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Our goal is to provide each of our clients with as much information as possible about State Trademark and Servicemark registration. As you will see as you review the following material, there is a lot of information to digest and consider. Many legal aspects may be complex and confusing. We want you to know we are available to speak with you about any legal aspects of State Trademark and Servicemark registration at your convenience either over the telephone or in person at the Spiegel and Utrera, P.A., office nearest you.
LET US USE OUR LEGAL KNOWLEDGE TO PROTECT YOUR DISTINCTIVE NAME OR LOGO FROM COPYCATS—IT’S EASY!
If you have an interest in Trademark or Servicemark registration, we suggest you read the entire section, however, if you prefer to view a topic within the section you may do so by clicking on the topic below:
A distinctive mark that customers associate with your products or services is very valuable. Registering your State Trademark or Servicemark will prevent copycats from confusing customers and damaging your reputation. Spiegel & Utrera, P.A., has helped numerous clients to register their State Trademark or Servicemark. Allow Spiegel & Utrera, P.A. to use its legal understanding to ease you through the State Trademark or Servicemark registration process.
Here’s some answers to common Trademark and Servicemark questions:
What is a State Trademark? Top of Page A State Trademark is a word, name, symbol, phrase, slogan, or combination of these items which is used to mark and distinguish goods or services to indicate their source or origin throughout State. State Trademark rights may be used to prevent others from using the same or a similar mark in the State.
What is a State Servicemark? Top of Page A State service mark is the same as a State Trademark, except that it identifies and distinguishes the source of a service rather than a product.
Why Get a State Trademark or Servicemark?Top of Page
A name or logo in many cases overtime becomes a company' s most valuable asset.
Registering a State Trademark or Servicemark prevents others from adopting your name or design and gives you very favorable enforcement powers throughout the State.
A registered State Trademark or Servicemark allows you to put everyone on notice with the Trademark symbol "TM" or Servicemark symbol “SM” once the Trademark or Servicemark process is complete.
A registered State Trademark or Servicemark allows you to advertise and promote your mark and build name recognition and goodwill for your business with out fear of losing the mark to another.
A registered State Trademark or Servicemark may subject the copycat to injunction, profit disgorgement and attorney's fees if litigation is necessary to prevent such a copycat from using your mark.
What is First Use? Top of Page State Trademark or Servicemark rights are established from the earliest of the date of first use of the mark on the goods or services. A registration can be attacked by the owner of a confusingly similar mark who can establish an earlier date of first use in commerce than the owner of the registered mark.
Why Should the State Trademark or State Servicemark Be Owned By a Limited Liability Company or a Corporation? Top of Page Liability. The bottom line is that if you personally own a State Trademark or Servicemark, you may be opening yourself up to lawsuit in connection with the products or services offered under the Mark. You will want to form a corporation or organize a limited liability company that would own the Trademark or Servicemark and possibly conduct business operations with the same corporation or limited liability company, or you may want to have separate business entities for separate functions described hereto add layers of limited liability protection. Can I Register My Internet Domain Name? Top of Page Yes, if it meets State Trademark or Servicemark Registration Requirements. If you have an internet-based business, you will seriously want to consider a State Trademark or Servicemark to protect your business from copycats. What are the State Trademark or Servicemark Registration Requirements?Top of Page
The mark must be filed under the owner’s name. The owner must provide the goods or services under the State Trademark or Servicemark. An owner may be an individual or business entity such as a corporation, limited liability company or partnership.
If the owner is a business entity, the type of entity must be specified.
A description of the products or the advertising or promotional materials the mark has been placed upon.
A drawingof the mark and a specimenof the mark must be submitted when the application is based on actual use. Depending on the type of application, the drawing should depict the mark as it has been used or how the owner intends to use it. A drawing is necessary even when a specimen is submitted as well. A specimen is a real-world example of how the mark is actually used on the goods or in a service.
How Long Will My State Trademark or Servicemark Registration Take to Complete? Top of Page The registration process may typically take around four to six weeks to wrap up.
