going on.

    Legal examination of a trademark application starts after about three months from the filing date, and depending on the assigned examiner and the result of the examination, it can take a month to many months. I felt in 3Q and 4Q of ’17, the examination process moved slower than before, comparing 1Q and 2Q of ’17, but it might’ve be just coincidental.

    When an examination is completed, there’s a notification that sets forth the publication date in about 20 days. That waiting period for publication has been more or less consistent from 4Q of ’17 to 1Q of ’18.

    After the application is published in the Official Gazette, If there’s no opposition during next 30 days, the application moves on to the process of being registered. This registration process usually took about 6 weeks in 4Q of 2017 and about the same time in 1Q of 2018.

    So, what’s the conclusion? If there’s a backlog, it must be on the legal examination part of the process as you probably guessed. And unfortunately, the examination process is one of the trickiest part to tell how long it usually takes, rendering our survey inconclusive.

  • How much does a trademark registration REALLY cost?

    How much does a trademark registration REALLY cost?

    Above is a cumulative showing of trademark fees (government fees only).

    Assuming you use your trademark for a single type (category) of product/service, an online application fee can cost as low as $225, plus a $125 one-time maintenance fee after 5 years of use and $425 every 10 years. Total $1,200 over 20+ years? Not much right?

    This calculation doesn’t include a one-time filing for incontestability in the 5th year for $200, which is technically optional.

    However, if you don’t do it correctly, there are penalties.

    When you fail to provide all necessary information at filing, you will be subject to fees varying from $50 to $150 per incident. There are also optional filings that might strengthen your trademark. And if you miss a date on maintenance fees, you may be penalized. Those penalties can accumulate well past the initial filing fee.

    Aside from that, there are legal fees.

    Many attorneys charge a flat legal fee of $1000-$2000 per mark plus government fees. If your mark experiences rejections from the USPTO, they might ask for more money on an hourly basis during subsequent actions.

    As a result, your cost can vary widely depending on your trademark and how you proceed with it.

    Please note that increases in UPSTO fees in 2021 are not reflected above.

    by YJ on 12/30/2020
  • Tax forms are complex and lengthy, but they can’t go south.

    Tax forms are complex and lengthy, but they can’t go south.

    Federal trademark registration has become a standard practice for many reasons including (1) it’s inexpensive (as low as $225 to apply online); (2) due to the internet, no one does business in a single state; and (3) branding becomes crucial to even small businesses. And if I add one more to the list, it’s fairly easy.

    The easiness comes with a risk.

    For example, federal tax forms are usually very complex and lengthy; they are designed to make you write down all taxable incomes imaginable, even those you would never know they were considered income. A trademark application, on the other hand, is very simple and straightforward. In other words, it’s easy to fill out the forms but hard to do it right.

    So there’s $99 (plus application fees) trademark registration services online.

    Unfortunately, not many people see this as a problem. These services simply let you search registered trademarks online, to apply trademark online, and remind you of important dates for maintaining registration. Well, it sounds like a lot, but the United States Patent and Trademark Office (“USPTO”) offers Trademark Electronic Search, Trademark Electronic Application, and even email reminders of important dates, for free of charge.

    There is a reason for such a low price.

    Online registration services do provide convenient tools and ease the pain of yours, but they come with a price (literally and also in the form of a false sense of security).