Trademarks are an important way to protect your business, but are often confused with two other types of intellectual property protection: copyrights and patents.
Trademarks typically protect brand names, logos, symbols and slogans that companies use to promote their goods and services. Copyrights typically protect original literary and artistic works such as novels, movies, songs, artwork and photographs. Patents protect inventions. Unlike copyrights and patents, trademarks focus on whether a consumer would be confused about the source of goods or services by someone else's use of a similar mark.
Benefits of Federal Trademark Registration
When you register a trademark with the U.S. Patent and Trademark Office (USPTO), you receive the strongest possible protection for your trademark. The benefits of registering with the USPTO, as opposed to registering in an individual state, include:
Nationwide trademark protection
Public record of your trademark ownership
The right to file a lawsuit in federal court to enforce your trademark
Only registered trademark holders can use the ® symbol on their goods and services (the use of ™ does not mean the mark is registered, only that someone is claiming rights to a mark)
USPTO registration can be used to apply for foreign trademark protection
Can also register mark with the U.S. Customs Office to stop the importing of infringing goods
The Trademark Registration Process
Trademark Search. A trademark search identifies existing trademarks that may prevent you from registering your mark. A thorough trademark search also checks both federal and state trademarks, but doesn't stop there. Because individuals may have certain common law rights in trademarks, it is important to also check to see what names, logos, symbols or slogans are in use by looking at registered company names, domain names, and web content. A comprehensive search saves time and money by reducing the chance that you may be infringing on someone else's trademark or that your trademark application will be denied. Because comprehensive search results can run into the hundreds of pages, it is helpful to have a trademark attorney interpret those results and determine if there is a risk to proceeding with the desired trademark.
Trademark Application. Federal trademark applications can be filed online through the USPTO website. The application requires the applicant to provide information about the mark and the way in which it is being used or planning to be used. Trademarks are filed pursuant to classes of goods and services. (There are an estimated 80,000 products and services that have been classified into one of these group codes.) There is also a non-refundable filing fee due at the time of filing the registration application.
USPTO Review. After the filing of a trademark application, it is reviewed by the USPTO. After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. A complete review includes a search for conflicting marks and an examination the written application, the drawing, and any specimen.
Office Action. If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (known as an "Office Action") explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If the examining attorney sends an Office Action, the applicant must respond to the Office Action within six (6) months of the mailing date, or the application will be declared abandoned.
Publication and Opposition. After all potential issues have been resolved, information about your trademark will be published in the USPTO's Official Gazette, and people have an opportunity to file oppositions.
Statement of Use (SOU). If you had not started using your mark at the time of your trademark application, there is one more step for you to complete. You must begin using your trademark and file a Statement of Use before your registration can be given final approval.
Registration Certificate. Within approximately two (2) months after the SOU is approved, the USPTO issues a registration.
Protecting Your Trademark
After your trademark is registered, you are responsible for enforcing it because the USPTO does not "police" the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.
You are also responsible for filing maintenance documents with the USPTO every 5-10 years to keep the trademark "live." Failure to make these required filings will result in cancellation and/or expiration of the registration. If your registration is cancelled or expired, your only option is to file a brand new application and begin the entire process again from the very beginning.
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