Trademarks and Brand Protection for Online Entrepreneurs and Independent Business Owners

A trademark is a unique word, slogan, logo (or even a color or smell) that identifies your business in connection with the products or services you sell.

Whether you are doing business online, or running a brick and mortar operation, the only way to make sure you have secured all of the legal rights to your name is to file a Federal Trademark. Unless or until you do that, you are playing a dangerous game of roulette. Any business can legally steal your name at anytime by filing their own trademark using your name.

And the more your business grows, the more likely it is that someone may try to encroach on your success by stealing your name.

No! In fact, many businesses are not selling anything (also called “engaging in commerce”) when they file their trademark applications. You can file an “intent to use” application that reserves your place in line at the trademark office.

When you begin selling products or services in connection with your trademark, you can submit proof that you are “engaging in commerce” and receive your Federal Registration.

This is a common question we receive. To be engaging in commerce, you must have more than just “token” sales of your product or service. In other words, you can't just sell some products to family members or friends. You must have meaningful and regular sales to be engaging in commerce. The USPTO does not provide clear guidance on this, so it is really up to your own judgment.

I answer this question on almost every strategy call I conduct. Many new entrepreneurs have a million ideas in their head for what they want to register as a trademark. But if you are like many boot-strapped entrepreneurs, your budget is limited. My job is to help you prioritize what you should focus on first. If you are a bigger company you may have the budget to file several trademarks at once.

To help you get the juices flowing, here are some of the names that you may want to consider registering at a Federal level, and the order in which we recommend going about it:

The Name of Your Business. If your business has a creative and unique name that sets you apart from your competition, then it would be smart to secure this trademark first. More than likely, this is your most valuable trademark and would cost you a significant amount of capital if it were stolen.

Your Logo. If you have a stylized name, we typically recommend that you protect the words only, but when it comes to logos, you can protect those as well. A logo is also called a design mark, and will not include any text (or the text is secondary to the graphical image).

Your Slogan or Popular Catchphrase. Over time, you may develop a tagline, slogan, catchphrase or other short verbage that becomes synonymous with your business and brand. You can protect these with a trademark.

Your Signature Course or Flagship Service. If you have a signature program that is selling well in the market, then chances are you want to get that name trademarked. The last thing you want is to see sales dip when someone steals your name and starts generating their own sales from customers that thought they were buying from you.

Your Podcast. Do you have a podcast or even a Youtube Channel that has a unique name? These can also be protected as trademarks.

Future Assets. As your business grows, you may come up with different ideas for new brands, product lines, or even businesses. Did you know it is possible to file for trademark protection before you are even selling products under that name? By doing this, you can insure that your rights are protected long before the public (or your competitors) even know what you are doing.

After you hire Hawthorn Law®, there will be a lot of action in the first few days and weeks. Our goal is to conduct a comprehensive trademark search or your chosen name or logo within 48-72 hours after you hire us.

Assuming your name is clear, we will work with you to decide on the appropriate classes to file in, as well as prepare a proper description of the products or services that you sell. Once you give us the green light on your classes and descriptions, we will finalize your application and send it to you to sign off on.

Our goal is to get all this done within 2 weeks after you hire us. From there, it is currently taking approximately 8-10 months to get assigned to and reviewed by an examining attorney at the USPTO. This is the longest (and hardest) part of the process as you aren't sure whether they will approve your application or make a preliminary refusal. Assuming there are no major issues, your application may take 18-24 months to proceed to registration.

In rare cases we can file a special petition to push your application to the front of the line. But this is rare and is typically only done where we have discovered that someone else is infringing on your mark.

The best way to move your application through the process quickly is for you to promptly respond to any requests for information that you receive from our office.

There is no rule or law that mandates a trademark search prior to filing your application. However, one of the most common reasons that trademarks get denied is that a “likelihood of confusion” denial (also called a 2(d) denial) is issued. This typically happens when a business doesn't hire a lawyer to file their trademark application and doesn't conduct a proper search before filing their application.

While some 2(d) denials can be overcome, many cannot. This results in many months of wasted time and effort on the part of a business that is investing in a brand name that they don't truly own.

While no trademark search is required, we do include it as part of our process for each and every trademark application we file. And if your first search is problematic, we will run a second search for free.

We actually get asked about this quite a bit. My general advice, although difficult to swallow, is to wait until you receive your registration to take any action (there are exceptions to this, but they are rare).

There are many reasons for this, the primary one being that you have no mechanism to enforce your trademarks in court unless or until you have a trademark registration. Simply filing a trademark application means nothing – anyone can file a trademark but there is no guarantee that the mark will actually register. 

In addition, we have run into situations where, if the infringer finds out about your trademark application before you receive a registration, they can file an opposition or otherwise make it difficult on you to obtain a registration. Many infringers do not have legal counsel – but if you send them a cease and desist letter, it may prompt them to seek a lawyer to protect their rights.