What Happens if the State Trademark or Servicemark Owner Changes or Their Name Changes? Top of Page After a State Trademark has registered, the owner of a State Trademark may change for various reasons. Some State Trademark or Servicemark owners transfer their ownership of a mark to another entity, which is called an assignment. In addition, some State Trademark owners change their names while retaining ownership. In both instances, it is advised that State Trademark owners to record the ownership transfers.
How Do I Let People Know My Mark is Registered? Top of Page We recommend that you place the symbol “TM” next to a Trademark or “SM” next to a Servicemark.
Protect Your Valuable Intellectual Property Top of Page Many clients assume incorporating or forming their business entity with the Secretary of State will automatically protect their business name—it does not. Incorporation in and of itself is not a valid defense to trade name, Trademark or service mark infringement, unfair competition or anti-dilution claims. You must take a proactive step and register the mark.
Having a State Trademark or Servicemark is all about protection of your valuable intellectual property. Top of Page Let’s say that you’ve started a corporation, Mystic Green Candle Enterprises Inc., and you’ve got a great idea for a product, the “Mystic Green Candle.” Just because you started Mystic Green Candle Enterprises Inc. would not stop someone else from marketing the Mystic Green Candle. In order to properly protect your idea, you would need to register it. Registering at the state level is cheaper, but of course it affords a lower level of protection than a Federal Trademark or Servicemark, which would protect your Trademark or Servicemark throughout the United States. Now, let’s take the “Mystic Green Candle.” First off, you’d want a State Trademark or Servicemark search and a common law search to make sure that you are not the one that’s infringing on someone else’s Trademark or prior use. Once that’s completed, you’d apply for a State Trademark or Servicemark. A State Trademark or Servicemark can be of just words, such as “Mystic Green Candle,” or it may include a black and white or color design or logo, say, with a picture of the Mystic Green Candle. By registering your mark, you avoid any confusion that may arise in the future. Protect yourself from the competition. This can be one of your best investments. If you expand or sell your business the fact that you have a registered State Trademark may be very valuable.
Picking a Name: Types of Trademarks or ServicemarksTop of Page Trademarks and Servicemarks are generally divided into two categories of strong marks: fanciful and arbitrary. Fanciful marks are invented words, symbols or logos. Exxon and Xerox are fanciful marks. Arbitrary marks are words that have meaning, but the marks are not used in connection with meaning. “Fox” photos, “Apple” records and “Gateway” computers are examples of arbitrary marks. Gradually, consumers may associate quality and value with these marks and they are therefore said to have acquired “good will.” Beside the two previous categories of marks, there are suggestive marks. Suggestive marks are legally distinctive but never acquire the strength as the other types. “Coppertone” suntan oil and “Skinvisible” transparent medical adhesive tape are examples of suggestive marks.
Descriptive marks are the weakest type of mark, where the word or words are merely descriptive of the product or service. Such descriptive marks cannot be used as a mark at all, unless it is shown that the phrase has, over time, acquired “secondary meaning. “Investacorp” for a corporate investing consultant, “Boston Beer” or “Arthriticare” are examples of descriptive phrases. Having said that, it may be possible to take a descriptive word, say for example the previously-mentioned "Investacorp,” “Boston Beer, “ and “Arthriticare” and make them distinctive by adding fanciful letters or words, like with “IC Investacorp,” “BB Boston Beer,” and “AC Arthriticare.” A famous example is with the publicly-traded “PS Public Storage” registered Trademark:
You will note that although the Trademark has the fanciful letters “PS” to distinguish it from potential competitors, no one refers to the company as “PS Public Storage.” Cleverly, a strong association has been developed with the common words “Public Storage,” so that when a consumer sees the Trademark, they think of the company while ignoring the letters “PS.”
Descriptive marks can be registered and protected if used in commerce for at least five years or more. Finally, generic words, including slang words, may never serve as Trademarks. “Hog” for large motorcycles, “cellular” for cellular telephones and “Honey Brown” for beer are examples of generic words.
State Trademark and Servicemark Registration Top of Page Failure to register a mark that should be registered denies a company substantial benefits. These include statewide protection from the time the registration issues and a presumption of validity in infringement litigation.
