Trademark Basics and Registration Overview

By: Jeffrey Lynne January 4, 2021 1:05 pm

Time to read: 5 Minutes

Trademark Value

For most businesses, their trademark is their number one asset. Whether it be a brand name, logo, slogan, or other type of identifier, a proper trademark distinguishes their goods and services from those of competitors, and, when done correctly, creates a strong connection with consumers as the source of such goods and services. Further, if the owner ever wants to expand, franchise, or sell the business, having secured rights in the trademark will be vital to getting the most value out of, and even being able to successfully complete, such a transaction.

So, how does a business owner secure rights in their trademark?

First to Use and Common Law Rights

For starters, it’s important to note that the United States is a first to use, not a first to file jurisdiction. This means that once a business first starts using its trademark in commerce (i.e., actually starts selling the goods/services under the trademark), it creates rights and priority over a  subsequent party attempting to use the same or a confusingly similar mark. This is known as creating “common law rights”. Note that common law rights only extend to the geographic area in which the trademark is being used. For instance, a single-location diner in a small Florida town that primarily serves locals and does not do any marketing nationally or in other states will only have common law rights to its trademark within such small Florida town.

Benefits of Federal Registration

That being said, the U.S. does have a national database, managed by the U.S. Patent and Trademark Office (USPTO), in which trademark owners can apply to have their trademarks registered to gain national protection and further secure their rights. The benefits of having a registration with the USPTO include:

• Nationwide listing in the USPTO’s database of registered and pending trademarks, providing public notice to anyone searching for similar trademarks. They will see your trademark, the goods and services on your registration, the date you applied for trademark registration, and the date your trademark registered.
• Creation of a legal presumption that you own the trademark and have the right to use it. Essentially, this means that in the event you have to go to federal court, your registration certificate proves ownership, eliminating the need for producing evidence to prove your ownership.
• Ability to use as a basis for filing for trademark protection in foreign countries.
• Right to bring a lawsuit concerning the trademark in federal court.
• Right to use the federal trademark registration symbol, ®, to show that the mark is registered. Note that you can only use the ™ symbol on unregistered “common law” trademarks.
• Ability to record the registration with the U.S. Customs and Border Protection, which can stop the importation of goods with an infringing trademark.

While beyond the scope of this article, note that individual states also have their own trademark databases, but those only provide protection within the relevant state.

Application Process

In order to register a trademark with the USPTO, the owner must first complete and submit a trademark application. One of the primary components of the application is to indicate whether the application is based on a trademark that is already in use or one to be used in the future (intent to use). Generally, it is best practice to have an experienced trademark attorney complete the application, but it is not required.

Examining Attorney Review

Once the application is completed, it then goes through a two-step process. The first step is for an Examining Attorney at the USPTO to review the application and then make a determination on whether it meets all of the requirements, or if it must be refused. If the application is refused, the owner will receive an Office Action, which will set forth the reasons for the refusal, and provide guidance on how to respond to the Office Action is desired. This is typically where a trademark attorney can be the most useful, as they can analyze the reason(s) for the refusal and make a recommendation as to the likelihood of overcoming it. If the refusal cannot be overcome, then the application will be forced to abandon and will not go through.

Publication Period

If the refusal is overcome, or if the application is initially approved by the Examining Attorney, it will then move to the second step of the process, known as the publication period. The trademark will be published in the USPTO’s weekly online Trademark Official Gazette, which can be accessed by any member of the public. Once published, it starts a thirty (30) day clock in which any member of the public who believes that they will be harmed by registration of the trademark can oppose such registration. In such cases, a Notice of Opposition would be filed with the Trademark Trial and Appeal Board (TTAB), resulting in quasi-litigation between the parties, overseen by the TTAB as the judge.

Registration Certificate / Notice of Allowance

If no Notice of Opposition is filed within the thirty (30) day period, then the application will proceed forward. If the application is for a trademark that is already in use, then the registration certificate should be issued within three (3) to four (4) months after the close of the publication period. If the application is for a trademark based on an intent to use, then the trademark will not yet register, but will go to an additional stage. In this stage, the USPTO will issue a Notice of Allowance (NOA), after which the applicant will have six (6) months to either submit a Statement of Use (SOU) with evidence that it has started using the trademark, or to request another six (6) month extension of time to file the SOU. Note that an applicant is limited to five (5) extension requests, meaning that the maximum amount of time to file an SOU after receiving an NOA is three (3) years, otherwise, the application will abandon and will not register.

Next Steps

There are many further considerations, complexities, and nuances to consider regarding trademark rights and registration.

Questions? BMU+L’s attorneys have experience navigating the trademark process:

Michael Seiger (Intellectual Property)

Disclaimer

The information provided in this article does not, and is not intended to, constitute legal advice; instead, all information, content, and materials available on this site are for general informational purposes only.  Readers of this article should contact an attorney to obtain advice with respect to any particular legal matter.  No reader, user, or browser of this article should act or refrain from acting on the basis of information on this site without first seeking legal advice from counsel in the relevant jurisdiction. Only your individual attorney can provide assurances that the information contained herein – and your interpretation of it – is applicable or appropriate to your particular situation. Use of, and access to, this article or any of the links or resources contained herein do not create an attorney-client relationship between the reader, user, or browser and article authors, contributors, contributing law firms, or committee members and their respective employers.