Trademark Registration: An Overview

Trademark Registration: An Overview

by Jane Haskins, Esq., April 2017

 

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Trademarks protect your business name and strengthen your brand identity. When you register your trademark with the U.S. Patent and Trademark Office, you gain valuable rights, but the registration process takes some time and energy. Thankfully, there is plenty of help available to get you through the process.

To successfully register a trademark, make sure you understand the requirements, submit an accurate application, respond promptly to issues, and get help. It's a long process, but it's worth the effort.

What Does a Trademark Protect?

Trademarks are often confused with two other types of intellectual property protection: copyrights and patents. Trademarks typically protect brand names, logos, symbols and slogans that companies use on their goods and services. Patents typically protect inventions. Copyrights typically protect original literary and artistic works such as novels, movies, songs, photographs and artwork.

Unlike the other two types of intellectual property protection, trademarks focus on whether a consumer would be confused about the source of goods or services by someone else's use of a similar mark. This makes a registered trademark a powerful weapon against counterfeit goods or competitors trying to confuse the public or make money off of your good name.

Benefits of Federal Trademark Registration

When you register a trademark with the USPTO, you receive the strongest possible protection for your trademark. Benefits include:

  • Nationwide trademark protection.
  • A public record of your trademark ownership.
  • The right to file a lawsuit in federal court to enforce your trademark.
  • U.S. registration can be used to apply for foreign trademark protection.
  • You can register your trademark with the U.S. Customs Office to stop the importation of infringing goods.
  • Only registered trademark holders can use the ® symbol on their goods or services.

Registering a Trademark: What's Involved?

Federal trademark registration involves much more than just filling out a form and waiting for approval. Many people need help along the way, but with good advice they find the process relatively straightforward.

  • Trademark search. A trademark search identifies existing trademarks that might prevent you from registering yours. A search saves time and money by reducing the chance that your trademark application will be denied. It also helps you avoid infringing someone else's trademark. You can try to do a search yourself or you can enlist a professional to perform a comprehensive search for you. You may need an attorney's help to interpret the results and evaluate any potential problems.
  • Trademark application. Trademark applications are accepted online through the USPTO website, or you can have a trademark registration service prepare the application and submit it for you. You must provide information about your mark and the way you are using it (or are planning to use it). You must also pay a filing fee that is not refundable if your application is denied.
  • Office actions. If the USPTO finds problems with your application, you may receive a letter known as an Office action. You must respond promptly to the issues identified in the Office action or you risk having your application denied. Many people find they need legal assistance when confronted with an Office action.
  • Publication and oppositions. When all issues have been resolved, information about your trademark will be published in the USPTO's Official Gazette, and people have an opportunity to file oppositions. These can get highly technical and you should seek legal advice if someone opposes your trademark.
  • Statement of Use (SOU). If you hadn't started using your trademark when you filed your application, you have an additional step to complete. You must begin using your trademark and file a Statement of Use before your registration can be given final approval.

Other Types of Trademark Protection

State trademark registration protects your trademark only within your state. Simply by using your trademark, you may have common law rights, but those rights provide limited protection and lack the enforcement and deterrent features of federally registered trademarks.

Protecting Your Mark

After your trademark is registered, you are responsible for enforcing it and filing maintenance documents every 5-10 years. Be sure to monitor other trademark applications, keep an eye out for infringers, and act quickly to assert your rights.