You’ve created an amazing product or service with a super catchy brand name, and you are starting to make a profit. Fairy tale ending, right? Not so fast there, budding entrepreneur/future mogul – you may have skipped a critical step – registering your brand with the United States Patent & Trademark Office (“USPTO”).
Why should I spend my hard earned money on a federal trademark registration, you ask? Oh I have heard it all: a) I’m just a small shop, b) it’s too expensive, c) there’s too much paperwork, d) insert additional suspect/weak excuses here.
Please allow me to share several reasons that you can’t afford NOT to protect your precious brand with a federal registration. First, small is a relative term. Even if you are a small shop, if you offer your product or service outside the state in which you are located, or sell to customers visiting from outside your state, it’s a good idea to consider federal registration. Word of mouth is a powerful thing, and federal registration can deter copycats from other locations, or even from your own backyard. Second, the cost of protecting your trademark with a registration is minimal in comparison to the cost of having to clean things up after the fact. For example, if a third party takes action before you do, you may be faced with proving that you have priority, negotiating a trademark purchase, re-branding, or even filing a lawsuit. Third, if you seek the advice of an expert in the area of trademark law, you can rest assured that they will deal with the paperwork, freeing you to focus on the important part – running your business.
Advantages of Registration
In all seriousness, owning a federal trademark registration on the Principal Trademark Register provides several advantages, including:
- Notice to the public that you claim ownership of the trademark;
- A legal presumption of your ownership of the trademark and your exclusive right to use it nationwide on or in connection with the goods/services listed in the registration;
- The ability to bring an action concerning the trademark in federal court;
- The ability to rely on the U.S. registration as a basis to obtain registration in foreign countries;
- The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol ®; and
- Listing in the United States Patent and Trademark Office’s online databases, which can discourage third parties from adopting a similar name.
Timing (Is Everything)
If you wait too long to file a federal trademark application, you run the risk of having to deal with a pesky intervener, also known as that darn so and so who beat you to the punch. If another company or individual files a federal trademark application for a trademark that is the same as, or even similar to your trademark before you do, the USPTO automatically gives that filer priority over anyone else, REGARDLESS OF WHETHER YOU STARTED USING THE SAME TRADEMARK FIRST. So setting the fact that you may have a legitimate right to use the trademark aside, a delay in filing an application for registration could result in your having to spend additional money to file a legal proceeding to oppose the application for the other guy’s trademark, or petition to cancel their already issued registration.
When you file a federal trademark application with the USPTO, it initiates a legal proceeding. The better approach is to identify and hire a private attorney who specializes in trademark matters to represent you in the application process and provide you with legal advice/strategy, as opposed to hiring a “generalist” who will have to spend time learning how things work, and likely pass the costs on to you. And although USPTO trademark examining attorneys will try to help you if you choose not to hire a private trademark attorney, USPTO attorneys are not able to give you legal advice.
A private trademark attorney can help you throughout the trademark application process and beyond. Before an application is filed, a private trademark attorney can help save you from future costly legal problems by conducting trademark clearance. Clearance involves a comprehensive search of federal registrations, state registrations, and “common law” (unregistered) trademarks before you file your application. These searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. Common law trademarks won’t appear in the USPTO’s Trademark Electronic Search System (TESS) database, but could still ultimately prevent your use of your mark. In addition, trademark attorneys can help you during the application process with several things that could seriously impact your trademark rights, such as determining the best way to describe your goods and services and preparing responses to refusals to register your trademark. Finally, a private trademark attorney can also assist in the policing and enforcement of your trademark rights. The USPTO is only in the business of registering trademarks. You, as the trademark owner, are responsible for trademark enforcement, so it’s a good idea to have an expert on your side to help you to navigate successfully through everything else.
 This blog post does not cover the topic of state trademark registration.