The Trademark LawTrove provides some Frequently Asked Questions and answers about the United States laws of trademarks and their registration. These FAQs are not intended as legal advice: The trademark laws change frequently as new cases are decided and statues are enacted. Consult your own attorney regarding any question you may have that is specific to your situation:
Though the U.S. Trademark Office accepts applications filed personally by applicants, it is almost always advisable to hire an experienced trademark attorney to make your filing for you. The deadlines involved in responding to office actions are very strict. It is also easy to make a mistake in the original filing that will cause the applicant to have to refile. The requirement to refile may arise years after the original, flawed filing, thus costing the applicant valuable time to market and a possible loss of the mark to a competitor.
If you would like to use an attorney in Massachusetts, consider Swiggart & Agin, LLC. If not, here are some ways to find a good attorney.
- One way to locate a good attorney is by word of mouth. If you know someone who recently filed to register a trademark and feel comfortable talking with him, ask him about his experience.
- Contact a trademark attorney at a major IP law firm in your area and ask for a recommendation. Senior attorneys at large, IP firms know who handles trademark protection in their areas competently and usually are more than happy to recommend one or more attorneys for your to call. If you don't know the major IP firms in your area by reputation, try using the Martindale Hubbell on-line directory.
- Local bar associations often maintain referral services to help locate an attorney. These services generally require that the attorney specialize in trademark and maintain malpractice insurance.
Once you locate an attorney, call and ask for a initial consultation. Most attorneys don't charge for the first meeting. When you meet the attorney ask questions before hiring him or her. Make sure that you are comfortable with the attorney and feel comfortable asking questions. The attorney should explain the trademark registration process. Confirm that the attorney carries malpractice insurance..
An excellent article on how to choose and use a lawyer is available on-line from the Colorado Bar Association.
In the United States, you should register with Trademark division of the United States Patent and Trademark Office, either on the Principal Register or the Supplemental Register. The Principal Register is for marks that are nondescriptive, suggestive, fanciful or arbitrary or, if descriptive, have acquired secondary meaning through use. The Supplemental Register is for descriptive, but nongeneric terms that are capable of acquiring secondary meaning through use, and thereby becoming trademarks.
Individual state governments maintain registries in parallel, though any state registration is for most part trumped by a federal registration. A state registration is a "quick and dirty" way to get your mark onto a widely searched trademarks database.
The fee to register a mark with the U.S. trademark Office currently stands at $325 per class. You may incur search fees prior to deciding what mark to register, and legal fees for your attorney both to file the initial application, and to prosecute the registration within the Trademark Office. Raising the profile of your mark through registration may attract unwanted attention from conflicting users, and you may incur legal fees to defend your use of the mark from such users after it has been registered. Defending a mark from a conflicting user in full blown litigation can prove to be very costly.
Registration on either register puts your mark and its use on a central, searchable computer database. Any competitor with a use that started subsequent to yours will think twice before selecting a mark that is at all similar to yours.
Registration on either register also allows you to display ® after your mark, register in foreign jurisdictions based on U.S. registration, and to bring suit in federal court.
Registration on the Principal Register confers additional benefits:
- Prima facie evidence of the validity of the mark and registration, and your ownership of it.
- "Incontestability" after five years of continuous use.
- Priority of use as of the date of the application;
- Constructive notice of your claim over the mark (for the purposes of assessing damages against conflicting users);
- The right to sue in federal court
- Nationwide use rights;
- Possible treble damages, attorneys' fees, and other statutory damages;
- The right to claim priority for registration in foreign jurisdictions, and other rights under the Paris Convention
- The Examiner at the U.S. Trademark Office may force your company to spend additional time and legal fees in overcoming the Examiner's objections.
- An undetected, conflicting, unregistered user might turn out to have filed an intent-to-use registration application a short time before your intent-to-use application, and force you to abandon your chosen mark when the conflict surfaces.
- An undetected, conflicting, unregistered user whose use predates your filing could force you to abandon your chosen mark when the conflict surfaces as a result of your filing.
- You might choose a mark that is overly descriptive, or deceptively misdescriptive, or primarily a geographic location or a surname, and therefore not registrable or protectible.
The U.S. Trademark Office may reject your application to register a descriptive mark on its Principal Register, and anyone else with a confusingly similar mark for a competing product or service will enjoy free rein to use his mark in conflict with yours because descriptive marks cannot be protected.
No, often, it is preferable to file your application before you begin using it, i.e., on an intent-to-use basis, thus establishing your rights to it before your company actually invests any marketing, advertising, or goodwill in the mark.
In an intent-to use application, the application date becomes in effect the date of first use with respect to other conflicting users in the event that the application is ultimately allowed. Thus, an intent-to-use application will trump a third party that began actual use after the application filing date, but before the applicant's actual use occurs. Obviously, this rule will not protect against an actual user whose use began prior to the application's filing date.