Registering Your First Trademark in the U.S.
Registering a trademark or service mark makes it easier for the owner to protect it against would-be copiers and puts the rest of the country on notice that the mark is already taken.
By: Jens Liesegang
Trademark applications are reviewed and assessed by the Patent and Trademark Office (USPTO). It is possible to establish rights for a mark solely as the result of legitimately using that mark, but there are several advantages to the ownership of a Federal trademark registration with the Principal Register:
- Public notice of your claim of ownership of the trademark
- Assumption of your exclusive legal right to use the trademark nationwide in association with the goods or services that you have listed in the registration
- The right to bring legal action to a federal court in association with the trademark
- The ability to use the national registration as the foundation for registration in other countries
- The ability to file with Customs and Border Protection to halt the importation of foreign goods that infringe your trademark
The Registration Process
Determine Eligibility for a Trademark
Most applications are based on the current use of the trademark in active commerce, or the intention of using the trademark in future commerce. Use in commerce must be regular use in the course of trade, and not use whose sole purpose is to establish the rights of the trademark. Commerce is considered as any trade that falls under the legislation of Congress.
Use is considered acceptable when the trademark is displayed on the container of goods or displayed in the sale or advertising of services, and those goods or services are actually sold, rendered, or transported in commerce.
You can file based on existing usage of the trademark as described above. All applications based on use need to include a sworn declaration stating that it is to be used in commerce, and must list the date when the trademark was first used in commerce anywhere in the country. The standard USPTO application form contains a template of a properly worded declaration. Only persons who are legally authorized to sign on behalf of the applicant must sign the declaration. The application must also include an example demonstrating the usage of the trademark in commerce. '
The registration database must be searched prior to filing, to establish whether there are existing trademark rights in the same area as your trademark. It is possible to conduct searches online for free using the Trademark Electronic Search System. All trademarks that include design elements must be searched according to a design code. The proper design code can be determined using the Design Search Code Manual.
You can file the trademark application directly online through the Trademark Electronic Application System. This system will allow you to complete an application form and check it for accuracy, and then file your application directly with the USPTO using the internet. Payments can be made through credit card, electronic funds transfer or an existing USPTO deposit account.
You can also contact the Trademark Assistance Center to request a soft copy or hard copy of the Basic Facts. However, paper forms will not be processed as quickly as forms that are submitted electronically.
Seek Legal Counsel When Registering Your Trademark
The sooner you establish your registered trademark, the sooner you can enjoy the advantages and protection that it offers. Trademark registration is a very specific process, and following the requirements to the letter help to safeguard your intellectual property in the event of any future legal disputes. Ensure that you have the appropriate legal counsel throughout the trademark registration process so that you have the most solid legal foundation for the ownership of your intellectual property.