A trademark can sum up the entire ethos of your company with just one word, phrase, or symbol. But if you do not have adequate legal protections in place for your mark, you could lose control of the conversation around your brand. This article discusses the process of applying for, securing, and maintaining a federal trademark registration with the U.S. Patent and Trademark Office.
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Why Trademarks are Important
The benefits of a trademark cannot be overstated. As a trademark owner, you will have the exclusive right (with certain limitations) to use the mark in connection with the products or services it covers. This allows consumers to distinguish your products and services from those of your competitors by identifying a product with a single source.
While consumers may not necessarily know the identity of the source, they do know they can rely on that mark for goods or services of consistent quality. The trademark also may signify more general attributes of the goods or services, such as price, value, quality, or status.
OK, but why do I need to federally register my trademark?
Registering a trademark is almost always your safest bet in order to prevent a competitor from using your logo or name in their own business operations. This means you, and you alone, will reap the benefits of investing in your brand.
You have to think of the customers, too. Trademarks exist to prevent marketplace confusion, which means your mark can protect consumers from being misled as well.
Legal Framework of Trademark Protection
Trademark rights arise from using the trademark in commerce in connection with a product or service. Those rights are protected at both the federal and state level.
At the federal level, trademarks are protected primarily under the Lanham Trademark Act. The U.S. Patent and Trademark Office is the federal agency that administers the Lanham Act and regulates the registration of trademarks on the federal trademark register.
The Filing Basis
You must include a legal reason for why you are allowed to federally register your trademark in your application. This is known as a filing basis. The most common are use in commerce and intent to use.
Use in Commerce
A use-based application means you will use your trademark to sell or transport your goods out of state or provide services to customers who live outside your state.
For example, you might grow peaches in Colorado and sell them to buyers in Texas. Or you might provide website design services from your home in Florida to customers in Puerto Rico.
Evidence You Must Provide with the Application
You’ll need to provide proof that you’re using your trademark in commerce. You must document how you use your trademark. You’ll also need to provide the date you first used your trademark in commerce, along with the date you first used it anywhere.
Intent to Use
An intent to use application is fairly straightforward. It means that you have not utilized your mark in commerce, but you have a bona fide intent to do so within the next three to four years.
For example, you might intend to make and sell furniture, but you’re still sourcing your materials — you haven’t actually started making or selling furniture yet.
Or you might currently be providing personal training services only to local clients in your state, but in the next year you plan to expand your services into the neighboring state.
It’s important to remember that while you can apply to register your trademark on an intent to use basis, you cannot actually register your mark until you show that you have started using it in commerce.
Intent-to-Use is Federal Only
Additionally, intent-to-use applications are only available at the federal level. You cannot file for Colorado trademark registration on an intent-to-use basis.
Other Filing Bases
Other bases for filing include:
- qualified foreign applicant
- extension of protection to the U.S. under the Protocol Relating to the Madrid Agreement Concerning International Registration of Marks
Aside from basic information like your name and address, your application should also include:
- your citizenship and type of entity
- counsel information, if you are represented by an attorney
- a clear drawing of the mark
- a listing of the goods or services
- the goods’ or services’ classification
- your verified statement
Drawing of the Mark
Your application must include a clear drawing or depiction of your mark. If you do not intend to use your trademark in a particular format, you can use a standard character format. A standard character format just uses words, letters, numbers, or a combination of these, but it does not have a design element to claim.
You should use a special form drawing if the trademark includes a specific style, lettering, color, or design.
Specification of Goods or Services
During the examination process, the USPTO will compare your descriptions to other trademark applications and registrations to determine whether there is a conflicting trademark.
USPTO rules allow you to clarify and limit, but not expand or broaden, the goods or services listed in your application.
For example, you might use your trademark as a brand for black short-sleeved t-shirts. “Clothing” is too broad a definition. Instead, you could list them as “T-shirts,” “shirts,” or even “tops.”
On the other hand, using vague terms such as “miscellaneous services” may lead to the rejection of your application. The language you use can make all the difference.
Keep in mind the three C’s:
The USPTO’s Acceptable Identification of Goods and Services Manual, a searchable database, provides examples of language that has been accepted for particular types of goods and services.
Goods and services are classified according to the 45 categories set out in the Nice Classification. Your goods or services may belong to more than one class. You should identify one or more classifications if known.
Have Federal Trademark Registration Questions?
Applying for a federal trademark registration is a daunting task, and one seemingly innocuous mistake can sink your entire application. The trademark attorneys at Robinson & Henry will guide you through every step of the process to give you the best shot at acceptance from the USPTO. Call 303-688-0944 today to schedule a free consultation.