Types of Illinois Trademark Applications
The Trademark Division of the Illinois Secretary of State offers only one type of trademark application to protect a brand’s unique logos, names, and symbols. The trademark application is titled “State of Illinois Trademark or Service Mark Application” and is identified as form TM/SM-15. Entrepreneurs, businesses, and brand owners may use this trademark application to register trademarks and services marks that are currently in use in the State of Illinois. Note, the Trademark Division does not offer applicants the option to apply to register a trademark or service mark that is not in use. Rather, the Trademark Division will only accept trademark application for marks that are actually being used with goods or services in the State of Illinois.
What Is A Trademark?
Any word, name, symbol or device, or any combination thereof, used by a person to identify and distinguish the goods of the person, including a unique product from those manufactured and sold by others, and to indicate the source of the goods, even if that source is unknown.
What Is A Servicemark?
Any word, name, symbol or device, or any combination thereof, used by a person to identify and distinguish the services of one person, including a unique service, from the services of others, and to indicate the source of the services, even if that source is unknown. Title, character names used by a person, and other distinctive features of radio or television programs may be registered as servicemarks notwithstanding that they or the programs may advertise the goods of the sponsor.
When Is A Trademark Is Used In Illinois?
It is placed in any manner on the goods, in or their container, on tags or labels affixed to the goods or containers, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods in the sale or distribution thereof in this State.
When Is A Servicemark Used in Illinois?
It identifies a service, even though the service may be rendered in connection with the sale or distribution of goods of the owner of the mark, if the service identified by the mark is rendered or received in this State.
In What Circumstances Will The Trademark Application Be Rejected?
Consists of or comprises immoral, deceptive or scandalous matter; or
Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or
Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, or any simulations thereof; or
Consists of or comprises the name, signature, or portrait of any living individual, except by the individual’s written consent; or
Consists of a mark which (1) when used on or in connection with the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connection with the goods or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, or (3) is primarily merely a surname; however, nothing in this subsection shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods or services. The Secretary may accept as evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods or services, proof of continuous use thereof as a mark by the applicant in this State for the 5 years before the date on which the claim of distinctiveness is made; or
Consists of or comprises a mark which so resembles a mark registered in this State or a mark or trade name previously used by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion or mistake or to deceive.
Should I Apply For An Illinois Trademark Registration?
A trademark is a symbol, word, or phrase that is used to identify and distinguish the goods or services of one party from those of others. It serves as a guarantee of consistent quality and helps to protect consumers from confusion. Trademarks are also a valuable asset for businesses, as they encapsulate the reputation and goodwill that a company has built up in its brand. Under the Illinois Trademark Registration and Protection Act, owners of trademarks can register their trademarks to receive enhanced state legal protections.
Applying for a state trademark registration instead of a federal registration through the United States Patent and Trademark Office (USPTO) can sometimes be a strategic choice, depending on the scope and nature of the business. Here are several reasons why a business might opt for a state registration:
Local Businesses: If a business operates exclusively within one state and there is no intention to expand beyond that state, a state trademark registration may be sufficient. Federal trademarks apply nationwide and are generally more relevant for businesses operating across state lines or intending to do so.
Cost and Complexity: State trademark applications are usually less expensive and the application process is typically less complex than the federal trademark registration process. This might be a significant consideration for small businesses with limited resources.
Faster Registration Process: State trademark registration processes are often quicker than federal processes, which can take a year or more. If rapid registration is a priority, then state registration might be a better choice.
Preliminary Step to Federal Registration: Some businesses might choose to first register their trademark at the state level as a preliminary step before applying for federal registration. State registration can provide some legal protections while the business is preparing to expand and apply for federal registration.
Unregistrable at Federal Level: Some trademarks might not meet the USPTO’s requirements for registration, but could still be registered at the state level. This could be another reason to opt for state registration.
However, keep in mind that the protections afforded by state registration are geographically limited to that state. A federally registered trademark provides broader protection and has several other advantages, such as the potential for incontestability after five years, the right to use the ® symbol, and the presumption of ownership nationwide. The best course of action often depends on the specifics of the business and its future plans.
Conduct A Trademark Search Before Preparing The Illinois Trademark Application
A comprehensive state and federal trademark search is crucial before applying for an Illinois trademark registration for several reasons:
Infringement Avoidance: Trademark law is primarily concerned with avoiding consumer confusion. If a trademark is too similar to an existing one, it can confuse consumers about the source of goods or services. By conducting a comprehensive search, you can ensure that your proposed mark doesn’t infringe upon an existing registered or unregistered trademark. Infringing on another party’s trademark can lead to legal action, resulting in potential damages, and costly rebranding.
