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Trademark 101 Part 3: 

How and Why to Register a Trademark

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These flow charts might be helpful in understand the trademark application and registration process.

Your business’s identity is one of its most valuable assets. You invest a lot in developing the brands that represent your company and your products to the world, whether it be product names, logos, taglines, or other identifiers – otherwise known as your trademarks.

To fully protect your investment, you must proactively take certain steps. The first step to protecting your trademarks is to register them. You should also be sure to use your trademarks correctly and to protect against others who infringe your trademark or use it in a generic manner.

The simple answer is: Registration increases the value of your brand. When you register your trademark with the U.S. Patent & Trademark Office (“PTO”), you obtain the rights to use your trademark across the entire U.S, with carve-outs for any pre-existing conflicting common-law uses (uses of unregistered trademarks). Registration also enhances your ability to protect your trademark against infringements and may entitle you to greater damages and attorneys’ fees.

Federal registration:

  • Serves as evidence of the validity of the mark, your exclusive ownership of it, and your exclusive right to use the mark.
  • Provides constructive notice nationwide of your ownership of the mark as of the registration date, preventing others from claiming unknowing “good faith” use of an infringing mark.
  • Grants the right to sue for infringement in federal court and, in some cases, to obtain treble damages and attorneys’ fees.
  • Entitles you to statutory damages in cases of counterfeiting.
  • If you record the registration with U.S. Customs and Border Protection, empowers U.S. Customs to block importation of counterfeits or goods bearing infringements of the mark.
  • Can serve as the basis for registering the trademark in other countries.

A state registration (appropriate when you’re using your trademark in only one state) gives you rights to use your trademark throughout the entire state (again, with carve-outs for any pre-existing conflicting common-law uses) and provides some but not all of the benefits of a federal registration.

The short answer is: Yes. The trademark application/registration process is complicated, time-consuming, and lengthy. If you get it wrong, not only do you lose the time and effort you spent and the filing fees you paid, but you also risk weakening – or even losing – any rights you might have in the mark.

An experienced trademark attorney can help prevent wasted time and money, handle the complicated parts for you, and provide invaluable advice regarding how to strengthen your trademark rights by registration and more.

Ideally, you should file an application before you start using the mark, but after you’ve had searches conducted to determine that your mark will not infringe someone else’s.

A trademark cannot be registered until the mark is in use in “interstate commerce” (offering the goods/services for sale across state lines), but you may file an application before you begin using the mark, so long as you have a bona fide intent to use the mark. This is called an “intent-to-use” application. (An application for a trademark that is currently in use in interstate commerce is a “use-based” application.) Registration will not issue until use in interstate commerce has begun.

In any application for trademark registration, the applicant must describe the goods and/or services with which the mark will be used. This is not always as simple as it sounds, especially in cases of services rather than tangible goods, and for technology-oriented goods or services. Your attorney will work with you to hone a description that gives you the broadest rights possible and will be acceptable to the PTO.

Once you’ve done this, your attorney will determine how to classify your description. The PTO requires that this description be broken into categories called “International Classes” (because this is an international classification system). Your fees will be based on the number of classes in which you are claiming goods/services.

In addition, your attorney will need to know:

  • The legal name and state of incorporation of the entity owning the trademark (or if an individual, the name and state of domicile)
  • The mailing address for the entity or individual
  • For each Class, the date you first began using the mark anywhere in association with all of the goods/services you are claiming
  • For each Class, the date you first began using the mark in interstate commerce in association with all of the goods/services you are claiming

If you are filing a use-based application, your attorney will also need a specimen of use for each Class of goods/services. See What Makes a Good Specimen of Use? for more information.

Our law firm charges flat fees for most of our trademark application and registration work. Nonetheless, the total cost for preparing and filing a trademark application and seeing it through to registration depends on many factors. Contact us to discuss your specific situation and needs, at which point we can determine and explain the costs.

This flow chart may help in understanding the application and registration process explained below.

Examination

The PTO will examine your trademark application for both minor and non-substantive issues, like the wording in your goods/services description, and substantive issues, such as whether the PTO thinks your trademark infringes the rights of a registered trademark or an existing application. This process typically takes 2-4 months.

If the PTO has a problem with your trademark application, it will inform your attorney in an “Office Action.” You will have 6 months to respond to the Office Action to make any corrections or to present your arguments to the PTO.

