Should I Register My Trademark?
Whenever possible, it is always best for a business to register a trademark. Once a trademark is registered, the owner will have protections against other parties who attempt to copy their trademark.
Registering a trademark also puts the rest of the country on notice that the specific trademark is already in use. To register a trademark, the owner must intend to use it on goods or services that affect trade and commerce and are used nationally.
It is important to be aware that trademarks cannot be registered with the USPTO when the trademark:
- Is identical or similar to an already existing trademark or related goods or services
- Is on the prohibited or reserved list
- Is too descriptive and, because of that, it does not qualify for trademark protections
Once a trademark has been approved by the USPTO, it will be registered for ten years. After six years, the owner must file a form stating the trademark is still in use.
If the form is not filed, the registration may lapse. There are many advantages to registering a trademark in a state or federal database, which can include:
- Public notice of ownership of the trademark
- Nation-wide presumption of legal ownership
- Notice of exclusive rights for use of the trademark in connection with goods or services
- The ability to file a lawsuit involving unauthorized use of the trademark
- The ability to file with United States Customs to prevent the distribution of infringing foreign imported goods
- May allow for filing for registration in other countries based on the U.S. registration
Because of the many protections that can be provided, many owners register their trademarks to ensure that their rights are fully protected. To do so, an application can be submitted to the United States Patent and Trademark Office (USPTO).
This is the federal agency that handles trademark registration in the United States. There are several steps the applicant should take, including:
- Ensuring the trademark is distinctive and unique
- Conducting a thorough trademark search
- Filling out the necessary paperwork and paying the required fees
- Monitoring and maintaining the trademark after registration
Ensuring the trademark is distinctive and unique
Prior to registering a trademark, it is important to ensure that the trademark is distinctive and unique. A trademark may range from arbitrary, which is words or symbols that do not have a direct connection to the product, to suggestive, which hints at the product.
A merely descriptive or generic term is usually harder, if not impossible, to register. In order to help ensure uniqueness, an entity can consider several potential marks that can resonate with the target audience.
Conducting a thorough trademark search
Once the trademark choices are narrowed down, the applicant should conduct a thorough trademark search. This will help confirm if the trademark, or a similar one, is already being used or registered.
An applicant can start with a search of the U.S. Patent and Trademark Office’s online database. It is important to also check state trademark databases, domain names, and business directories.
Because of the complexities and nuances of trademark applications, it may be helpful to hire a professional search firm or a lawyer to conduct a trademark search. This will help ensure the success of the application.
Filling out the required paperwork and paying the necessary fees
Once an owner ensures that their mark is unique and conducts a search, they should officially file their trademark application with the USPTO. The trademark application will include:
- The name of the trademark owner
- A clear representation of the trademark
- The goods or services the trademark will be used on
The trademark application should be as precise as possible, as a mistake or delay can cause the application to be refused or delayed. Once the application is completed, it should be submitted along with any required fees.
The cost of the application will depend on the type of application as well as the number of goods, services, or classes that the owner is registering under. For help accurately completing a trademark application and choosing the proper classes, it is important to consult with a lawyer.
Monitoring and maintaining the trademark after registration
It is important to be aware that once a trademark is registered, there is still work to be done, such as monitoring and maintaining the trademark. It is important to regularly review the market for any potential infringements because the trademark owner is responsible for enforcing their rights.
If an owner does notice unauthorized use of their trademark, they should take timely action, starting with a cease-and-desist letter. There are also maintenance fees and documents that owners have to submit to the USPTO to maintain their trademark registration.
One example of this is the Declaration of Use that must be filed between the 5th and 6th years after registration to confirm the trademark is still being used. Timely trademark renewals will ensure that the trademark remains protected throughout its use.
How Can LegalMatch Help?
An intellectual property lawyer can help a trademark owner with everything related to their trademark, including registration, use and protection. An attorney can even help an individual create or choose a trademark, ensure the mark is not already in use, and monitor it continually after registration.
Once an owner is already using a trademark, their attorney can ensure that trademark dilution does not occur. If dilution does occur, an attorney can take the necessary steps to stop the offending party’s diluting conduct.
The laws that govern trademarks can be nuanced, complex, and voluminous. Because of this, it is important to have legal assistance for any trademark issues and to ensure a trademark is protected.
LegalMatch can help an owner find a trademark lawyer in their area who can help ensure the success of their trademark. LegalMatch has assisted millions of individuals with their legal needs, including trademark needs, as shown in the customer testimonials from satisfied clients.
What Else Should I Know about Unregistered Trademarks?
An unregistered trademark is different from a registered trademark. An unregistered trademark does not have the same protections as a registered one.
Registered trademarks are more thoroughly protected by law. There are several remedies available to registered trademark owners if their trademark is infringed upon, such as monetary relief, injunctions, and other costs.
With an unregistered trademark, the owner will typically only be able to get an injunction.
How Can I Use and Protect My Unregistered Trademark?
An unregistered trademark may be enforced in the geographic area where it is used in commerce. The first user of the trademark will have priority over other users.
An unregistered trademark can make it difficult to enforce infringement. As noted above, if the trademark owner is successful in their infringement action, they will likely be limited to obtaining an injunction against the infringing party.
It is very important for an unregistered trademark owner to keep detailed records of their trademark use. This is because, in order to succeed in their infringement action, they will likely have to show they were using it first.
It is also important for the owner to keep records of their trademark use showing how it is used in their geographical area.
What Are the Legal Protections for Unregistered Trademarks?
An unregistered trademark may be protected under the Lanham Act. This federal law prohibits commercial misrepresentation of origins or sources of goods.
An unregistered trademark may also be protected by common law and unfair competition laws. One example of prohibited conduct is passing off.
Passing off is a common law action that arises when an individual misrepresents their services or goods as if they belong to someone else. The misrepresentation may be unintentional or intentional.
An example of passing off could be if an individual uses a business name and logo that is very similar to an existing one while selling similar products or services to try and convince customers they are purchasing from the original owner.
What Are the Benefits and Limitations of an Unregistered Trademark?
There are certain benefits to unregistered trademarks, including:
- There are no registration fees
- It can be used immediately
- In contrast, federal registration may take months or years
- It can be abandoned or modified without legal action
- They do not have to follow the same strict registration requirements as registered trademarks
There are also important limitations for unregistered trademark owners to note, such as:
- They are only given legal protections in the geographical area where the owner operates
- Owners have to prove the date of first use as well as continuous use
- It can be difficult to establish a strong reputation for a trademark
- Legal action involving unregistered trademarks may be more expensive and difficult than with registered trademarks
- There are limited legal remedies for infringement
- For example, a lawsuit based on passing off, as discussed above, may be difficult to prove
Do I Need Legal Assistance?
If you are the owner of an unregistered trademark or are considering using one, it is essential to consult with a trademark lawyer in your area who can help ensure you obtain all of the protections that you can under the law. It is important to consider registering your trademark, if possible, to provide yourself with additional protections for your trademark.
Protecting your trademark can help ensure the success of your business and livelihood. LegalMatch can help you make sure your unregistered trademark is continually protected.
LegalMatch provides a free lawyer matching service you can use to find a trademark lawyer in your area who is pre-screened and licensed. All you have to do is submit your unregistered trademark question and, in about 24 hours, you will get responses from member attorneys who can help protect your unregistered trademark.