Trademark or Servicemark Search and Attorney Opinion to Insure You’re Not InfringingTop of Page A good idea is that the entrepreneur should select three marks from the fanciful or arbitrary categories. The marks selected should then be subjected to Trademark searches. If a mark creates a "likelihood of confusion" with a mark previously used, it may be enjoined in an infringement action. It is no defense that the mark was chosen innocently. Therefore, it is foolish to go into business without a full Trademark search and clearance opinion from an attorney.
The search must be a full search. Looking only at the U.S. and State Trademark registers is not enough. This is because Trademark rights in the United States arise from use, not registration, and the owner of an unregistered Trademark may be able to enjoin your company’s use. A proper, full common law Trademark search therefore includes trade directories, business name lists, and information databases.
Companies must also be aware that "searching" only by reserving a corporate name is not sufficient. The fact that a corporate name has been reserved or approved by a Secretary of State will not protect the company. Approval of al name for corporate registration purposes is no defense to Trademark infringement.
If the search is favorable, the entrepreneur can apply for registration. Upon State Trademark or Servicemark registration finalization, the State Trademark or Servicemark owner must use the State Trademark or Servicemark in a manner to show that it is being treated as such. The mark should be used only as registered as there are Goods Classes or Services Classes of uses that can be registered. The TM or SM symbol should be used.
Once the registration issues, use of the symbol is not mandatory, but it is good practice to use it to put potential infringers on notice of the company’s rights. Also, once a company begins to think about either selling or manufacturing products in a foreign country, it should consider applying to register its Trademark in that country.
We strongly recommend you conduct a Trademark or Servicemark Search when proceeding with your registration. A Trademark or Servicemark search helps to uncover a similar mark in use. Conducting a search also shows your intent to act in good faith, which can be a very important factor should a problem ever arise.
Federal Trademark or Servicemark Search and Attorney Opinion A search of the United States Government's records including marks that have been registered and are currently pending registration and an opinion as to the results of the search. Up to 3 words - $275. More than 3 words would be $50 per additional word.
State Trademark or Servicemark Search and Attorney Opinion The state search includes a thorough examination of Trademarks registered in a particular state and an opinion as to the results of the search. The price for a Trademark search is $99.95 per State for up to three words. More than 3 words would be $50 per additional word.
Common Law Trademark Search and Attorney Opinion Search includes marks that are in use but may not be registered with the United States Government and an opinion as to the results of the search. The results of a Common Law Search can be very important because whoever uses a mark first generally has a superior right to the name - $250.
Combo Search and Attorney Opinion Combo search includes the U.S. Government, one State and Common Law search and an opinion as to the results of the search. This assures the most comprehensive investigation. The mark must only consist of up to three words - $524.95.You receive a savings of $100 by ordering these searches now. More than 3 words would be $50 per additional word per state. Additional states are $50 per state.
State Trademark or Servicemark Registration Let Spiegel & Utrera, P.A. register to protect your valuable Trademark or Servicemark in State for $89.95 plus State filing fee. Order Now.
Registering your Trademark or Servicemark with the State of State will prevent copycats from confusing customers and damaging your reputation. Spiegel & Utrera, P.A., has helped numerous clients to register their Trademarks and Servicemarks.
Allow Spiegel & Utrera, P.A. to use its legal understanding to ease you through the Trademark or Servicemark registration process. Trademark can be registered at the Federal and or State Level. The type of Trademark you register will determine how much protection you receive.
Let Spiegel & Utrera, P.A., help you grow your business! Our firm has what we call the "General Counsel Club". Select this valuable service at the time of ordering your Trademark or Servicemark and receive an additional one month Bonus – so that your first year of service will cover 13 months PLUS take a $50 discount, so you pay only $89.95 for the first 13 months of service. You get unlimited telephone consultations all year long on all your legal and strategic business advice, plus our firm will prepare the Notice and Minutes of your business’s Annual Meeting; our firm will comply with all statutes and applicable laws relating to your business’s Registered Agent & Registered Office; our firm will review all mandatory State filing documents as required by the Secretary of State; our firm will act as your business’ General Counsel; you will receive our firm’s newsletter, "Entrepreneur’s Alert®", which is published six times a year and provides valuable insight into running your business from a legal and business point of view.
