DETERMINING WHETHER YOU SHOULD FILE FOR A FEDERAL TRADEMARK
A. When Do I Need a Trademark?
B. Do I have trademark protection if I’ve already registered my company
C. What are the benefits to registering a trademark
D. When should you apply for a trademark
E. The Trademark Application Process
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A. When Do I Need a Trademark?
In today’s business environment, you likely will need a federal trademark if you are using a distinctive name, logo, or slogan in commerce to identify and distinguish your product, goods or services from those of others. A federal trademark can help you establish and protect your brand, prevent others from using your mark or a confusingly similar mark, and build customer loyalty and goodwill associated with your mark. It is generally recommended to register your trademark with the US Trademark Office to obtain legal rights and protections, although there are some limited rights that can arise from use of a mark without registration.
B. Do I have trademark protection if I’ve already registered my company
Filing a company or business name with state authorities is a legal requirement to operate a business, but it does not provide any exclusive rights to use that name. Federally registering a trademark, on the other hand, provides exclusive statutory rights to use a particular name or logo in connection with certain goods or services, and can help protect your brand from infringement by others. US Trademark registration is done at the federal level through the United States Patent and Trademark Office.
Filing for a company name with the state such as Minnesota does not automatically give a company trademark rights on that name. Trademark rights are obtained by using a name or logo in commerce to identify the source of goods or services, and by registering the mark with the United States Patent and Trademark Office or through common law use. A federally registered trademark provides stronger legal protection against infringement claims, and offers nationwide rights to use the mark in connection with the goods or services covered by the registration.
C. What are the benefits to registering a trademark
Registering a trademark can provide several benefits, such as (1) exclusive nationwide rights to use the mark, (2) the ability to sue for infringement, and (3) the ability to license or sell the mark. (4) It can also help you build a strong brand and reputation, which can be valuable assets in the long term.
Having a strong trademark can provide many benefits for a business. By registering a trademark, a business can obtain exclusive rights to use its mark in connection with the goods or services it offers. This allows the business to prevent competitors from using similar marks that may cause confusion in the marketplace. It also helps to build brand recognition and loyalty among consumers, as they will associate the mark with the business and the quality of its products or services. Additionally, a strong trademark can provide legal protection and make it easier to enforce the business's rights against infringers.
D. When should you apply for a trademark
A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of goods or services. Not every business file for a trademark. If a company is not using any word, phrase, symbol, or design to distinguish its goods or services from those of others, then it does not have a trademark to register. However, if the company has developed a brand identity, there has been substantial time and money that has been invested and it is in the company's best interest to consider registering a trademark to protect that the company’s identity and goodwill.
While the cost of registering a trademark can vary depending on various factors, it is generally affordable and offers significant benefits and protections for your business. Therefore, it may be wise to register a trademark as soon as possible, even if your business is still in its early stages or does not have a large client base. This can help prevent potential legal issues in the future and provide additional benefits to your business. Federally registering your trademark is also beneficial in that enables the US Patent and Trademark Office to block potential competitors from filing for the same or similar federal trademark.
E. The Trademark Application Process
The general federal trademark filing process starts with the filing of either a use or intent to use trademark application. Once the trademark application is filed, the Trademark Office will assign the trademark application to a Trademark examining attorney for review. The Trademark examining attorney will then notify us if he or she has any issues major or minor issues with the application, typically referred to as an office action. Major issues include (1) the existence of prior file applications or registrations, (2) the mark being generic, and (3) the mark being descriptive of the associated goods. If the Trademark examining attorney issues an office action, the Applicant will need to respond accordingly to the application to try and overcome the Trademark examining attorney’s objections/rejections.
If the Applicant is able to overcome all of the issue(s) that the Trademark examining attorney has with the application he or she will then forward the application to the Opposition Stage.
Trademark Publication/Opposition Stage
The Opposition Stage is a 10-week long period and its main purpose is to allow anyone who feels that their rights might be harmed or in conflict with the potential registration of the trademark application to oppose the registration of the trademark application.
If no one opposes the potential registration of the trademark application, the Trademark Office issued a notice of allowance. This is where the “use” and “intent-to-use” trademark applications start to differ. In the case of the “use” trademark application, since the trademark was used in the marketplace when the application was first filed, the proof of use was initially submitted. As such, all of the requirements have been met and the Trademark Office will grant the Certificate of Federal Trademark Registration to the trademark.
Final Stage
For an “intent-to-use” trademark application, before the Trademark Office will grant the Certificate of Federal Trademark Registration to the trademark, we will still need to submit proof of use of the trademark in commerce and pay a governmental processing fee. If the trademark has not been used in commerce/ the marketplace at the period of the notice of allowance we may file for a 6-month time extension to allow additional time to place the product containing the trademark in the marketplace. Applicants are given up to 5 time extensions (30 months total) before a new trademark application will need to be refiled.
Securing a trademark can be a lengthy process, and it's important to understand the different phases involved in the process. A trademark attorney can provide valuable guidance and help you navigate the process more efficiently. They can also assist in conducting a comprehensive trademark search, filing your trademark application, responding to office actions, and providing legal advice throughout the registration process. While it's not required to hire an attorney to file a trademark application, their expertise can be very helpful in ensuring the process goes smoothly.
