In the second part of his series on trademarks, attorney Ben Pollock tackles the whys and hows of going about registering your trademark. From the general differences between registered and unregistered marks, to creating a strong trademark for your goods/services, Ben walks us through the steps of ensuring a trademark that best suits your business needs. So if you’re on the fence about whether or not trademarking is for you, Ben offers some valuable insight into the process. (Be sure to check out the first post in the series right here!) –Stephanie
Read the full post after the jump…
Last month we learned about what a trademark is and why it is so valuable. For the second part in this series, I want to talk about the why and how of trademark registration.
Why Register My Mark?
While one can establish rights in a mark simply by using it, registration of a mark offers several benefits that are well worth the effort:
- Priority use of the mark within only the precise geographic region in which you operate.
- Ability to enforce your mark only in state court (subjecting you to the varying laws of each state).
- No public notice of your ownership in the mark.
- Use of the “TM” symbol with your mark.
- Damages for mark infringement vary from state to state.
- You must prove your ownership in court if you want to enforce your rights.
Federally Registered Trademarks
- Priority use of the mark throughout the entire country.
- Ability to enforce your mark in federal court (giving access to uniform laws to ensure protection).
- Public notice of your ownership in the mark.
- Use of the federal registration “®” symbol.
- Damages from mark infringement may be tripled and may include attorney’s fees in federal court.
- Ownership of your mark is automatically presumed, saving you time and legal fees.
In the end, all the benefits of registration serve two main purposes: 1) lay claim to your mark so no one else can use it anywhere in the country, and 2) enhance and potentially simplify your ability to protect your rights should someone infringe them.
How Do I Register My Mark?
Do you need to hire an attorney? Because I am obviously biased on this subject, I will refer you to the USPTO’s website for information on what benefits, if any, an attorney can provide in the registration process: 1) “Do I Need a Trademark Attorney?”; and 2) “What a Private Attorney Could Do to Help Avoid Potential Pitfalls.”
Ok, now that you’ve visited those pages and read up on attorneys, I have a few pieces of advice that I think everyone needs to know when going into the registration process, whether you have an attorney or not.
Make Sure Your Trademark Is Strong
In my last post I discussed what makes a mark strong. You can find it HERE.
Decide What Goods/Services Your Mark is Associated With
A mark is not registered by itself. Rather, it is registered in connection with the goods and services it is associated with in the marketplace. One of the first things your attorney will want is a list of those goods and services. And you have to be specific. “Gifts,” “decorations,” “accessories,” and “stationery” are not good words to use. Anything can be a gift, decoration or accessory, and stationery is wide ranging as well. Instead make a list such as “greeting cards, wedding invitations, gift wrap, art prints, and custom rubber stamps.”
All goods and services are classified into one of 45 “International Classes.” And depending on the goods and services associated with your mark, your attorney will be able to determine which class(es) your mark falls under.
Have A Trademark Search Completed
Though trademark research (or a “search”) is not required for registration, most savvy business owners see it as an indispensable part of the process. Depending on the extent of the search that you order, a trademark professional can search through millions upon millions of marks, registered at the federal, state and international levels, and even those that are not registered at all.
The purpose of this search is two-fold: 1) determine whether your mark is available for registration, and 2) determine the potential strength of your mark in the marketplace.
Your Trademark Must Be In Use
To be eligible for registration, the law requires that the trademark be in use in connection with the goods and services you are claiming on the application. These are the same goods and services discussed in point number 2 above. Even though you can’t register your trademark before it’s in use, I would highly recommend that you have the trademark search done before you put it into use to help determine if it needs to be changed before you spend time and money marketing a brand that someone else owns.
What Else To Expect
While a trademark attorney can make the application filing process quick and painless, you won’t have any such luck once the USPTO gets the application. Though they are generally easy to work with, quick is the last word you’d use to describe them. From the day the application is filed, it will be about three months before it is even looked at, and a total of about 8 months before your mark is registered, if everything goes smoothly.
And please, please, please remember that the rules I laid out above are very general in nature and are intended only to give you a basic background on these issues. This is not actual legal advice for your situation. If you would like advice that fits your situation, you can find me at www.juniperlawfirm.com.