Category: Trademarks

You are not required to file a trademark application for registration with the US Trademark Office in order to have trademark rights. But there are advantages of federal trademark registration, including:

Others cannot register a mark that is confusingly similar to your mark.

A trademark registration is constructive notice of your claim of ownership in your mark.

A trademark registration is a legal presumption of your exclusive right to use the mark nationwide.

A trademark registration is a basis for registering your mark in foreign countries.

A trademark registration allows the trademark owner to bring an infringement action in Federal Court.

A trademark registration allows the trademark owner to file with U.S. Customs to prevent others from importing infringing foreign goods.

A trademark registration allows you to use the encircled-R notation ® after the mark is registered.

Unfortunately, individuals and small businesses often try to save some money and apply for their own trademark application. Then they end up calling a trademark attorney because someone opposes registration of their trademark.

This situation may arise even if the US Trademark Office initially approves your trademark application, because your trademark is published for opposition before the US Trademark Office will register your trademark. During the opposition period, anyone can oppose registration of your trademark if they believe that they will be harmed by the US Trademark Office granting a trademark registration for your trademark.

One reason someone may oppose your trademark is if the opposer believes that your trademark is merely descriptive, or even a generic term, that anyone should be allowed to use in commerce. The opposer might argue that they will be harmed if the US Trademark Office grants your trademark registration, because they, and others would no longer be allowed to use those words to fairly describe their products or services.

Another reason someone may oppose your trademark is if the opposer believes that they have been using the trademark as their own before you started using your trademark. Therefore, the opposer may argue that they have priority and are entitled to use the trademark instead of you.

Another reason someone may oppose your trademark is if the opposer believes that your trademark is the same as, or confusingly similar to their own trademark. Someone may argue that your trademark is confusingly similar to their own trademark even if your trademark is spelled differently. For example, EXTREME is virtually indistinguishable from X-TREME.

Of course, these are merely allegations until proven otherwise. Therefore, you may be able to prevail and have your trademark registered. But it is best to work with an experienced trademark attorney who can help you navigate the opposition proceedings so that you don’t end up losing rights to your trademark for missing a deadline or making an inadequate argument.

Trademark rights are not established simply by filing a trademark application with the US Trademark Office. Trademark rights can only be established by using your mark (words, design, or logo) in a consistent manner to identify goods or services in commerce. In fact, you cannot even file a federal trademark application unless you are already using your mark as a trademark in interstate commerce, or have a bona fide intent to use your mark as a trademark in interstate commerce (typically within about six (6) months of filing the trademark application).

So you can’t just file trademark applications to “reserve” a mark that you might want to start using sometime in the next five (5) years. You can, however, take the following approach:

1. Do a trademark availability search. A trademark availability search will give you some idea whether the mark you want to use is already being used by someone else for the same or similar goods or services. A good place to start is with the big Internet search engines (Google, Yahoo, Bing). And don’t forget to check the US Trademark Office databases. If you find others using your mark or similar marks for your product or service (or similar products and services), then you can pick another mark. At least you found out before you started your branding campaign and didn’t have to receive a cease and desist letter from the other trademark owner.

2. Discuss your proposed trademark with an attorney. If you think the mark you have chosen is available, consult a trademark attorney. A trademark attorney can tell you whether your mark is a strong mark or a weak mark. A trademark attorney can help you determine whether you might run into trouble when trying to register your trademark with the US Trademark Office. A trademark attorney can also tell you whether you run the risk of having another trademark owner stop you from using your mark because it is too similar to their own trademark.

3. File a trademark registration application with the US Trademark Office. Hopefully you haven’t started using your trademark yet. Once you know that you plan to use your mark as a trademark in interstate commerce within the next several months, you can file what is called an Intent-To-Use (ITU) trademark application with the US Trademark Office.

If you have already started using your mark as a trademark in interstate commerce, you can file an actual use trademark application with the US Trademark Office.

Here again, it is a good idea to speak with a trademark attorney and have the trademark attorney file your trademark registration application with the US Trademark Office so that you don’t make any mistakes that could come back to haunt you.

Only after taking these steps should you start your branding campaign . . . printing business cards, brochures, and other literature, buying advertising, labeling your product, and so forth. Otherwise, you may be forced to stop using your mark and start all over . . . which can be costly. Not to mention, you lose any goodwill that you may have already started to establish with your customers.