Registering a trademark is one of the first steps a business can take towards creating strong protections around its intellectual property (IP), branding, and other assets of value.
Trademarks are words, names, symbols, sounds, or colors, or combinations thereof, that identify the source of goods and services of one owner and distinguish goods and services from those manufactured or sold by others. A trademark is different from a patent which covers new inventions.
Registering a trademark with United States Patent and Trademark Office (USPTO) makes your ownership of a key identifier official throughout the US, thereby protecting your trademark from infringement by somebody else. Unlike patents, which have a finite lifetime (nominally 20 years from the date of submitting an application), trademark ownership can be renewed indefinitely as long as the trademark continues to be used in commerce by the business.
As a note, when people usually talk about registering “trademarks”, they are actually talking about two major types of marks that can be registered: trademarks generally relate to goods and products and service marks apply to services. That said, the USPTO’s application and examination process are identical for both trademarks and service marks, so to keep things simple, whenever the terms “trademark”or “mark” is used in this article, it’s a reference to both trademarks and service marks.
Why Register a Trademark with the USPTO?
Registering a mark gives you, or your business, the owner of the trademark the exclusive right to use the mark and to prevent others from using marks that may cause confusion with the owner’s registered trademark. And this protection isn’t just theoretical – federal trademark laws give you powerful legal rights that can make enforcing your rights against an infringer much cheaper and easier to do. Those statutory rights include:
The ability to bring a trademark infringement lawsuit in federal court;
The ability to recover three times the cost of any damage infringement has done to a company’s business, plus attorneys fees and other costs;
Nationwide notice of trademark ownership and registration, and the right to maintain incontestable status of trademark ownership after five years.
A mark can either be registered federally (i.e. with the USPTO), or within a specific state. Anyone can apply to register a trademark with the USPTO and federal registration of a mark with the USPTO is governed by federal law (specifically, the Lanham Act; also known as The Trademark Act of 1946). Many individual states have some type of trademark registration and protection; however, in that case, protection is limited to the particular state in which the trademark is registered. If another entity uses an identical or similar mark in another state, it would be difficult, if not impossible to challenge the use of the mark in the other state.
Given the broad nationwide nature of commerce today, it makes the most sense for individuals, companies and entities to apply for federal registration with the USPTO, thereby giving you trademark protection across the entire country, not just in one state only.
Registering a trademark or service mark starts with compiling the relevant information on what, exactly, you want to register. You can then start the application process online (and it’s worth reviewing the fees that need to be paid if you go that route) or you can work with a law firm like MGLS to go through this process with the support you might need.
In our next articles on this subject, we will outline the trademark application process and when you can use trademark or service mark symbols.
Disclaimer: This article constitutes attorney advertising. Prior results do not guarantee a similar outcome. MGLS publishes this article for information purposes only. Nothing within is intended as legal advice.