By Ted D. Karr
Whether you are forming a new business or introducing a new product, Federal registration of a trademark is an important consideration to support your company’s business strategy.
A trademark is a company asset that gains value through association with the company’s product or service, and registration is the most efficient mechanism to protect that asset while building brand recognition. Federal registration is a great tool for providing notice of trademark ownership to other parties and it offers a presumption of ownership of your mark for use throughout the United States. Additionally, it provides for more efficient enforcement by bringing an action in one Federal court rather than each state court.
Most startups, of course, do not have a trademark expert on staff. So we’ve put together this quick primer to give you the basics on managing trademarks for your company.
What is a trademark?
A trademark is a brand name. Generally speaking, a trademark includes any word, name, symbol, device, or any combination thereof (or of same), used or intended to be used to identify and distinguish the goods/services of one provider from those of others, and to indicate the source of the goods/services. Examples of strong trademarks include Apple® and Chevrolet®. They identify and distinguish a source of goods and services, and consumers attribute a value and quality to them.
Selecting a mark
There is a natural tendency for those naming a product or service to choose a name that is descriptive or generic. By doing so, they are able to communicate to the consumer exactly what it is they are selling. However, in order to establish enforceable trademark rights the trademark must be distinctive. The more arbitrary or fanciful the mark is, the more distinctive it will be and the more protectable it will be. Choosing Washington Apples for an apple business would be descriptive and generic. Apple®, on the other hand, used in association with mobile phones, is arbitrary and distinctive.
What to protect
Executives from startups often ask me, “Should I register my business name?“, “Should I register my logo?”, “Can I protect a tagline with registration?” The short answer is yes, you can protect all of those, and many companies, even startups, protect their company name, their product names, and often logos and taglines. These marks become assets that grow in value with the company.
Registration on the Federal register
Seeking Federal registration of a trademark in the early stages of forming a company or naming a new product allows a company to develop protectable brands while avoiding pitfalls, such as infringement of another company’s mark. It is much less expensive to perform a trademark clearance search early in the naming process, than it is to rebrand a product line already introduced to the market, or worse yet to fight a trademark infringement claim.
Federal registration of trademarks is not required, but highly recommended. Owning a federal trademark registration on the Principal Register provides a number of advantages, including: 1) a legal presumption of ownership of the mark and an exclusive right to use the mark nationwide in connection with the goods/services listed in the registration; 2) public notice of your claim of ownership of the mark; 3) the right to use the federal registration symbol®; 4) the ability to bring an action concerning the mark in federal court, rather than having to sue for trademark infringement in each individual state; and 5) the use of the U.S. registration as a basis to obtain registration in foreign countries.
The process for securing Federal registration
Registration of a trademark typically takes 6 months to a year and the process is generally as follows:
- Step 1: Identify mark(s) – Identify one or more possible marks for registration, then contact a trademark attorney. The attorney will work with you to develop a trademark registration strategy that aligns with your business strategy and the attorney will facilitate the trademark registration process.
- Step 2: Search – The attorney will often start with a search for similar (or confusingly similar) marks. A search can range from a manual review of the USPTO trademark database (knockout search) to a more comprehensive search that identifies potential likelihood of confusion issues based on the federal trademark register, state registrars, domain names, company name searches, and common law use from web searches.
- Step 3: Establish scope – Once the mark is cleared for possible registration, the attorney will work with you to identify the scope of the registration, including a selection of applicable classes of goods and services and the description of goods and services to be included in the application.
- Step 4: Proof of use – If the application is based on an intent to use the mark in the future, the application will not require proof of use until later in the process. If the trademark is already and currently in use in commerce, the attorney will assist you with selecting and preparing an acceptable specimen of use to support the application and will assist with identifying the first date of use of the trademark and the first date of use in commerce for the application.
- Step 5: File – The attorney will then prepare and file the trademark application through the Trademark Electronic Application System. While the application is pending you can use the mark in association with your goods/services and you can associate the “TM” symbol with your mark to provide notice of your unregistered trademark.
- Step 6: Prosecution – The Examiner will issue an office action if the application needs to be modified or if the Examiner believes the mark is confusingly similar to another mark. If you are able to navigate around the Examiner’s issues, the examiner will publish the application for public review and opposition. The publication period is 30 days.
- Step 7: Registration – Assuming no opposition is filed, the Examiner will issue a notice of allowance, followed by a certificate of registration. Once you receive your certificate of registration, you should associate the ® with use of the registered mark.
Ted Karr is a partner of Berkeley Law & Technology Group (BLTG). BLTG is an intellectual property law firm that specializes in patents, trademarks, and other forms of intellectual property. Mr. Karr specializes in trademark law, patents, IP strategy, and licensing. He can be contacted at tkarr@bltg-ip.com or 503-439-6500.