Intellectual Property
Are you searching for a way to distinguish your business and protect the essence of what makes your company unique? Federal or state trademark registrationcan be an excellent choice for entrepreneurs looking to leverage brand recognition and reputation. This posts outlines the basics of trademark and benefits of trademark registration foryour trademark.
What Is A Trademark Or Service Mark?
If you’re looking for an authoritative definition, the United States Patent and Trademark Office (USPTO) is happy to oblige:
A trademark is generally a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.
While most trademarks or service marks fall within that definition, legal protection can also extend to audible signs, color schemes, fragrances and anything else that properly serves as an identifying feature for a product or service. However, domain names and web addresses do not qualify as trademarks and can not be registered.
A trademark may be owned by an individual or any type of legal entity, such as a corporation or an LLC.
To apply for a trademark or service mark, your product or service must be used or intended for use in commerce(the latter is known as an "intent-to-use" application).
What Does A Trademark or Service Mark Protect?
Trademarks and service marks giveownersthe exclusive rightto use the mark to identify goods and services. This protection allows business owners to achieve commercial recognition for their goods and servicesand reap the financial gains associated with an established reputation and a distinctive presence. Trademark registration provides avenues of legal action in the event a mark is counterfeited or otherwise infringed upon.In addition to granting exclusive rights of recognition, trademark registration allows owners to licensethose rights to third parties in exchange for money, typically royalties.
Do I Have to Register My Trademark or Service Mark?
Registering your mark is not a prerequisite to enjoying protection of your branding. If you use a trademark in connection with offeringgoods and services, even without federal or state registry, you automatically receive certain common law rights and protections that are enforceable in state courts.
Be aware, however, that common law rights only extend to the specific geographic area where you use the trademark. If a competitor uses your trademark or service mark, you’ll be forced to prove your prior use by demonstrating your historical business practices within the region you operate. Even if you prevail, you will only receive protection within a limited area, and your trademark remains open for others to use elsewhere. If you consider your trademark a primary source of present or future value for your company, register it with the USPTO.
What Are The Benefits Of Federal Trademark Registration?
Federal federal registration of your trademark or service mark provides certain benefits. These include:
- Nationwide legal recognition of trademark ownership, with exclusive rights
- A rebuttable presumption in court that you own the trademark, putting the burden of proof on any plaintiff to prove that they used the mark in commerce first
- Searchable listings on the USPTO’s database
- A right to use the federal registration symbol “Ⓡ”
- Public notice of ownership
- The right to file your registration with U.S. Customs and Border Protection, which will prevent the importation of foreign goods that infringe on your trademark
- The ability to obtain foreign registration by using your U.S. registration as a base
- The right to bring legal action in federal court, and the ability to recover profits, damages and costs (including attorney’s fees) in infringement cases
- The ability to achieve “incontestable status” after five years of registration
What Are The Benefits Of State Trademark Registration?
If the primary focus of your business is local or statewide, obtaining a state trademark registration offers a couple of advantages over federal listings. State trademark registration offers comparable levels of protection for a better price. State processes are generally faster and more efficient, and allow you exclusive use of your mark within state commerce. By its very nature, of course, state trademark registration offers a limited protective scope.
In California, unlike the USPTO, the trademark must actually be used in commerce before it receives state recognition (no “intent-to-use” applicationsavailable here). California trademark registrations are good for five years.
I'm Ready to Register My Trademark - What Do I Do Now?
Before you file for trademark registration with the USPTO or the State, it isstrongly recommended that you conduct a trademark clearance search. The purpose of the clearance search is to protect your investment in your branding and to reduce the likelihood that (1) your application gets denied by the USPTO or the State, and/or (2) a third party tries toinvalidate your mark and bring a lawsuit for trademark infringement afteryour trademark is registered. For more information about the trademark clearance search, read this article.
If you’re interested in registering your trademark, please contact us for more information.
DISCLAIMER: The information in this article is provided for informational purposes only and should not be construed or relied upon as legal advice. This article may constitute attorney advertising under applicable state laws.
