FAQ Series #4: The Ins and Outs of Trademark Applications

Welcome back to our casual trademark FAQ series. This is installment number four “The ins and outs of trademark applications.” In our last installment, we discussed trademark clearance and how it’s critical to do a good trademark search before you start to use or apply to register any new trademark.

For this installment we’re going to assume that you’ve done your due diligence, you’ve had a comprehensive trademark search conducted, and no serious conflicts were disclosed that would lead you to think you shouldn’t use or apply to register that trademark. So, we’re going to talk about how do you go about registering the trademark. But first, there’s something that I think you probably want to know, which is why do you want to register a trademark.

Anyway, let’s talk about that. There are a number of reasons why you might want to register your trademark and I think why you should want to register your trademark. First of all is, if you successfully get your trademark registered with the United States patent and trademark office—we’ll just call them the USPTO for short—that gives you the presumptive right to use your trademark throughout the United States. This is a very important right because if you are using an unregistered or common law trademark, you only establish rights to that trademark within the market area where you use the mark.

So, if you were to do business in New Jersey or New York let’s say for 25 years under a common law or unregistered trademark and then you decided you want to expand to Chicago, you might get to Chicago and find that someone else is already using your trademark in Chicago for similar goods and services to yours. And then, you would not be able to start using your mark in Chicago because you only have a common law trademark not a U.S registered mark and the other person has priority to the trademark in Chicago.

So that’s one example of why it would behoove you to apply for and successfully register your trademark with the U.S patent and trademark office. Another benefit of federal registration is that your filing date becomes your priority date.

For example, you may have never used the trademark yet—it may just be a business that’s in its incipient phases. You have the plans to use the trademark but you haven’t actually started using it. When you file your USPTO trademark application that filing date becomes your priority date in any trademark litigation or other battle that may come up in the future. That is, assuming your mark does achieve registration. So, it’s important to have that priority date because trademarks are a form of property and rights to property are often determined by who stakes their claim first, and that is the case with trademarks. So you want to have your priority date and to be able to prove that easily.

Another reason why you want to register your trademark is that other parties will search the US patent and trademark office database when they’re trying to decide what trademark they want to adopt or use for their business. When they see your trademark coming up on the USPTO as a registered mark it will generally have the effect of dissuading them from adopting a confusingly similar trademark. So it sort of creates a little force field, if you will, around your trademark (which is nice) and makes enforcing your trademark easier. Another thing that people are concerned about is whether they can use the “R” in the circle symbol. You can’t really use that legally unless your trademark is registered. Once you have got that registration certificate from the USPTO you’re entitled to use the “R” in the circle symbol and that symbol is good because it basically lets the whole world know that this is your registered trademark. You own the rights to this trademark and other people shouldn’t come close to those rights.

The USPTO will also generally, if they’re doing their job, prevent other parties from registering a trademark that’s confusingly similar to your mark. So again, here’s another benefit of registering your mark. You can prevent other parties from registering a similar mark in related fields. It’s also important because you don’t want to be the person who’s locked out from registering your trademark because someone else registered something similar first. So there’s another benefit to Federal registration

Registered trademarks generally add value to your company. If part of your plan is to eventually sell the company, you’ll get more money for it (generally speaking) if your trademarks are registered then you would if you only used common law unregistered trademarks. I’m not sure of the valuation mechanisms that go into all this, but it makes sense if you have the presumptive right to use your trademark throughout the United States and you have a registration certificate backed by the authority of the United States federal government that your trademark would just be worth more.

Finally, if you have a U.S registered trademark or even a pending application for registration, you can use that as the basis for an application to register your trademark in foreign countries. For example, you may intend to do business not only in the US but in the European Union. Well, you can take your U.S. filed trademark application and use that as a basis to go right to the European Union trademark office and file to register your trademark in Europe based on your U.S application. And that’s very convenient and can be very helpful to people who have ambitions to use their trademarks globally. So hopefully this explains some reasons why you might want to register your trademark with the USPTO.

So, let’s get into some of the nuts and bolts of how you go about doing that. First of all, you would need to know very clearly what your goods and services are. You can’t just own a trademark in the abstract; it has to be in connection with certain goods and services. One example is clothing. You might want to own a trademark for a line of clothing. For example shirts, hats, sweaters. That would be what you would put on your trademark application. Some people don’t understand that owning the mark for clothing is different than owning the mark for an online retail store that sells clothing, but those are two in fact very different types of commerce. And if you wanted to own the trademark for both you would have to specify that clearly on your trademark application.

What else is there to know about filing a trademark?

You need to know what your trademark is. You need to know: is the trademark just the pure word that you have in mind or is it a special variation of the word? Is it a logo? is it a stylized portrayal of the word? Ordinarily, a word mark, which we call a standard character mark in the trademark field, is your best bet because that gives you the broadest protection. A word mark is a claim to the word itself, not to any particular display of the wording. You need to know your filing basis: will it be based on use in commerce or intent to use? A trademark application that’s based on intent to use doesn’t require you to prove any use when you file, however, you will need to provide proof of use at some point before the U.S. patent and trademark office will issue a registration certificate.

If you’re already using your trademark in interstate commerce at the time you file the trademark application, you can file based on use in commerce and provide proof of that use as part of the initial filing. If you file based on use in commerce generally the application will proceed to final disposition, which we hope will be the issuance of a trademark registration, more quickly than if you file based on intent to use. But obviously you can’t file based on use unless you’re already using the mark. Use in commerce means using the mark in interstate commerce. The simplest way to understand this would be if the goods or services are moving across state lines in the ordinary course of business then you would have use in commerce. It also can be defined as any use of the trademark that has an effect on interstate commerce or that affects interstate commerce. That really gets into the weeds to talk about what that means. For purposes of this discussion, let’s just say your goods or services move across state lines, then you have use in interstate commerce.

There are some other considerations to look at when you’re putting together a trademark application that have to do with the trademark itself. For example, is the trademark descriptive of your goods or services? If it is, that can cause problems in your ability to register the mark or to enforce the mark even once it’s registered. So, generally speaking, if I was your attorney, I would advise you to steer clear of descriptive marks if at all possible. Other things that can trip people up are, for example, if their mark is the name of a particular living individual or if the mark can be characterized as primarily merely a surname, the USPTO will refuse registration on those grounds. Does your trademark actually function as a trademark? If your trademark doesn’t function as a trademark, in other words it doesn’t identify the source of the goods or services, the USPTO will refuse registration on those grounds.

So, once you’ve put together all the information you need, it’s time to draft and file the application. As attorneys for trademark applications we advise clients as to how to go about drafting their trademark application and then we continue to follow the progress of the application once it’s been filed so that you can be notified of any kind of issue that may come up with the USPTO. So, I would always advise you to have an attorney on your side who’s handling the trademark application on your behalf— not to go onto the USPTO website and try to do it yourself. Because, it might look like a picnic ground, but actually the ground there is laden with land mines and you might step on one and not know it until it’s too late. So, it’s better to have someone who’s really familiar with trademark law doing this on your behalf. So, there are so many considerations that go into using a trademark, clearing a trademark, applying to register a trademark, and prosecuting an application through the U.S patent and trademark office examination, that it’s really important to know what you’re doing and to do it right so that you end up with a good result.

So, the final takeaway on this would be make sure you have a good trademark attorney working with you, and that way you’ll have the best chance to come out with a win at the end of the process. That’s all for this installment of casual trademark FAQ. We’ll see you next time.

Thanks for watching. Bye.