In this blog, the author discusses trademark registration. This post is the second installment in a six-part series on essential brand protection strategies.
Trademark registration is a critical strategy for brand protection. Businesses can protect a current or planned use of a trademark by registering the mark with the United States Patent and Trademark Office (USPTO). Businesses can also register a trademark on the state level if the circumstances do not warrant federal registration.
Benefits of Federal Registration
Common law (meaning unregistered) use of a trademark will only provide protection in the geographic area in which the trademark is used. Generally, this is the city, county, or other local area in which the business operates.
Federal trademark registration, on the other hand, provides substantial benefits, including:
- Exclusive Rights. The owner of a federally registered trademark has the exclusive right to use the registered mark in connection with the classes of goods or services for which it is registered throughout the U.S.
- Application will be first in line, if you apply for federal registration before a senior common law user of the mark files their own federal application. This means the senior user/later filer must wait for the outcome of your application before it will be considered. If you obtain your registration first, a senior user would be relegated to opposing your application or cancelling it, assuming valid grounds would exist for doing so.
- Incontestability. A federally registered trademark becomes “incontestable” after five years of exclusive and continuous use, meaning that its validity and ownership cannot be challenged in court proceedings.
- Serves as a Powerful Deterrent Against Potential Infringers and Counterfeiters.
- The USPTO will deny trademark applications for confusingly similar marks filed after your trademark application.
- Federal trademark registration provides a legal presumption of ownership and your right to use the mark.
- The ® symbol can only be used for a federally registered trademark.
- Federal trademark registration provides notice to the public of ownership and use of a mark via the USPTO’s trademark database.
- You can file an infringement lawsuit in federal court, and the Lanham Act provides for statutory damages. In some instances, it provides treble damages for infringement.
- A federally registered trademark can be filed with the U.S. Customs and Border Protection. This agency is tasked with seizing counterfeit goods entering the U.S.
- Online Retailer Requirements. Some online retail platforms, such as Amazon Brand Registry, require proof of federal registration or a pending federal application to use their services.
- Foreign Registration. A federal registration provides a basis for filing for trademark protection in foreign countries, including those that are party to the Madrid Protocol.
The Federal Application and Registration Process
During this process, there are numerous issues to consider, including:
Should you apply for a word mark or design mark?
In the federal trademark application process, you must first determine whether you are applying for a standard character mark or a design mark.
A standard character mark (“word mark”) consists of words, letters and numbers (or a combination thereof). It typically provides the most protection because it protects the standard characters that are registered no matter how they are displayed. This includes font, color, size and other stylizations.
A design mark includes or consists of a design element that may include words that are part of the design, such as a logo, image, or graphic. However, once a design mark is registered, it only provides protection for the exact design mark submitted. Subsequent changes to the design, image, display of any words, or logo deemed by the USPTO to be material are not afforded protection.
Determining the correct class of goods and services.
It is important to select the correct class(es) of goods or services for your trademark. Failure to apply for the correct class(es) of goods and services can cause delays and other issues with your application, prevent registration, and even cause problems with subsequent enforcement measures after registration.
What is and how do you satisfy the “use in commerce” requirement?
You can only obtain a federal trademark registration if you provide proof to the USPTO that you have used the trademark “in commerce.” This “use in commerce” requirement is an intrastate requirement that involves providing the services or goods for sale under the trademark to customers in another state.
Failure to understand the “use in commerce” requirement and its nuances can lead to numerous problems with, and sometimes denial of, your application. It can also lead to other significant problems if the validity of your mark is challenged in subsequent litigation or proceedings before the Trademark Trial and Appeal Board (TTAB) based on failure to use the mark in commerce.
What is a trademark specimen and date of “first use” in commerce?
A specimen is an example of actual use of the mark “in commerce.” Specimens vary depending on the circumstances. For example, some specimens might consist of a photo of the product or goods at issue bearing the trademark as offered for sale to the public “in commerce.” For services, a specimen might include a link to the businesses’ website. In order to obtain registration, a specimen is required to be submitted along with an affirmation under oath by the applicant of the date of first use of the trademark “in commerce.” It is important to select an appropriate specimen and accurate “first use” date. If an appropriate specimen is not provided, then an examining attorney will issue an Office Action. If an inaccurate date is provided, this can cause potential application issues and enforcement issues after registration. Among other things, it can open the door to future cancellation.
Should you file an “intent-to-use” or “actual use” application?
The type of application to file with the USPTO depends on whether you have already used or plan to use the trademark in commerce.
An “intent-to-use” application is filed if the mark has not been used in commerce yet, but there is a bona fide or good faith intent to use it. An “actual use” or “in use” application is filed if the mark has been used in commerce.
One significant benefit of an intent-to-use application is that the filing date serves as the date of first use of the mark if a registration is eventually obtained.
Because using the mark “in commerce” is a pre-requisite to obtain a federal registration, however, an “intent to use” application requires additional steps, including filing a Statement of Use to obtain registration.
Understanding the distinction between the application options and when to use them is important. An improper filing can lead to subsequent trademark challenges, failure to obtain a registration, and cancellation.
The application examination process and timeline.
Once an application is filed, it will be assigned to a USPTO trademark examining attorney. The examiner reviews the application for deficiencies as well as the USPTO trademark database for prior mark filings that might be considered confusingly similar.
If the examiner finds confusingly similar marks or other issues with the application, they will issue an Office Action to which the applicant must respond within a certain time or risk cancellation of its application.
If the examiner does not find any confusingly similar marks or other issues, then the mark will be published to the USPTO Official Gazette, following an opposition period in which any party may file a proceeding to oppose the registration. If no opposition is filed, and assuming no other issues have arisen, the examiner will eventually issue a registration.
The federal registration process can take a year or longer, and each step of the process can take months. The USPTO provides on its website tables that show the average wait times for new applications and each stage of the examination or registration process here.
Given the long lead time for obtaining a federal trademark registration, it is prudent to obtain expert advice on the application process before filing. This ensures the process will move forward as efficiently as possible.
Benefits of State Registration
To obtain a registered mark at the state level, an application must be filed with the specific state in which you seek protection. For example, in Georgia, this is accomplished by filing with the Georgia Secretary of State’s Office. More information regarding obtaining a registration from the State of Georgia can be found here.
Even though state registration is not required and only offers a limited scope of protection, it can still benefit a mark owner in certain circumstances. For example, consider the following:
- A state registration provides notice to the public, including potential infringers, of the mark and provides notice of the official application filing date if the mark is challenged in court.
- Certain states have trademark laws that afford state-specific protection and enforcement mechanisms.
- It is less expensive and time consuming to obtain a state registration.
Drawbacks of State Registration
The drawbacks of state registration include:
- Protection is very limited; a state trademark registration creates rights only in the state in which it is registered.
- Intent-to-use applications are not allowed at the state level.
- It is not suitable for businesses that intend to sell goods or offer services across state lines.
As an attorney that focuses on trademarks and brand protection, I regularly prepare and provide strategic advice on trademark applications and registration, and all other aspects of trademark prosecution. I also handle trademark litigation in federal and state courts and proceedings before the Trademark Trial and Appeal Board (TTAB).
Please reach out to me if you would like legal assistance and advice in any of these areas.
In the next installment of this series, the author will discuss the benefits of trade name registration.
Notice: This content is for informational purposes only and does not constitute legal advice. You should not rely upon this information for any purpose without seeking legal advice from a licensed attorney familiar with your particular facts and legal issues.