Busting 3 Important Trademark Law Myths

Myth: Filing one trademark application with the U.S. Patent and Trademark Office for a mark and receiving a registration will protect that mark for use with all goods and services.

Fact: When you file a trademark application with the U.S. Patent and Trademark Office, you must designate the classes of goods and services you wish to protect your mark under. Your first thought may be, “Why wouldn’t I tell my attorney to apply under all classes?” The answer is that it becomes expensive. There is an additional filing fee for each class. And there are a lot of classes. One of the more common classes is Class 25, which covers apparel. But be warned. Receiving a registration for apparel is not the same as receiving a registration for say Class 28, which covers toys. An experienced law firm like Heitner Legal will be able to assist you in figuring out which classes of goods or services is most appropriate for you or your business.

Myth: A registration of a trademark with the U.S. Patent and Trademark Office provides me protection throughout the world.

Fact: If you are doing business globally, then you need to think about your most important markets and apply for trademark registration within those countries. For instance, China is a hotspot for trademark activity. In 2018, approximately 8 million trademark applications were filed in China vs. the roughly 600,000 applications filed in the U.S. And many applicants in China are squatters who hope to take advantage of established U.S. brand names. You need to be proactive in registering your marks abroad and also enforcing your registrations against others by way of infringement actions and oppositions. Heitner Legal has assisted many companies in this particular area and has built a network of law firms located throughout the world to help.

Myth: If I want protection of a trademark in the U.S., it is best to file with the U.S. Patent and Trademark Office and get protection across the country.

Fact: Typically, it is best to have a federal registration, but it is not proper in all circumstances. A federal registration is warranted when you are doing business across state lines. If you are simply running a restaurant in a single state and only marketing within that state, then you should apply for a trademark registration within that state.