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Trademark Registration Basics

Posted by attorney Derek Linke

A trademark is a unique identifier, such as a word, phrase, or design, that enables consumers to identify you as the source of the goods or services you sell in connection with that mark. In the United States, trademark protection is based on use, meaning that your trademark acquires some protections arising solely from its use in connection with your goods or services. You don't need to register to sue somebody for using your mark. However, it's a good idea to file an application with the U.S. Patent and Trademark Office (PTO) to register your mark.

Benefits of trademark registration

The primary benefit of registration is nationwide protection. Except in certain circumstances, this means that you can prevent others who have the same goods or services from using marks similar to yours in the United States. The owner of a registered mark who sues an infringer may also be able to recover damages and attorneys' fees. Finally, when your mark is registered, you may use the ® symbol to signify registration, putting potential infringers on notice that your mark is entitled to the benefits of registration.

Types of trademark registration

There are two kinds of registrations: registrations based on existing use of the trademark, and registrations based on anticipated use (known as "intent-to-use" registration). A registration based on existing use entitles the trademark owner to protection dating back to the owner's first claimed use of the mark. On the other hand, the intent-to-use registration has a first-use date of the registration filing date, regardless of the first date of actual use. That means if you file today and others begin using the same mark tomorrow for the same thing, if your application is granted, they become infringers and you can sue them.

Steps to take before registering

The following steps apply to both kinds of trademark registrations.

1. Figure out what kind of trademark you have and what the trademark is. Most trademarks consist of words, designs, or composite marks made up of a combination of words and designs. Other kinds of marks include sound, color, and scent marks-you should probably contact a trademark attorney to proceed with registering those.

2. Prepare a description of the goods and services you will offer in connection with the mark. This, in addition to being a required part of the application, will enable you to determine which trademark classes you should file your application for and how much to budget for the application. (Each class costs an additional $325; fee subject to change.)

3. Determine the identity of the trademark registrant. Is it you? Is it your company? A trademark must be used in connection with the registrant or a "related party."

4. If your mark is already in use, determine date the mark was first used.

5. Perform a trademark search. Determine whether your desired mark is already being used for similar goods or services. This step in the registration process should be performed by a trademark attorney and will save you time and money in the long run. Not performing a search or performing an inadequate search may result in your receiving a cease-and-desist letter or being the target of a lawsuit. If an attorney performs the search for you, he or she will need the information you identified in the first four steps.

There are multiple levels of searches: The U.S. Patent and Trademark Office (PTO) maintains a database of all previously registered trademarks. Internet search engines can also provide useful information. However, the safest approach is to get a thorough search report from Thomson Reuters followed by an attorney's review of that report.

Filing the Application

You can file your application online. If you are applying to register a design mark, you will also need to submit an appropriate image file, which you or your attorney can prepare. If your mark is already in use, you'll need to file a "specimen of use." If you filed an intent-to-use application, send in a specimen as soon as possible.

Then, wait for the PTO's response, which can take several months. You may receive an office action requiring a response from you before your application can proceed. In office actions, common issues raised by the PTO are likelihood of confusion (the desired trademark is too similar to another existing trademark) or descriptiveness (the desired trademark can't be a trademark because it merely describes your goods or services). There may be more than one office action. Keep responding until you get a final refusal (in which case you can appeal or abandon your application) or the PTO agrees to register your mark.

Additional resources:

U.S. Patent and Trademark Office Understanding Trademarks

Related Legal Guides:

Copyright Registration

Provisional Patent Application

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