How Do You Register a Trademark?
Before selecting a mark, it is wise to conduct a trademark search to see how, if at all, similar words, symbols, or phrases are being used. While a search is not required, conducting one can help you decide whether your mark is protectable and determine the strength of your mark. Although a preliminary trademark search is fairly simple since the United States Patent and Trademark Office (USPTO) has a searchable database, searching has its limits. Not all trademarks will appear in the USPTO trademark database because not all are federally registered. Further, not everyone will agree on whether a mark is different enough from an existing trademark to avoid infringement.
Unlike patents, trademarks do not have to be registered in order to be protected. Trademark rights arise through use – displaying the mark on a product or packaging that is sold in the ordinary course of business or used in connection with performing a service. This sort of use is called “use in commerce.” However, federal registration has several benefits including:
- Right to sue in federal court
- Right to block counterfeit imports
- Entitlement to statutory damages in counterfeiting cases
- Nationwide, as opposed to territorial, rights of use
- Nationwide notice of ownership
- Right to use the ® symbol
- Evidence of ownership and validity of the trademark
- Publication of the trademark in the searchable USPTO database
- Basis for USPTO to refuse confusingly similar marks
- Basis for foreign trademark registrations
To obtain a federal trademark registration with the USPTO, applicants must first decide on a filing basis. Both use-based and intent-to-use applications are available. Applicants based outside of the United States may also file applications based on ownership of a pending foreign application or a foreign registration. Regardless of the filing basis, foreign applicants must be represented by an attorney who is licenses to practice law in the United States. An application typically requires the following information:
- The trademark
- Identification of the goods or services associated with the mark
- Owner information
- A specimen showing the mark as it is actually used in U.S. commerce with the goods or services (This is submitted with an use-based application at the time of filing, but may be submitted at a later date for an intent-to-use application.)
Once the USPTO has determined that the application meets the minimum filing requirements, the application is assigned to an examining attorney. This may take several months. The examining attorney then reviews the application to determine whether or not it complies with all applicable rules and statutes and raises any issues he or she may find. These issues may include conflicts with prior registrations or applications, descriptiveness or other bars to registration, or the wording used in the identification of goods or services. If the examining attorney refuses the application, the applicant has 6 months to respond to the office action with legal arguments as to why the examining attorney is incorrect or amend the application to comply with the examining attorney’s guidelines. If the examining attorney approves the application, it is published in the “Official Gazette.” Any party who believes it may be damaged by registration of the mark then has 30 days to file either an opposition to registration or an extension of time to oppose. If no opposition is filed or if the opposition is unsuccessful, and a statement of use has been submitted for intent-to-use applications, the USPTO issues a registration, which is renewable every 10 years as long as the registrant continues to use the mark in U.S. commerce.