Definition: A trademark is a legal instrument that provides its owner the exclusive right to use a logo, name, word(s), sound, design, slogan, or brand in connection with goods and/or services bearing that mark.
Some examples of well-known trademarks are the Nike Swoosh, McDonald’s Golden Arches logo, and the colorful Google logo.
If you want to prevent others from using your mark or a confusingly similar mark, you may want to consider registering for a trademark. The owner of a trademark may prevent others from making, using, selling, offering to sell, and importing goods and/or services bearing the mark or a confusingly similar mark.
Why should you consider protecting your mark?
A mark often contributes to a brand’s recognition and image. When it does, a mark can be valuable to shareholders who rely on its representation of the company. The reputation of a company can be damaged if an infringer uses your mark or a mark similar to yours because it can cause a likelihood of confusion with consumers. No one wants to be associated with another infringer’s business. Additionally, a company may lose business to the infringer attracting their customers with the mark.
How can you protect your mark? (Common Law and Federal Law)
Federal registrations are not required in the United States. By using a mark in commerce, you can establish “common law” rights without a registration. Common law is restricted to the territory where the mark is used, federal registration is nationwide. However, a federal trademark registration has many more advantages than the common law rights:
● “Legal presumption of your ownership and your exclusive right to use the mark nationwide on or in connection the goods/services listed in the registration” (1)
● Trademarks are listed on the United States Patent and Trademark Office’s (USPTO) online database
● Public recognition of your claim of ownership of the mark
● May be used to prevent importation of infringing foreign goods
● Can bring an action regarding the mark in federal court
● Can use a national registration as a basis to obtain another registration in a foreign country
● May use the federal registration symbol (R)
Note: The registration symbol TM is used when a party is actively pursuing rights to a mark and making the public aware of that fact. The ® may be used when a trademark is officially registered with the USPTO and is used on goods to put the public on notice of this registration. For more information on how a properly mark and which ones to use, stayed tuned for our upcoming symbol usage blog.
Through a process, trademarks are registered with the United States Patent and Trademark Office (USPTO).
Before investing in a trademark, decide if it is right for your mark(s).
Consider the intellectual property you are looking to protect from infringers. If this property is an invention, it is best protected by patents not trademarks. If the property is a type of creative expression, it can be protected with one or more copyrights, not a trademark. A trademark can be used when the mark is a logo, name, word(s), sound, design, slogan, or brand. The mark can only be registered if it is used in connection with goods and/or services.
Answers to Two Common Questions:
Can you trademark a domain name?
A domain name of a website, such as “mgmiller.legal” does not indicate trademark use. Unless it is used elsewhere qualifying it as a trademark, a domain name cannot be registered as a trademark with the USPTO. They can be registered with domain registrars, but are not given trademark rights. Also, domains are still subject to trademark regulations and could be accused of infringing a trademark. For more information check out the TMEP section 1215.02(a). (2)
Can you trademark a hashtag?
A hashtag can be trademarked, but the # is not included in assessing the merits of an application. The content of the hashtag must meet the standards of trademark registration. For more information check out the TMEP section 1202.18. (3)
Choose your mark and find if it is registrable with a trademark search.
Not every mark can be registered with the USPTO. After you have identified the format of your mark and the goods and/or services it will apply to, it is time for a search. It is necessary to conduct a search to see if a someone already claims trademark registration to a similar mark to yours. Law firms and other companies often offer trademark search services, including MG Miller. Do not make the mistake of paying to register before doing your research. Your mark must be distinct and unique from other trademarks to be considered ready for registration.
Before registering, you must decide the basis for filing. If you have used the mark in commerce with all of the goods and/or services, then you may file under the “use in commerce” basis. This type of file requires proof of use in commerce; generally, one provides the date the mark was first used, the first date it was used in commerce, and a specimen or proof showing its use in commerce. If you have not used the mark with all the goods and/or services, but plan to do so soon, you can file it under an “intent to use” basis. This means you have more than just an idea, but it has not yet been sold or offered yet in commerce. Filing under an “intent to use” basis requires extra forms and fees prior to registration.
Note: You may want to consider hiring a trademark attorney to help with preparing and filing the trademark application.
Next, prepare and submit the application for your mark.
This is where the process becomes more complex and hiring an attorney may be very beneficial. The best way to file an application is through the Trademark Electronic Application System (TEAS) on the USPTO’s website. There are three different online filing options:
TEAS RF: This filing option requires an email address and the authorization for the USPTO to send email correspondence. Applicant must also agree to file electronically through TEAS.
TEAS Plus: This filing option has the lowest filing fees with the strictest requirements. Applicants must fulfill all TEAS RF requirements and more.
TEAS Regular is the most expensive but allows you to file a paper (non-electronic application).
Once you have decided on the basis of filing and filed for registration, you must monitor the status of the application.
The USPTO recommends that applicants check the status of their application every 3 to 4 months (1). Three months from the filing date, an examining attorney will review the application.
Note: The registration process in entirety from filing date to completeness can take over a year.
After the examining attorney reviews the application, they may choose to respond with an Office Action.
An Office Action is a formal response refusing registration. The applicant has a window of 6 months from the mailing date to respond to the action. The examining attorney may issue a Final Office Action, which the applicant can respond to or not respond to. Not responding is the equivalent to abandoning the application. If the second response is still refused, the applicant has a chance to appeal to the Trademark Trial and Appeal Board (TTAB). If either the first or second responses are not refused, then the examining attorney will publish the mark.
Or
After the examining attorney reviews the application, they may publish the mark.
The mark will be published in the Official Gazette. After its publication, the public has 30-days to oppose the registration of the mark by filing an opposition. Without any opposition, the USPTO will issue the registration certificate if the basis of filing you used was “use in commerce.”
If you filed for “intent to use” and received no opposition, the USPTO will issue a Notice of Allowance.
A Notice of Allowance does not mean the mark is registered. In order to register the mark, the applicant must take action with the 6 months after the issuance of the NOA. Applicants can file for extensions up to 5 times, however, after the last extension, the mark will become abandoned. The applicant will need to respond with a Statement of Use proving the mark is being used in commerce in connection with the goods/services your mark was filed under. From here, the mark goes to a similar process as if was filed “use in commerce.” The Statement of Use may be approved and the mark will be registered. However, the USPTO could also file an Office Action.
A trademark must be maintained, and the trademark’s owner is responsible for enforcing their rights.
Between the 5th and 6th year from the registration date, the trademark’s owner must file maintenance documents. More maintenance documents will need to be filed on every 10 year anniversary of the registration date. The failure to file will result in your registration being abandoned and it cannot be reinstated. The only way to register it again is to go through the entire process again.
Resources
(1) https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf