Obtaining A Federal Trademark Registration By Timothy B. McCormack Attorney at Law
Obtaining A Federal Trademark Registration
Filing for a federal trademark registration can be an involved and lengthy process. A complicated trademark might take up to five years or more to register. With the right planning the process can be cut down to a little as six months in some cases. Obviously, quicker turn around time results in lowered costs and increased business certainty.
Once one’s trademark application is filed, the Patent and Trademark Office will assign a Trademark Examining Attorney to review the application. If the mark passes first muster it will be published for opposition in a government publication called the “Official Trademark Gazette.” Once the mark is published anyone wishing to oppose the mark will have thirty days to do so (unless they ask for an extension).
If the Trademark Examining Attorney, on the other hand, identifies issues that need to be addressed then an “Office Action” will be issued. Some Office Actions are pro forma and others are quite substantive. The timeline for responding to an Office Action is six months. Once all outstanding Office Actions are properly addressed then the application will be published for opposition, as described above. Complicated cases can take years to resolve. Simple cases can be taken care of in as little as six months. In both simple and complicated cases, one’s federal trademark rights will be backdated to when the application was filed.
Benefits of Federal Trademark Registration
The benefits of federal trademark registration are immense. Some of the advantages are:
1. One registration covers fifty states;
2. One can use the ® symbol with one’s mark;
3. Once a federal registration is filed any common law rights being Developed by competitors are stopped dead;
4. Federal trademark registrations add value to a company’s intangible asset portfolio;
5. Tactical and substantive advantages in domain name disputes are gained;
6. One gets international priority in many foreign countries when filing for additional trademark registrations;
7. Court ordered damages can sometimes be tripled for federally registered trademarks;
8. The federal court system can be used to stop infringement of one’s marks;
9. A federal trademark registration can be entered into evidence in court to prove your trademark is valid and that you own the mark;
10. One gains potential future revenue from trademark licensing;
11. The United States Customs Service can be asked to stop goods marked with infringing trademarks from entering the United States; and
12. The registered mark will show up prominently in other people’s trademark clearance searches (including the searches conducted by the Patent and Trademark Office) making it less likely that other businesses will chose to use your mark.
A trademark can be almost anything, including words, logos, colors, and sounds. The benefits of properly protecting one’s trademark rights are huge. All businesses should protect their trademarks (advise your clients: “don’t get caught with your pants down”). In the United States federal trademark protection is the best. It is recommended that a trademark search and written opinion interpreting the same be prepared for all businesses with important trademarks.