traverselegal - May 17, 2012 - Filling out Your Trademark Application, How to Register a Trademark, Trademark Law
Trademark registration is the process by which you file an application to the USPTO, the United States Patent and Trademark Office, asking the United States government to, essentially, acknowledge and validate that the word or brand or logo that you are submitting is, in fact, considered trademark worthy under U.S. law. [scroll down for a free video on how to register my trademark. step by step instructions].
Contact a trademark registration attorney.
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
Enrico Schaefer: Trademark registration is the process by which you file an application to the USPTO, the United States Patent and Trademark Office, asking the United States government to, essentially, acknowledge and validate that the word or brand or logo that you are submitting is, in fact, considered trademark worthy under U.S. law.
So, you go through a trademark registration process which involves submitting your application, and an examining attorney from the trademark office will review your application. They may give you an office action saying we need clarification of this, that or the other thing.
After you get through that process, they will publish your trademark. If they believe that your trademark is acceptable and isn’t infringing someone else’s mark, then they will publish it for opposition for 30 days where anyone in the world could come in and oppose your trademark, rarely do they. Then, once you get through that process, if all goes well, after approximately 12 months, they will issue you a Certificate of Registration. And at that point, your trademark will go from a common law trademark to a registered trademark with the USPTO. [scroll down for a free video on how to register my trademark. step by step instructions].
Enrico Schaefer: Yes, it’s really important, Matt. The reality is that the moment you start doing business under a name or a brand or a logo and you start offering goods and services under that name, brand or logo, you have common law trademark rights (YouTube Video on Common LawTrademark Rights). What that means is without doing anything more than being in business, your brand becomes a trademark under law. But going through the trademark registration process with the United States Patent and Trademark Office and actually achieving registration is really important because you get a bunch of really good benefits from doing that.
Number one, you get a presumption under law that your trademark is valid. Number two, you put the world on notice that you’re claiming trademark rights. Number three, you get to use that little, Matt, you might know the little circle ‘R’ that you see by so many logos, that tells the world that not only are you claiming trademark rights, but that you’re registered, your trademark is registered with the USPTO.
The most important thing that you get through the trademark registration process is you get to assert statutory damages against anyone who infringes your trademark willfully. So, let’s say, you’ve got your trademark, you’ve got it registered, and all of a sudden you notice your competitor across the street starts using a really similar name. You can now send them a trademark infringement threat letter saying we want you to cease and desist, and if you don’t, you could be liable for up to $150,000 in statutory damages plus attorney’s fees.
Matt, as you might imagine, that typically gets people’s attention.
Matt Plessner: Well, great. And, now, understanding about a trademark name, it sure sounds important. Tell me, Enrico, what is the attorney’s role in all of this?
Enrico Schaefer: Well, look it, you can go ahead and try and get through the registration process with the trademark office on your own. You can use a service like Legal Zoom where they just, basically provide you what is already available online through the USPTO.gov, which is the form, the application form, or you can hire a trademark registration attorney to actually get you through the process of registration.
The attorney’s role becomes really to help the client understand what is a good trademark. So, if you’re a company or business or start-up that is trying to figure out what your brand name is going to be or what domain name you are going to pick for your company, you need to understand the difference between a generic word, a descriptive word, a suggestive word or an arbitrary trademark.
A generic word can never be trademarked. So, if I’m selling cars and I’m going to call my company ‘Cars’, I can’t have any trademark rights in that. If I want to use something like ‘The Best Cars in the World’ as my company name, well, that’s just describing my service and the quality of my service. That’s a terrible trademark. The best trademarks are suggestive or arbitrary. So, Nike is a made up word. It can only mean one company in the world and that’s Nike. That’s a really strong trademark. So, you need to understand what you’re trying to achieve under trademark law when you pick your brand. If you’ve already got your brand, then the next thing the attorney is going to do is he’s going to do an availability search to make sure that before you file your application for trademark registration, that the trademark is ‘clear’, meaning that no one else is already on file with something similar that’s going to not only potentially stop your trademark from going through; but, perhaps, even trigger a threat letter against you by that company saying you can no longer use that name.
Contact a trademark registration attorney.
So, the first thing is a trademark availability search and opinion letter. If it comes back as clear enough as a tolerable level of risk for your trademark, then you get into the trademark application process. And there’s all kinds of things within the application that you need to get right or you could really be causing yourself a problem. It does not cost that much money to hire an attorney to help you get through the trademark registration process. And a good trademark registration attorney can take you all the way from A to Z, get you through the process, get you your registration and now you’ve got a much more valuable asset, an intangible property asset, with your trademark registration.