Detours and Contradictions Want more out of your business? Then don’t miss Lawrence Spiegel’s, 223 page Detours and Contradictions. Use this book, and all your available resources, to begin the challenging yet fulfilling journey of entrepreneurship. As we’ll see... having a marketable idea is only the first step in a lengthy process. Along the way you’ll encounter numerous detours and contradictions, risks and rewards. The price of Detours and Contradictions is just $13.50 if you order when forming your business. PLUS there is no extra charge for shipping, handling and processing as your book will be shipped with your company. Also, as an added bonus, your copy of Detours and Contradictions will be personally autographed by Lawrence J. Spiegel.
Charlie's Entrepreneurial Journey Building your business, or selecting the type of business to start, is easy when using Charlie’s Entrepreneurial Journey as a guide and applying Lawrence J. Spiegel’s thirty eight "Principles of Entrepreneurship" to your business. Spiegel’s latest book provides 416 pages of insight into the world of an aspiring entrepreneur named Charlie. Charlie’s journey leads him through topics never discussed in business books but essential to success. Topics include: costs associated with Acquiring a Customer, Urgency to Purchase, Saturation Advertising, Success Leaves Tracks and Repetitive Business. Spiegel’s "Principles of Entrepreneurship" cannot be found anywhere else. In fact, no one has ever exposed the business secrets Spiegel discloses. If you are seeking to spark your business you will find an EXPLOSION in this book. Order this book at the time of forming your business and you will get Charlie’s Entrepreneurial Journey for $19.50 which includes shipping, handling and processing, when ordered with the formation of your business. PLUS Lawrence J. Spiegel will personally autograph your copy of Charlie’s Entrepreneurial Journey.
Licensing Agreement You will want to protect your valuable intellectual property with a licensing agreement. Typically, there are two arrangements involving a licensing agreement. The first situation, let’s call it the Liability Isolation Arrangement, is where the individual creator and owner of intellectual property forms a company to manufacture, promote and sell goods in connection with the intellectual property, but the intellectual property is transferred to be owned by its own, separate and independent business entity that leases or grants rights to the company that is doing the manufacturing, promoting and selling. That way, the intellectual property cannot be jeopardized by the liabilities associated with the business operations of the manufacturing and sales entity. In the second situation, let’s call it the Successful Producer Arrangement, a company is so successful, outsiders are interested in promoting and selling the products and the intellectual property connected with them, so that they want the opportunity to sell in a given area. You will be interested in learning about the exciting and fast-growing area of marketing and brand extension.
In the licensing agreement, the Licensor (person who owns the rights to the mark) grants to the Licensee the exclusive, personal and nontransferable right to the mark. For example, a license could be specifically limited to one outlet (store) in a particular geographic territory and the Licensee may only use the mark in connection with the sale and distribution of a particular product(s), and Licensee may not represent that it has any ownership right in the mark. In exchange for the license, Licensee pays to the Licensor a fee, which typically involves a “per unit” royalty, but the parties may agree on other fee arrangements. The agreement should designate the authority to determine the mode and method of advertising, merchandising, promoting, manufacturing, selling, and distributing of the intellectual property and the products associated with it. Also, who has authority to fix the prices, discounts, and terms of sale, whether for consumers, dealers, distributors, wholesale or retail. Furthermore, you will want to protect the intellectual property with restrictive covenants that afford the Licensor statutory remedies for violation and often prevent the Licensee from disclosing confidential business information about the Licensor with others. We can prepare the licensing agreement for only $350 when ordered with your business.
Lender's Agreement & Promissory Note Initially a business needs a cash infusion. Additionally, the business may require a continuing advance of funds for some time. How does it get the money? After the initial purchase of shares of the business for at least their par value, generally, the business has two choices on obtaining additional money; (1) shareholders pay for their initial shares in excess of their par value thereby creating excess Paid-in Capital or (2) loan money to the business. Lending money to the business is the preferred method to advance money to the business because the lender is seen as a creditor of the business. The lending of money to the business is accomplished with a Lender's Agreement and a Promissory Note. Both of these instruments together provide for an initial amount of a loan to the business and also provide for future advances of money the lender might make to the business. In the event of failure of the business, the loan will be fully tax deductible by the lender as a bad debt. The fee for the Lender's Agreement and Promissory Note is $150 at the time of ordering a Trademark or Servicemark registration.
