Why Register Your Trademark?
Your trademarks constitute your brand identity. Without a federally registered trademark, your investment in branding is not adequately protected. Federal trademark registration gives you the following rights:
- National Protection: The owner of a federal trademark registration has the right to prevent others from using the registered trademark anywhere within the United States, whether or not the trademark owner has sold goods or provided services to customers within any particular region. A major benefit of obtaining a federal trademark registration is that your trademark is protected nationwide. Compare this to the much more limited, contentious “common law” trademarks
- Notice to Competitors: Having a federal trademark registration gives notice to your competitors, or anyone who might want to use the trademark, that it is your exclusive property. Such notice is required to recover profits or damages for trademark infringement.
- Recover Attorney Fees: If you need to sue for infringement, having a federal trademark registration gives you the ability to recover attorney fees incurred from the trademark infringement lawsuit. According to the American Intellectual Property Law Association (AIPLA), the average cost of trademark litigation is between $400,000 to $2,400,000 — depending on the amount at stake. Having a federal trademark registration puts you in position to get these attorney fees back if you prevail in the action.
- Recover 3x Damages + Defendant’s Profits: You can potentially recover up to three times the amount of damage you are able to prove was caused by the infringement. Thus, if you’ve lost $100,000 in profits, the court may award you $300,000 in damages if you prevail. You can obtain these “treble damages” only if you have federally registered your trademark.
- Incontestable Status: When your trademark has been federally registered for five years and you make a declaration of continuous use, your mark then becomes “incontestable” — you are legally protected from challenges that your trademark is:
+ Not inherently distinctive.
+ Simply functional, lacking secondary meaning.
+Confusingly similar to a mark that someone else began using prior to your registration.
- International Priority: If your trademark is utilized outside the United States, having a Federal Trademark Registration gives you important rights in other countries, particularly the ability to seek registration under treaties to which the United States is a party. Filing a U.S. federal trademark application acts as a “constructive filing” in other treaty countries; you receive the automatic benefit of your U.S. filing date if you file internationally within six months.
How to Register Your Trademark
Here are the basic steps involved in registering your trademark:
- Step 1: Determine if your desired trademark is available (an optional but highly recommended step).
The best practice is to first conduct a “clearance search,” to determine if the trademark you have selected is already being used by someone else. Conducting a clearance search BEFORE you begin the trademark application process will save you the trouble of applying for a trademark that will encounter problems during the examination process at the USPTO. Moreover, the clearance search will enable you to determine if the trademark you selected infringes upon another party’s existing trademark rights.
- Step 2: Submit your application to the U.S. Patent & Trademark Office.
We prepare and submit your trademark application to the U.S. Patent and Trademark Office (USPTO); we make sure that your application will undergo as smooth an examination as possible. Our trademark lawyers are well versed in the nuances of Trademark Office procedure, as by knowing which type of trademark application will best suit your needs: either an “Intent-To-Use” (ITU) application or a “Use-Based” application.
- Step 3: A trademark attorney at the USPTO examines your application.
About three to six months after the trademark application is submitted, a trademark attorney at the USPTO will examine your application, to determine if your mark is entitled to registration. The trademark examiner will conduct a search to see if your desired trademark is identical to or confusingly similar to any other trademark that is already registered. The examiner will also consider factors like whether your application requires modifications to its recitation of goods/services and whether your application otherwise complies with U.S. Trademark law.
If there are no issues, the examiner will “publish your trademark for opposition” (See Step 4).
If the examiner identifies an issue in the application that needs to be addressed, the examiner will issue an “office action” or get in touch with us to request permission to make an “examiner’s amendment.” If an office action is issued, we will have up to six months to respond; or the application will “abandon.” If the response does not fully alleviate the issues raised by the examiner, a “final office action” will issue, in which case we will have six months either 1) to file a request to reconsider the final office action, 2) to file an appeal of the refusal to the Trademark Trial and Appeal Board (TTAB), or 3) to let the application abandon. If no response is filed within the six months, the application will automatically abandon. If the TTAB decides that the examiner’s refusal was improper, the application will be published for opposition (See Step 4). If the TTAB agrees with the refusal, we may appeal further, to Federal District Court.
- Step 4: Your approved trademark is Published for Opposition.
Once the examiner approves your trademark application, the trademark is “published for opposition” for 30 days. Any third party who wishes to object to your trademark being federally registered may do so by filing an opposition. If an opposition is filed, proceedings will be initiated with the TTAB; and whatever issues the opposing party has raised will need to be addressed. For trademarks that have been properly cleared, oppositions are rare; but they do occur for some applications. Our attorneys are exceptionally qualified in TTAB matters and can guide you through the opposition process if needed.
If your application is not opposed, it will proceed to registration.
- Step 5: Your trademark is registered.
Assuming that no opposition is filed and your application was submitted as a Use-Based application, you will receive a “certificate of trademark registration” approximately four to eight weeks after the opposition period ends. If your application was an Intent To Use (ITU) application, you will receive a “notice of allowance” if there is no opposition filed during the 30-day publication period. You will then have up to six months from the date of the notice of allowance to submit a “statement of use,” showing that you are now using the trademark in commerce. If you are unable to show use within those six months, you may file up to five “requests for an extension of time to file a statement of use.”
- Step 6: Monitor and attend to the trademark renewal requirements.
Once a trademark is registered, it may be maintained for as long as you use the trademark in commerce. To maintain the trademark, you must satisfy renewal requirements, which require that you file a Section 8 “affidavit of continuous use” with the USPTO between the fifth and sixth year after the date of registration. Failure to file a timely affidavit of continuous use will result in automatic cancellation of your trademark. In addition, you will be required to file a “combined Section 8 affidavit of continuous use” and a Section 9 “application for renewal” every 10 years after the date of registration. Cotman IP utilizes a special calendaring system to track your trademark through the entire registration process; so long as we have your current contact information, we will make sure that you are notified of the renewal requirements for your trademark.
The Hazards of “Common Law” Trademarks
Having a federal trademark registration is the best way to guarantee that your trademark rights cover the broadest geographic region possible. Trademark rights are unlike other intellectual property rights in that some limited rights are automatic within your established region of use. If for example, you sell goods or provide services under a trademark to customers in Los Angeles, California, then you have what are called “common law” trademark rights in Los Angeles, but nowhere else.
Hence, if a competitor starts up in San Diego and decides to use the same trademark you have been using in Los Angeles, you would have to prove that you have sales in San Diego in order to have a realistic chance of preventing them from using your trademark. With common law trademarks, if there are two companies doing business in close proximity and rightfully using the same trademark, whenever one company expands into the other’s jurisdiction, costly litigation is often required to settle the matter.
Overall, common law trademarks (and state trademarks, in many ways similar) are not an ideal form of protection. National in scope, federal trademark registration is the best means of protecting your reputation and business.