Hawthorn Law® | Trademark and Business Lawyers for Founders and Startups

What is a Trademark and do I really need to register a Federal Trademark?

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

Do I need to be selling my products or services to register my trademarks?

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.

What does it mean to be "engaging in commerce"?

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.

How Do I Decide What to Trademark First?

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 Busine

How Long Does the Trademark Process Take?

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.

Can I speed up this process?

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.

Is it really necessary to conduct a trademark search before filing my application? Can't I just do this on my own to save some money?

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'

What if I notice another business infringing on my Trademark after I file an application?

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 f