Frequently Asked Questions

Trademarks

What is a trademark?


A trademark is a symbol (e.g., word, phrase, design) that allows consumers to identify the source of a product or service. The word “trademark” is used interchangeably to refer to both trademarks (for goods) and service marks (for services). You can also trademark “trade dresses”, or the total look or packaging of a product (a wine bottle design and label or a chain restaurant’s design and decorations).




How do I know if my trademark is effective?


The strength of a mark is determined by its ability to let consumers know exactly the source, without causing confusion. Trademarks can be (from weakest to strongest): generic, descriptive, suggestive, arbitrary or fanciful. An example for each would be:

  • Generic - “The Shop” for a store
  • Descriptive - “Yellow Yummy Fruit” for a banana
  • Suggestive - “Better Health” for vitamins
  • Arbitrary - “Neon Lamps” for a band
  • Fanciful - “Tegon” for electronics.




Do I need to register my trademark to protect it from use by others?


The intellectual property rights for a trademark are generated by the mark’s use in commerce, not by registration. This means that as soon as people start associating your brand with its origin (the source of the product or service), you may have a right over your mark (this is referred to as gaining “secondary meaning”).
However, if you want to protect that right, you should register it. Registering your trademark will prohibit others from using your mark (or marks so similar that consumers would be confused). Registration also provides other benefits, like legal presumption of the validity and ownership over the trademark, and special remedies if you ever need to go to court.




What kinds of trademarks are allowed to be registered?


Registry is not available to every trademark. Before commencing your registration application we recommend you consult an attorney for an opinion as to your mark’s registrability. You cannot register:

  • Marks that closely resemble pre-existing marks in the same (or similar) International Classes, as this may cause confusion among consumers;
  • Marks that closely resemble trademarks so famous they would cause confusion even if they are in different International Classes; or
  • Generic or descriptive trademarks (descriptive trademarks could be registered if they prove to have “secondary meaning”, which can be achieved by having a presence so strong in commerce, that no consumer would be confused by your trademark because they already know it well).
Some examples of things you cannot trademark:
  • “Coca-Cola” for cars (even if its in a different International Class, this trademark is so famous, it is off-limits to everyone);
  • “Tigre” for a soda, if there already is a “Tiger” for juice (words that sound/look similar, or are translations of existing marks);
  • “Shoe” for shoes.
Note that if another mark (similar to yours) is not registered but has achieved secondary meaning (because of its use in commerce) it could oppose your registry if it can prove likelihood of confusion. Marks that are registered in similar International Classes to yours could also prove an obstacle (even if they are not in the exact same International Class). In some instances trademarks may contain one element that is not registrable but others that are. For example: “Zook Gum”. You can register the phrase as a whole and prevent others from using Zook Gum or Zook, but not Gum by itself.




When can I register my trademark?


If you have already begun to use your mark in commerce, you can register it at any time using a regular application. If you have not used it in commerce, but plan to do so in the next few months, you can file an Intent of Use Application and later provide evidence of use in commerce.




Where do I register my trademark?


If you are planning to offer your goods or services in a specific geographic region, you can register the trademark at the local register (in Puerto Rico, we have a Puerto Rico Trademark Office in our State Department, the “PRTO”). However, if you plan on expanding outside of your territory or offering your good or service through the internet, we recommend you use the United States Patent and Trademark Office’s (the “USPTO”) registry for protection in all of the United States. If you need international protection, consult with your attorney for further proceedings.




What do I need to register my trademark?


First, you need to determine what you want to register. A brand may have many trademarks: a word for its name, a logo design, or even a catchphrase. You will need a thorough description of each, and samples of their use in commerce. Then you should determine which International Class your good or service is in. Trademarks can only be registered in the International Class for the good or service you provide and in International Classes that closely relate to your good or service. Your attorney can help you research these classes and determine the best matches for your mark. Finally, each registry requires fees for application, which will vary by registry and depending on the amount of marks, and International Classes.




What is the process of registration?


1. Determine the type (word, logo, trade dress, etc.), and International Classification for your mark; 2. Research the use of your trademark in commerce, and in both local and federal registries; 3. Use your findings to assess the strength and registrability of your trademark; 4. Complete the application (you will need to provide a detailed description of your mark, and various samples of its use in commerce); 5. Pay the corresponding fees (which vary by registry, and by the type of request); 6. The register will then either certify your mark, or answer with an Office Action (a notice which requests additional information, or alerts the petitioner of a potential conflict with another mark); 7. If requested, provide additional information, or clarify the confusion with the pre-existing mark until the mark is certified, or finally denied; and 8. Renew your trademark by paying the corresponding fees (registration periods and fees vary by registry).




Should I consult an attorney to register my trademark?


Even if not required, it is highly recommended that you use an Intellectual Property attorney to register your mark. Registry fees are non-refundable so you should avoid cancellations for incomplete applications, faulty replies to Office Actions, or lack of research. The benefits of using an attorney include:

  • Legal opinion on the strength of you mark;
  • Detailed research of local and federal registry, as well as use in commerce to assess likelihood of confusion and therefore registration;
  • Recommendations as to types of marks and International Classes to register;
  • Experience with the local and federal online registry processes;
  • Preferential fees in some registries (USPTO); and
  • Ability to respond to Office Actions on your behalf.





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