Virtually all businesses have a trademark they need to protect. Whether this is the company’s name, a logo, a slogan or some combination of these elements, it’s nearly always advisable to pursue formal protection through registration with the USPTO.
It is true that trademark holders in the U.S. have certain rights under common law. However, these aren’t nearly as robust as what can be obtained with a formal registration. Business owners who want to enforce their mark against a competitor or who come under attack by a competitor for using a confusingly similar mark will find that they have far more rights and options once they hold a federal registration of their mark.
Of course, trademark registration doesn’t happen overnight. A long and frequently complex process is required to move from the idea for a mark to owning a federal registration.
It is wise to budget at least one year from filing an application with the USPTO until issuance of a registration. This one-year period does not necessarily include all of the development and searching that goes into a new mark.
Choosing and Searching for a New Mark
Too many entrepreneurs fall in love with a mark before knowing whether or not it is registrable or available for registration. If possible, it is advisable to consult with an intellectual property attorney before choosing a final mark. The attorney can perform searches of each potential mark to determine the likelihood of successful registration for each mark.
A search can tell you if there are existing marks for similar goods and services already in use. If so, then it might be wise to choose a different mark in order to avoid potential opposition by the current registrant or a refusal based on the existing registration by an examiner at the USPTO.
The more original, unique and distinctive your mark is, the easier the registration process is likely to be.
Are You Already Using Your Mark?
In the U.S., trademark applications are filed either on the basis of current use or an intent-to-use the mark. Marks that are currently in use generally have a faster processing time from application to issuance. This is because evidence of actual use of the mark in U.S. commerce is filed at the time of application.
Marks that are filed as intent-to-use are not yet in use in interstate commerce. However, the applicant must attest that they have a bona fide intent-to-use the mark at the time of filing the application.
Before an intent-to-use application may issue as a registration, the applicant must begin using the mark in interstate commerce and provide the USPTO with evidence of such use.
Accordingly, the intent-to-use application undergoes examination by the USPTO before it is allowed. Then, the applicant has three years to demonstrate use in commerce. If use is demonstrated, the registration issues. If use is not demonstrated during this three-year period, then the application is abandoned.
Applicants who are not using their mark in commerce at the time of application will want to consult with their IP attorney regarding the timing of their application and the requirements for demonstrating use.
Should I File an Application Sooner or Later?
In general, it makes sense to file an application for registration of a mark as soon as possible after making a final decision with regard to which mark to use. The reason for this is that other applicants with similar marks will be given preference during examination by the USPTO.
If your application is filed after someone else’s, and it is for a mark and goods that are confusingly similar to a prior-filed application, then examination on your application may be suspended until the registration process for the other mark is completed. Accordingly, you may have to wait for years while the other application remains pending.
Options for getting around a lengthy suspension period may be available. For instance, you may be able to negotiate a coexistence or other agreement with the other applicant. Such an agreement allows both parties to use of their marks within certain limitations. In general, it’s wise for an intellectual property attorney to deal with all such negotiations and to draft any coexistence agreement.
Registrations Are Effective on the Filing Date
Although the process to register a trademark can be longer and more complicated than many people realize, the good news is that the effective date of the registration goes all the way back to the filing date of the application.
This means that if another party is infringing on your rights, you may be able to claim damages dating back to your application’s filing date. If you are concerned that a competitor is infringing on your registered rights, then it’s smart to consult with a skilled intellectual property attorney.
Contact Jeff Williams
Whether you are in the process of choosing a mark or have received an Office action from the USPTO for an already-filed application, contact intellectual property lawyer Jeff Williams for guidance. He’s already assisted many clients as they navigated the often complex process of obtaining a registration, and he can provide you with similar advice.