In the context of intellectual property rights, “mark registration” or “trademark registration” refers to the exclusive legal right to use specific phrases or pictures connected with a company’s name. This is typically the organization’s visual logo, accompanied by keywords such as a motto or company name.
A trademark enables the general public to easily recognize a product and, more crucially, associate it with the firm that manufactures and sells the goods. Trademarks can be used for services as well as products.
In many situations, a trademark will not be awarded if another company already uses it or if it is likely to cause “confusion” with another mark already in use. Obtaining a trademark registration is undoubtedly one of the most crucial stages in avoiding trademark infringement claims.
Before registering your trademark, you should conduct a trademark search to see if another business or entity is already using the same name. You don’t want to create a business name, run advertisements, or design brochures just to be compelled to change the name later.
Common Trademark Types
There are numerous sorts of trademarks, including:
- Service Mark: Rather than marketing a product, a service mark promotes a certain sort of service.
- Trade Dress: A product is occasionally known for its unique packaging, also known as trade dress.
- Collective Mark: A collective mark is a sign, term, or phrase used to identify a group, organization, or association, as well as the products, services, or individuals within the group.
- Certification Mark: A certification mark is a sign or name that is used to ensure the quality of another’s service or product.
What Is the Purpose of a Trademark Search?
Before using a certain trademark or name, you should search to see if a similar trademark exists. If you use a trademark similar to or identical to another person’s registered trademark, you may be responsible for damages and the registered owner’s attorney expenses.
A court would generally presume that the unregistered trademark owner was aware of the registered trademark, even if you were not.
Before applying with the USPTO, a trademark name or brand should be thoroughly checked to establish whether someone else already uses the trademark. Failure to conduct an appropriate trademark search may force you to change your name.
The following approaches can be used to do a trademark search:
- Conduct your own search on the US Patent and Trademark Office’s website for trademarks that have been registered.
- Conduct an Internet search to see if the trademark name is already in use by someone else.
- Use a fee-based trademark search agency, such as Thomson’s SAEGIS that searches trademark databases for related trademarks.
In addition to the federally registered trademarks listed on the USPTO’s website, search your state’s trademark database.
Consult an attorney to assist you in your search for available and unavailable trademarks.
What Information Do I Need to Register a Trademark?
Mark registration is a specialized procedure often carried out with the United States Patent and Trademark Office.
A fee is normally charged to register a trademark (one fee for each mark registered).
The process can take a long time to complete and may necessitate significant legal evidence of the mark’s use.
For example, the applicant is normally asked to provide the following:
- A reproduction of the author’s words and image
- If appropriate, the date of first commercial use
- A “specimen” that illustrates how the mark is utilized in commerce and the services associated with the mark
- Other legal documents and materials pertaining to the company mark
The regulations and specifications for trademark application specimens can be quite specific, necessitating the services of a lawyer.
Trademark Dilution or Infringement
If someone uses a trademark without permission, federal law protects it. The trademark is protected from the following:
- Infringement: Infringement happens when someone uses the same or a similar trademark for a comparable good or service.
- Dilution: Trademark dilution happens when a well-known trademark is used for a different service, yet the use either tarnishes the trademark’s good name or reduces the consumer’s association between the trademark and the services.
I Discovered a Trademark that is Comparable to Mine. Is it Still Possible for Me to Register it?
Often, no, because it may produce confusion.
However, if the other mark is used for distinct products or services, it may be possible because customers may not be misled as to who offers what.
Consider the Delta brand. Delta Dental, Delta Air Lines, and Delta Faucet Company coexist because their products are sufficiently distinct to avoid consumer confusion.
Is it Necessary to Register My Company Name and Logo Separately?
Yes.
The USPTO authorizes only one trademark—one name, logo, or slogan—per application. You can register a logo incorporating words, but the design and text are treated as one trademark. Want to safeguard them individually? You’d have to submit two applications.
How Many Trademark Classes Must I Register For?
It all depends on what you’re selling.
The USPTO categorizes all items and services into 45 categories. Do you own a restaurant? In class 43, you supply a service (food services). Do you also sell cookbooks and conduct cooking classes at the restaurant? You must also register for classes 16 (paper goods) and 41 (education and leisure services).
Your trademark protection is often limited to the classes indicated in your application.
How Long Will it Take for My Trademark to Be Registered?
If you intend to use your trademark in commerce, you should allow six to nine months. Within a few months, the USPTO will analyze your application and either submit an Office Action with questions or reservations or grant your trademark for publication. If your mark is publicized and there are no objections from the public within 30 days, it is formally registered.
It may take longer if you have not yet used your mark in commerce. Following completion of the preceding processes, the USPTO will issue a Notice of Allowance, indicating that your mark will be registered once you demonstrate proof of use in commerce via a Statement of Use. Your trademark is formally registered once this is filed and accepted.
Could My Trademark Be Rejected?
Yes.
If there is a possibility that consumers would confuse your mark with another trademark, the USPTO’s examining attorney may reject it (i.e., if your mark sounds like or looks like another mark in a similar industry).
What Should I Do If I Have a Complaint or Problem With Mark Registration?
One crucial aspect of trademark registration is that the mark cannot be used elsewhere. This necessitates a check of internet intellectual property databases to ensure that the mark is not already claimed or used in connection with another product or service. This is a complicated process that may necessitate the services of an attorney.
Alternatively, another business entity may be attempting to use your officially protected mark. If the unlawful use has caused your firm any losses, you may be entitled to sue for infringement damages and other remedies.
Do I Need an Attorney to Register a Trademark?
Registering a trademark is a complicated process that usually necessitates the aid and supervision of a knowledgeable trademark lawyer.
Your attorney can assist you with many stages of the registration process, such as database searches and delivering the necessary paperwork. A lawyer may also be required if you bring a lawsuit involving a protected trademark.