Security Agreement for Business Once you have decided to use the Spiegel & Utrera, P.A. Lenders Agreement and Promissory Note, the next step is to collateralize the personal property assets of the company in favor of you, the lender with a Security Agreement. A Security Agreement is a contract between a lender and borrower. The Security Agreement gives the lender a security interest and the right to repossess personal property that a borrower has offered as collateral if a note is not paid per its agreed terms. This right is superior to all subsequent creditors provided the lien given by the Security Agreement is perfected. The Security Agreement available from Spiegel & Utrera, P.A. is complete and includes provisions relating to type of collateral being secured, address where collateral will be kept, executing further documents, events that shall constitute a default, assignment of secured collateral by holder, a listing of events that would constitute default by the borrower and the rights of the lender should the borrower default. Provided you have ordered the Spiegel & Utrera, P.A. Lenders Agreement and Promissory Note, the fee for the Security Agreement, if ordering a Trademark or Servicemark registration, is an additional $75.
Perfecting the Lien Created by the Security Agreement - Uniform Commercial Code Liens against personal property are perfected differently than liens on real property. The use of the phrase “personal property” does not mean property owned personally by the owner of a business. Instead, the term refers to all property used inside or outside of a business (with the exception of real property) including equipment, furniture, inventory, etc. To perfect a lien against personal property used in a business, strict adherence must be followed pursuant to the Uniform Commercial Code, documentation must be created, executed and filed with the appropriate government agencies. Once recorded, the Uniform Commercial Code makes a lien valid and serves as notice that the lien exists. Usually, the first recorded lien takes priority. Provided you have ordered the Spiegel & Utrera, P.A. Lenders Agreement and Promissory Note and the Spiegel & Utrera, P.A. Security Agreement, the documentation required to perfect the lien under the Uniform Commercial Code is $75, if ordered at the time of forming the business.
Avoid costly mistakes, always, always, always have any type of Contract/Lease or otherwise legally binding agreement reviewed by an Attorney BEFORE you sign it. We offer Consultations at our office and over the phone for $100. per half hour or a fraction thereof. For your convenience, you can fax us the documents that need to be reviewed and the attorney can advise you over the phone. Some of the topics you may wish to discuss include:
Real Estate Purchase Reviews: Review of purchase/sale agreements associated with the purchase of real property. Business Purchase Review: Review of purchase/sale agreements associated with the purchase or sale of a business. Commercial Lease Reviews: (including Business Spaces such as: Offices, Stores, Warehouses, and Commercial Lofts)
Our staff has many years of experience representing Tenants. Having your lease reviewed BEFORE you sign on the dotted line can save you thousands of dollars.
In our review we address issues such as:
Rentable vs. Usable Space
Reasonable Rental Rates
Free Rent
Best Length of Lease
Leasing contiguous space for expansion
Assignment and Subletting
Caps on Rent increases and expenses demanded by Landlords
Home Office Lease Agreement detailing the leasing of office space by a homeowner or tenant with a business for use as the Business's principal place of business. The typical tax savings under this agreement can exceed $1,200 – per year. The Home Office Lease is only $150 when ordering a Trademark or Servicemark registration, and as an added bonus to our clients, we draft the Lease in such a manner that it is automatically renewable.
Motor Vehicle Lease If you use your vehicle for business purposes, it is usually much more advantageous to keep the vehicle in your name and lease the vehicle to the Business. The typical tax savings under this type of arrangement ranges between $1,500 and $3,000 per tax year. We can prepare the lease for only $150 when ordering a Trademark or Servicemark registration.
Office Equipment Lease A lease which details the leasing of office equipment by a business. Once again, by leasing equipment to the Business, you create a legitimate business expense for the Business and a Tax Deduction. Typically, the tax savings under this type of arrangement can exceed $1,000 per tax year. The cost for an Office Equipment Lease is only $150 when ordering a Trademark or Servicemark registration.
