Register a Trademark
Registering a trademark is one of the most important things you as a business owner can do to protect your most valuable assets: your brand and company identity. This guide will provide you with information about the trademark registration process.
A registered trademark is essentially a source identifier which lets consumers know exactly which company provides a specific product or service. Businesses have the option of registering a trademark for several different items. It may be a phrase or slogan, a logo or drawing, or some combination of those things. Regardless of whether a trademark is a word, a drawing, or both, it should be distinctive enough to distinguish one company's goods from those of a competitor.
Because a trademark is a source identifier, it should have unique and memorable characteristics. When businesses are just starting up, they may select a name, a slogan, or an image of some sort that they would like to represent them in the marketplace. Many companies will actually choose each of these things and also combine them in several different ways. Each of these elements can be registered as separate trademarks or, if they will always be presented together, as a single trademark. As the years progress, the company's logo or slogan may be updated or changed. When this happens, the company will need to file applications for new trademark registrations to reflect these changes.
Hiring an Attorney and Trademark Search
It is often wise to enlist the services of an intellectual property attorney before attempting to register a trademark. An intellectual property attorney has access to various databases which allows them to perform a comprehensive search for other registered trademarks that may be confusingly similar to the mark being searched. The United States Patent and Trademark Office has registered literally millions of trademarks and it is important to establish as much as possible that a prospective trademark is actually available for use before an application for a trademark is filed.
The intellectual property attorney will review the trademarks revealed by their search, checking for any that might cause a likelihood of confusion with the prospective mark. They are looking for more than simply an identical name, drawing, or slogan. They must also review the list of goods and/or services upon which the registered trademark is used. For instance, a brewery may already hold a registered trademark for the word "KING." A new company that makes shoes may now also want to register a trademark for the word "KING." Despite the marks being identical, the attorney may conclude that there is no likelihood of confusion in the marketplace because there is no relation between the goods on which the marks are being used.
Once a search has adequately proven that the new company has the right to use and apply for registration of their new trademark it is time to file a trademark application. The owner of the trademark can do this themselves using the forms online at the United States Patent and Trademark Office. However, it is generally considered a good idea to have an attorney complete these forms because of their familiarity with the process. The online form requires information about the owner of the trademark, the mark itself and the goods or services on which the mark will be used. Goods and services are organized according to an international classification system that is used in most countries.
A trademark application in the United States may be filed as a use-based application or as an intent-to-use application. Filing a use-based application means that the trademark has already been used in interstate commerce and that the owner can furnish proof of this use. Filing an intent-to-use application means the mark has not yet been used in commerce, but that the owner intends to do so in the future.
USPTO Review, Office Action, and Publishing of Trademark
After the application is filed it will be examined by an attorney in the United States Patent and Trademark Office. If the examining attorney at the USPTO discovers some kind of irregularity in a trademark application, or believes that the mark applied for is confusingly similar to another already registered mark, they will issue a document called an office action. This is another point in the registration process where an attorney is indispensable as they can respond to legal arguments more easily than can a person without legal training.
Once any issues brought forth, the attorney assists with responding to the office action. Once published, a thirty day period will commence in which any member of the public may oppose registration of the new mark. An individual or business might oppose a potential mark, for example, if they believe it is too similar to their own trademark. If no opposition is filed, the trademark application will be allowed. If the mark is in use and this use has been demonstrated, a registration certificate will be issued. If use has not yet occurred, the owner of the mark will have three years in which they must provide proof that the mark is being used.
Nearly all processes necessary to obtain and maintain a trademark registration in the United States can be performed online. From filing the application to submitting renewals of registrations at ten year intervals, there is no need to mail paperwork to the USPTO. Their user-friendly website makes it a relatively simple task for trademark owners to pay renewals without the assistance of an attorney if that is their choice. However, most trademark owners choose to have the assistance of an attorney who can advise them of their options and remind them of upcoming deadlines.
Registering a trademark is an important step for businesses. It allows them to protect the goodwill their company has built over the years and gives them the right to prevent others from attempting to benefit from their solid reputation.