Publication

If the PTO does not find any problems with your application, or if you receive an Office Action and overcome all objections, the application will then be “published” in the PTO Official Gazette. This puts the public on notice that you intend to register your mark and gives anyone who believes their rights will be harmed by such registration 30 days to oppose your application. This usually does not happen (especially if you’ve been diligent about researching the “availability” of your mark before filing an application).

Registration or Statement of Use

Assuming no oppositions are filed, or you have resolved any that are, a use-based application will then proceed to registration.

If you have filed an intent-to-use application, you will be given 6 months to begin using the mark in interstate commerce for all of the goods/services claimed in your application and to submit a declaration of such use and a specimen of use.

If you have not begun interstate commerce use by that deadline, you may extend the deadline by an additional 6 months. You may request up to 5 such extensions.

Your rights in your trademark depend on your continued use of the trademark for the goods/services claimed in your registration. You will likely lose the right to claim the trademark for any goods/services for which you stop using it.

You must also meet certain formalities to maintain your federal registration:

  • Between 5 and 6 years from the registration date, you must file a Declaration of Continued Use (“Section 8”) of the mark, accompanied by a specimen of use.
  • At the same time, you may file a Declaration of Incontestability (“Section 15”), which provides increased protection of the mark in cases of certain types of challenges.
  • Every 10 years, you must file a Combined Declaration of Use and Application for Renewal (“Sections 8 & 9”), accompanied by a specimen of use, with the first being filed between 9 and 10 years after the registration date, and subsequent filings during the same time frame as each decade anniversary of registration approaches.
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Since 2001, our team has helped clients safely use and protect their company names, brands, logos, and taglines. We have represented:

  • Family-owned businesses
  • Entrepreneurs and individuals
  • International companies
  • Educational institutions

Our clients come from a range of industries, including

  • Restaurants
  • Brick-and-mortar retailers
  • Online retailers
  • Manufacturers
  • Consultants and other service providers
  • Software and video-game companies

We appreciate that each client’s needs, goals, and resources are unique, and we work with each client to assist them in choosing the options that are right for them.

Among other things, we help our clients:

  • Vet the trademarks and other identifiers they want to use and assess any risks in using them
  • Strategize and secure the optimum protection available for the client’s trademarks
  • Stop others from infringing the client’s trademarks
  • Defend against charges of infringement
  • Negotiate co-existence and licensing agreements when necessary to protect the client’s rights

In one brief, free phone call, we will:

  • Explore your situation and discuss your goals
  • Point out any risks you may face
  • Identify the options available to you
  • Discuss the pros and cons of those options
  • Help you make the decisions that are best for your business

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  • You gain trademark rights simply by using a trademark. Registering your trademark with the Patent and Trademark Office broadens your rights, but it’s not a requirement to obtaining rights.
  • Therefore, not finding the mark you want to use in the Patent & Trademark Office database doesn’t mean your mark is safe to use; if someone else is already using it (or a mark similar to yours), they may be able to prevent your use, even without a registration.
  • Minor variations in someone else’s trademark probably aren’t enough to keep you from infringing on their mark.
  • It is difficult, and may be impossible, to protect a trademark that describes your product.
  • Failing to find a particular trademark with a Google search doesn’t necessarily mean it’s safe for you to use the mark.
  • Registering your company name with the Secretary of State does not ensure your right to use the company name as a brand or trademark (or to prevent others from doing so).
  • Registering a domain name does not give you the right to use that name as a brand or trademark (or to prevent others from doing so).
  • Registering your trademarks does give you much broader and stronger rights in them.

Gretchen McCord advises our company on global matters of trademark strategy, registration, disputes, and negotiations, with a focus on litigation avoidance. Gretchen has consistently demonstrated mastery of her practice of law in these areas and has been artful and successful in resolving matters ranging from addressing investor representations and warranties to resolving international trademark disputes. Additionally, Gretchen delivers real value for the price, not just because she competes by charging rates below those of large law-firms, but because interacting with Gretchen is fast, easy and reliable, thereby reducing her billable time (the primary cost of engaging legal counsel).

Zachary Lynde, CFO, Factom, Inc.

Resources

U.S. Patent and Trademark Office (“USPTO”)

Trademark Electronic Search System (USPTO database)

Trademark Application Process

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Contact Gretchen today to schedule a free
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254.218.4201 contact@gretchenmccordlaw.com