Employment Agreement If you are using employees in your business, it is important to have a written Employment Agreement to document the conditions of Employment. An Employment Agreement can be very advantageous for a business and should be required for all employees, whether new or existing. It creates a clear understanding of the arrangement between the employee and the Business and provides protection for the business. The Employment Agreement also contains other important provisions:
It spells out the terms of employment, such as the duties, responsibilities and compensation of the employee.
It states that the employee will not compete against the Business for a specific period of time after leaving its employment.
It prohibits the employee from disclosing any of the Business's business records, computer data, trade secrets, methods of operation, et cetera.
It prevents the employee from soliciting customers or clients of the Business.
It prevents an employee, after leaving the Business's employment, from soliciting the Business's employees to work elsewhere.
The Employment Agreement is prepared in such a way that you can use it over and over again to avoid additional costs in the future. By having this Employment Agreement, the Business is given substantial clout in preventing an employee from joining a competitor, or competing against the Business and disclosing business secrets to anyone. The Agreement may be re-used by the Business as it hires additional employees, the cost of the Employment Agreement is just $150 when ordering a Trademark or Servicemark registration.
Independent Contractor Agreement There are many reasons for using Independent Contractors, however, simply verbally stating that a worker is an Independent Contractor is not enough according to the IRS. Certain criteria must be met. The IRS considers 11 factors in three specified areas: Behavioral Control, Financial Control and Type of Relationship. So, before you engage the services of an Independent Contractor, it is essential that you document that relationship with a written Independent Contractor's Agreement, otherwise the IRS could hold your Company and you personally liable for the Independent Contractor's Income Tax, Social Security, Medicare Tax and Federal Unemployment Tax, which should have been withheld. As a signatory on the check used to pay the Independent Contractor, you could be held personally liable for these taxes. The Independent Contractor’s Agreement also contains other important provisions:
It spells out the duties, responsibilities and compensation of the Contractor.
It states that the Contractor will not compete against the Company for a specific period of time after the project is completed.
It prohibits the Contractor from disclosing any of the Company's business records, computer data, trade secrets, methods of operation, et cetera.
It prevents the Contractor from soliciting customers or clients of the Company.
It prevents the Contractor, after leaving the Company, from stealing the Company's employees.
For a detailed explanation of the Benefits of using Independent Contractors’ Agreements, including a breakdown of the 11 factors the IRS analyzes and Industry examples provided by the IRS, please refer to document 239 of this Free Faxback Service. We can provide an Independent Contractor's Agreement that covers all the legal requirements and many business advantages for your Company for only $150 when ordering a Trademark or Servicemark registration
SHIPPING INFORMATION Trademark or Servicemark Packages generally weigh approximately 2 pounds and are available for Pick up at our office or may be shipped to you via Ground (2-3 business day) Service for a charge of $17.95 or via Overnight Delivery for a charge of $30.95. Please note, shipping and handling charges may vary.
SPEED OF SERVICE OPTIONS
NEXT BUSINESS DAY SERVICE If you need your Trademark or Servicemark urgently, for an additional $150, we will expedite the preparation of Trademark and Servicemark registration documents and the Trademark and Servicemark registration documents will be ready the next business day, after receipt of payment.
3 BUSINESS DAY SERVICE If you need to register your Trademark or Servicemark fast, we offer a 3 Business Day Service for an additional $75. We will expedite the preparation of the Trademark and Servicemark registration documents and they will be ready in 3 business days, after receipt of payment.
REGULAR SERVICE The regular processing time for Trademark or Servicemark document preparation is approximately two weeks.
Orders received after 3:30 pm will be processed the following business day.
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Nicolas Spigner, Esq.
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Joel S. Beck, Esq.
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Des Plaines, IL 60018
Toll Free: (888) 514-9800
(312) 443-1500
Fax: (312) 443-8900
Michael C. Welchko, Esq.
Managing Attorney
There are many benefits to starting a business and
incorporating. Some of the benefits of starting a business
include protection of your personal assets, ease of raising
capital, gain anonymity, available tax benefits and more!