Matt Plessner: And how long does it take to trademark a name?
Enrico Schaefer: It’s variable, but in the United States, you’re usually talking between 8 and 16 months to get through the entire trademark registration process at the USPTO.
Enrico Schaefer: There are a couple of variables, but in general, you should plan on spending something in the $1600 to $2,000 range (2-3x that with a big law firm on an hourly basis) to not only get a trademark availability search and opinion from the attorney. If the trademark comes back as clear … even if you’ve been using it for ten years, you should still get a trademark availability opinion and clearance letter from your attorney.
But if it comes back clear, then you’re going to go through the trademark registration process. So, that approximate$1600 to $2,000 is going to buy you all of that and that even includes the $300 or so registration fee with the trademark office. A very low investment for what will be a very valuable item in terms of your assets moving forward.
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
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Hi there and welcome to the Trademark Information Network’s Basic Facts Breakdown.
In this segment, we’re going to discuss the benefits of federal trademark registration, essentially asking the question of whether it’s worth it to go through the whole federal trademark registration process.
We’ll also talk about the little “R in the circle” symbol and when it’s proper to use it. By the end of this video, you’ll know why federal registration is so important and how to put people on notice that your mark is registered. Ready? Let’s get started…
The first question applicants often ask is: “Is federal registration of my mark required?” The quick answer is “No, but it will enhance your rights.” Using your trademark, in commerce, with specific goods and services, establishes legal rights in the mark, known as “common-law” rights.
Those common-law rights, however, may be limited.
Depending on your situation, those rights might only cover a limited geographic area and it might be more difficult to enforce those rights than it would be if you have a federal registration.
Federal registration, however, can greatly enhance those rights. Specifically, federal registration of your trademark on the Principal Register provides the following advantages:
One, it gives you a legal presumption of the exclusive right to use your mark nationwide on or in connection with the goods and services identified in your registration.
That’s in contrast to a state trademark registration that only gives rights within the borders of that particular state.
Federal registration will give you a presumption of rights throughout the United States and its territories.
Two, it creates a legal presumption that you are the owner of the mark. That’s a real advantage if you need to enforce your registration either in or out of court.
However, be aware that even with that legal presumption of ownership, someone else could prove that they are the rightful owner because they started using the mark before you.
This means a possibility exists that you might have to stop using your mark.
Three, it puts the public on notice that you are the owner of the mark. If there’s a question as to who owns the mark, it can be looked up in the USPTO’s online database.
And that’s the fourth benefit. Being listed in the USPTO’s database means that others considering potential marks can find your mark when they search the USPTO database to see if their mark is available.
The existence of your mark in the database can help others to avoid selecting a mark that is too similar to yours.
In addition, the USPTO relies on the same database for its own search and will find your mark when examining someone else’s application. The USPTO will cite your registration against a confusingly similar mark in a later-filed application, preventing a potentially conflicting trademark from registering.
But remember, the USPTO only searches the USPTO’s database of pending and federally registered marks. It does not search for state registrations. And it also does not search for marks that are not federally registered. Owners of unregistered marks may have superior common-law rights.
Five, a federal trademark registration gives you the ability to record your trademark with U.S. Customs and Border Protection. That agency will use your trademark registration to help prevent importation of infringing or counterfeit foreign goods.
Six, you have the right to bring legal action concerning the registered mark in federal court. Keep in mind that the USPTO cannot enforce your trademark rights or bring legal action against an infringer.
It is your legal responsibility to police your trademark and to protect it from infringement.
Only you (or your attorney) may bring legal action against others infringing your mark.
Seven, you have the ability to use your U.S. trademark registration as a basis for applying for a trademark registration in many foreign countries. It’s a great benefit when your business takes off and you become a global phenomenon…
And, eight, a federal trademark registration means that you have the right to use the coveted “R in the circle” symbol with your mark, something you cannot do unless your mark is federally registered.
That symbol is typically placed on the right side of a mark and indicates that you have federally registered your trademark with the United States Patent and Trademark Office. It puts the public on notice that your mark is registered and that you have nationwide rights in it.
Registration provides a lot of benefits and it probably explains why the USPTO has registered millions of trademarks from both domestic and foreign applicants over the years. For those applicants, the answer to the question “Should I register my mark?” was a resounding “Yes.”
As always, for more information about trademarks, feel free to explore the Trademarks section of the USPTO.GOV website. Along with other trademark related content, there is a link to the downloadable “Basic Facts About Trademarks” booklet, as well as links to the other Basic Facts Breakdown videos.