Created and Maintained by William F. Swiggart, of Swiggart & Agin, LLC. Located in Boston, Massachusetts, Swiggart & Agin, LLC provides legal services to the technology community, including services in the areas of intellectual property law, computer law, corporate law, bankruptcy and real estate. Questions? Try the Trademark and Domain Name FAQ.

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:

Registering a Mark Within the United States

1. Do I need an attorney to file a trademark registration?

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.

2. Where can I find an experienced trademark attorney?

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.

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.

3. Where should I register my mark in the United States?

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.

4. What are some costs to register a mark?

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.

5. What are some benefits of registering a mark?

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:

6. Are there pitfalls in the registration process?

7. What might happen if I try to register a mark that is descriptive?

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.

8. Do I have to start using my mark before applying to register it?

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.

9. What is the effect on conflicting users of filing an intent to use application?

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.