Preventing Application Rejection: Trademark offices, whether state or federal, will reject an application if the proposed mark is deemed to be too similar to an existing registered mark. Thus, a thorough search can save time and resources by preventing the submission of an application likely to be rejected.
Assessing the Strength of the Trademark: A thorough search can also help to determine the strength of your proposed trademark. A strong trademark is distinctive and easily recognizable as signifying a particular source of goods or services. The stronger the mark, the broader the scope of protection it can receive under trademark law.
Identifying Potential Opponents: Even if your trademark is registered, it can still be challenged by owners of prior marks. Conducting a comprehensive search can help identify potential opponents before you invest in the adoption and registration of a mark.
Nationwide Rights: It’s important to note that federal trademark registrations in the United States confer rights nationwide, not just in the state where the trademark owner is located. So, even if you’re applying for a state trademark registration, you must ensure that your proposed mark doesn’t infringe upon existing federal trademarks.
Business Planning: The search results can be helpful in your business planning. If similar trademarks are found, you might want to reconsider the branding strategy for your product or service to make it more distinctive.
Because of the complexities involved, businesses are encouraged to engage our trademark attorneys to conduct this comprehensive search to ensure all potential issues are identified.
How Long Does It Take To Register A Trademark In Illinois?
Once the comprehensive trademark search has been completed, it doesn’t take much time for our trademark attorneys to prepare and submit an Illinois trademark application to the Trademark Office of the Illinois Secretary of State. Additionally, compared to the federal trademark registration process which takes on average 10-14 months, the Illinois trademark registration process only takes a few weeks.
What Trademarks Should I Register?
The number of trademarks a business has can vary widely depending on the nature of the business, its size, the diversity of its product or service offerings, and its branding strategy. A small business might only have a single trademark: its brand name. On the other hand, a large corporation could have hundreds or even thousands of trademarks for its various brands, products, services, slogans, and logos.
As for which trademarks a business should register, this will also depend on several factors, but here are a few general guidelines:
Brand Name: This is typically the most important trademark for a business. The brand name is how customers recognize the company and distinguish its products or services from those of competitors.
Logos and Designs: If a business uses a specific logo or design in association with its goods or services, it might also want to register these as trademarks. A unique logo can become a key part of a company’s brand identity.
Product Names: If a company has individual product names that are distinct from the overall brand name, it may be beneficial to register these as separate trademarks.
Slogans: Catchy slogans or taglines that are used in advertising and marketing may also be eligible for trademark protection.
Distinctive Packaging or Product Design (Trade Dress): If the look of a product or its packaging (the “trade dress”) is distinctive and consumers associate it with a particular source, a company might be able to register it as a trademark. Examples might include the shape of a Coca-Cola bottle or the layout of an Apple Store.
In deciding which trademarks to register, a business should consider factors like the value of the mark to the business, the risk of confusion with other marks, and the likelihood of infringement. Cost can also be a factor, as each registration comes with filing fees and possibly attorney’s fees. It’s often a good idea to consult with a trademark attorney to develop a strategy that fits the specific needs and resources of the business.
Do You Need Trademark Registration Assistance?
Protecting your brand is crucial in today’s competitive business environment. Your trademarks are more than just symbols or words; they represent your reputation, your quality, and your commitment to your customers. Ensuring these trademarks are secure and effectively managed is a complex process that requires specialized legal expertise.
Our team of experienced attorneys understands the intricacies of trademark law and is equipped to guide you through every step of the trademark process. From assessing the registrability of a trademark, filing an application with the Illinois Secretary of State or the USPTO, to enforcing your rights against infringers, we are prepared to provide comprehensive legal support tailored to your business needs.
But our services don’t stop at securing your trademarks. We believe in a proactive approach to intellectual property management. We offer ongoing monitoring services to help safeguard your brand from potential infringements and keep you informed of relevant developments in the marketplace.
Whether you’re a start-up looking to establish your first trademark or an established business dealing with complex trademark matters, our attorneys are committed to protecting your brand and supporting your business growth.
We encourage you to reach out to us today. Let’s discuss how we can help secure your business’s most valuable asset – your brand. Your trademark matters to us because your business matters to us. Trust us with your trademark needs, and together, we can build a stronger brand for your business.