Therefore, it is much easier and cost effective to wait until your trademark has registered to enforce your legal rights. 

Securing a trademark is one of the lowest cost, highest ROI investments you can make in your business. With a trademark in hand, you will instantly increase the value of your business, not to mention opening yourself up to the possibility of licensing deals and other streams of extra income.

At Hawthorn Law® we only charge flat fees, so there is never any surprise about what it will cost to obtain your trademark. Our current fee schedule can be found here.        

*These fees do not include the filing fees that are payable to the USPTO and are currently $350 per class applied for.

No, unfortunately. Ethically, as an attorney we cannot include the filing fees with your legal fees. Also, we do not know how many classes of goods or services you will apply for. The current fees (as of January 2021) are $350 per class. If you wish to only apply for one class, we will collect that fee before we file your trademark application. If you apply for more than one class, we will collect the fee for one class when we file your application. Once we know that the trademark office will accept your application, well will collect the additional fees from you and pay them on your behalf.

Unfortunately, no. The USPTO filing fees are non-refundable, even if your application is denied or abandoned.

As attorneys, we cannot make any guarantees about the outcome of your trademark filing. But what we can do is stand by our work. If, after completing our initial review of your trademark we feel that there is a strong likelihood that your trademark will not be successful, we will advise you as such and you can decide how to proceed.

Many times the attorney examining your file may issue an initial denial (also called an “office action”) for a variety of reasons. If we receive a preliminary denial, we will review the reasons for the denial with you, and then determine how best to respond, including potential legal arguments. 

At Hawthorn Law®, with our transparent flat fee pricing, we will tell you what a response will cost, and what we feel the likelihood of success is, BEFORE we take any action on your file. This way, you will always be in control of the process (and the cost).

Absolutely! We frequently work with businesses to respond to office actions or fix their trademark applications after the fact.

In some cases, we will advise you to abandon your trademark and start over. In other situations, we can review your office action and quote a fee to help you prepare a response. From there, we can see your trademark through to registration.

While this is rare, oppositions do happen. This is frequently the result of what we call “corporate bullying”, and many startups are completely blind-sided when it happens. If you receive a notice of opposition, we can walk you through the process and advise you every step of the way.

Not at this time. We charge one low flat fee to conduct a search, give you guidance on the merits of your proposed mark, and then prepare and file your application. We will then follow your application through the system until you receive your registration. Additional fees, as found on this page, may be due during the process.

After reviewing the results of our initial comprehensive search, we strive to either give you the affirmative green light to proceed, or tell you that you absolutely should not proceed.

But in some cases, it is a close call and you must decide based on the information and analysis we provide. If your trademark search uncovers problems with your proposed mark causing you not to proceed with your trademark application, we will give you the option of running a complimentary search for a new name, or requesting a full refund of fees paid (less any fees related to the search).

You may begin using the ™ symbol right away, (or SM if you are selling services), even before you file a trademark application. Once your trademark registers you may begin using the ® symbol (but not before). Many people make the mistake of using this symbols improperly – now you know how to use them properly! If you have additional questions, we've written an entire guide on how to use these symbols properly.

Not once you receive your registration. A registered trademark is the same, regardless of whether it is used in connection with goods or services. However, before you receive a registration, you may use the ™ symbol if you are selling goods and the SM symbol if you are selling services.

One of the great things about the Federal Trademark system is that you can file a trademark application before you are actually using your mark in commerce. This is called filing a 1(b) or “intent-to-use” application – meaning that you have a bona fide intent to use your name in the future. This means that you can stake your claim to a name BEFORE you are actually using it in commerce.

Since the Trademark system is a “first to file” system, this allows you to be the first up to secure the legal rights to that name so that when you do start selling you can hit the ground running. There is an additional fee of $100 per class to file an intent to use application. However, this fee is not due until you are actually using your trademark in commerce, meaning that you are making sales.  For this reason, we very much believe that this small fee is easily offset by the extra peace of mind you will have knowing that your trademark is waiting for you when you are ready to start using it.

So there are a couple issues at play here. 

First, if you don't live in the United States (you might be a digital nomad, expat or foreign national), you must retain a US licensed attorney to help you with your trademark application. (USPTO rules, not ours!)

Second, a Federal Trademark in the United States provides you with protection of your brand name in the US (and its territories) only. So if you are selling your products anywhere else in the world, you would have to also apply for trademark protection in the geographic area where you are selling your products or services.

International trademarks can get quite complicated and we recommend talking to a lawyer if this is something you are interested in.

However, many digital nomads and online entrepreneurs operate US-based businesses from outside of the United States, and will need a US registration only.

After a long and winding road, you should first and foremost take some time to celebrate your accomplishment. Getting a registered trademark is not easy, so you should enjoy the moment! We will forward you an electronic registration certificate, provide you with helpful legal information about how to protect your new trademark, and advise you on what to do next.