Denver Colorado Franchise Attorney Martin A. Mansfield, Jr.

 
Why a Franchisor Should Register Its Trademark

 
In the United States, a federally registered trademark (or service mark) benefits a franchisor in four important ways beyond its basic value of protecting the mark from infringers.

First, a franchisor must disclose in its Federal Trade Commission mandated Franchise Disclosure Document whether or not its primary trademark is federally registered.  If it is not, then the FTC requires the franchisor to disclose the negative aspects of this shortcoming.  Making this disclosure discourages potential franchise purchasers. 

Second, an unregistered trademark might actually infringe on someone else's, requiring a costly and damaging change.

Third, an unregistered trademark might be too generic or desriptive, meaning other companies can use the words also, creating confusion that is difficult to stop.

Fourth, why go to the time and expense of building a franchise system whose name can never be fully owned by the franchisor?

What this all means is that if a business owner has any intention to franchise its business, one of the first things it must do is determine if the franchise name is capable of being federally registered, and if it is, to register it right away.

How I can Help

There are 3 basic steps I follow to assist you in federal trademark registration

    * Picking an appropriate trademark and performing a knock-out availability search
    * A full U.S. trademark availability search
    * Filing the federal trademark application and monitoring its progress until registration

I can also be of assistance in matters after registration, such as subsequent Trademark Office required filings and monitoring the mark to assist in policing and protecting the mark from use by others.

Picking the Right Trademark

The right trademark has to fit your business, be capable of becoming a trademark through your commercial use, and not be owned already by some other business (this includes similar trademarks as well).

Not every mark is capable of becoming a trademark.  The words must not be generic in the context used or merely descriptive of the applicable goods or services.

If a proposed mark is capable of being trademarked, it must also be available.

To check on the capability and availability of the proposed mark in trademark terms, one should first perform a "knock-out" search of the exact words (and any similar ones that come to mind) in the U.S. Trademark database.  If it is already registered, then that ends its potential in most cases.  If not, then it is advisable to run a full U.S. availability search.

Full U.S. Availability Search

Although search firm fees are somewhat costly, a full search is valuable in showing both if the proposed mark is capable of being a federally registered trademark, and if there are similar marks not originally thought of for the knock out search.  It also supports the required statement in the federal trademark application that the applicant has the exclusive right to use of the mark.   Without this basis, a trademark application might be vulnerable to later attack and the federal registration lost. 

Filing a Federal Trademark Application

Today, trademark applications are generally filed online.  Although the form seems simple, there are traps for the unwary.  I can help avoid these traps.

If you have already put your mark into commercial business use, then you would usually want an "in-use" application.  If not yet in commercial use, an "intent to use" application is advised to protect the mark from piracy before commercially used.   

After Registration

Once registered, a mark must be suitably used and its use by others monitored.  If a federal trademark is not adequately "policed", the registered owner might not be able to stop infringing uses discovered too late.

Between the 5th and 6th years following your registration date, you must file a special affidavit with the USPTO of your continued and exclusive use in commerce.  Failure to do this will result in cancellation of your trademark by the USPTO.  Thereafter, by each of the 10th anniversary dates after your registration dates you must renew your trademark or it will be cancelled by the USPTO.

My Fees for Trademark Services

Trademark Full Availability Search:  $250, plus the cost of the trademark search.

Federal Trademark Registration Application:  $500, plus the $275-$325 government filing fee.  I will determine the optimal filing method and technicalities, file the application and copy you with the relevant filing information, monitor the application throughout the process with the trademark examiner and work with the examiner on overcoming any technical examiner objections that are capable of being overcome, receive and transmit to you the certificate of registration.  This process can take a year or more, but sometimes we will know if the examiner has no objections in 4-5 months.  This fee does not cover any work relative to oppositions that may be filed by third parties after publication of the mark or any appeal from an adverse determination by the trademark examiner.  It also does not cover substantive examiner objections, such as that the proposed mark conflicts too much with an existing federally registered trademark, or that the proposed trademark is too generic or descriptive to permit exclusive use and thus registration. 

Additional Fees for Intent to Use Applications:   These applications are a two-step process.   Once the trademark examiner approves the mark, the applicant must prove it is using the mark with another filing and fee.  This step is $300 for the attorney fee plus the filing fee (currently $100).

Trademark Watches and Policing:   I try to make this as efficient as possible, especially if multiple marks are involved.  But for a single mark, the cost is $50/month payable each year in advance ($600) plus the watching service fee for their services in notifying me of problems.  For multiple marks of one owner, my fee goes down to $480 annually per mark.  The watching service fee varies with the services.  Typically we at least request watching U.S. trademark applications and publication events for problem trademarks.  This runs about $360 per year per trademark.  This should be regarded as essential to preserving one's trademark registration.