You do not have to register a trademark with the United States Patent and Trademark Office (USPTO) or the entity that oversees trademarks in your state to use the mark. Instead, you can establish your rights in a particular mark based on your use of it. Since you do not have to register a trademark or service mark in order to use it, why do businesses register their trademarks?
Registering a trademark with the USPTO has these significant benefits for owners:
- Giving constructive notice of your claim of ownership on the mark to all members of the U.S. market;
- Providing a legal presumption that you own the mark and that you possess the exclusive right to use the mark nationwide or in connection with particular goods or services in the event the mark is ever at issue in a trademark lawsuit;
- Allowing you to sue others related to their misuse of your trademark in federal court;
- Using the registration with the USPTO as a basis for registration abroad; and
- Filing the registration with the U.S. Customs Service so that you can stop others from importing infringing foreign goods.
It is a sound business decision to do a trademark search before you build up a particular trademark, and you must do a search before you try to register it.
Rights Affected By Registration
In some countries, you secure rights in a trademark by registering it. In the United States, however, you obtain limited trademark rights as soon as you start to use it in commerce. As soon as you claim your right in a particular mark, you can use the “TM” (trademark) or “SM” (service mark) symbol. However, you can only use the federal registration symbol of ® if the USPTO registers the mark, and the symbol with the mark can then only be used in connection with the goods or services that the USPTO lists in the trademark registration.
Federally registering your mark allows you to use the mark around the United States without fearing that somebody else will limit your rights or sue you. Registration can also help you build your brand with distributors and resellers and avoid one of these business relationships turning sour. Resellers sometimes register trademarks of companies for which they sell goods if the mark is not already registered by the company. Registration by a reseller can turn into a dispute that results in a lawsuit to decide the rightful owner of the mark.
Registration can also stop or resolve disputes about the ownership of an Internet domain name. For example, if you own the trademark “Sideways,” you may find that the domain name sideways.com has already been registered. A trademark registration provides evidence of your right to the mark. Any domain name acquired in bad faith can be transferred.
Similarly, if you register your mark with the USPTO, you can also register the mark with the United States Customs and Border Protection service. The Customs officers will be able to block goods that infringe your mark from entering the country and affecting your business. For small businesses, this may not be a concern. However, over time, a small business may grow, and this protection can be very useful down the road. Finally, registration allows you to start a lawsuit from the position that your trademark is valid. You will not need to prove to the court that it is valid. There are additional remedies available for those whose registered trademark is infringed.
Process for Registration
The Lanham Act and Title 37, Part 2 codify the rules of federal trademark registration. If you apply to register your trademark with the USPTO, an examiner will review your application. If the examiner denies your application, you have six months to reply to the examiner or amend your application. The application will be reexamined. This process can be repeated until the examiner issues a final refusal of registration or you do not reply, amend, or appeal.
If an examiner approves your application, it will be published in the Official Gazette of the USPTO. This gives others the opportunities to oppose registration of the mark. One reason that others would oppose registration is if they are using a similar mark and believe that your mark will dilute theirs.
The person or entity opposing registration of your mark will need to show that it is likely to be damaged if your mark is registered and there are valid grounds why you are not entitled to register your mark. The mark will be registered unless the party opposing it successfully shows these elements. A notice of registration will be published in the Official Gazette. Others have five years after your trademark has been registered to file a petition to have your trademark’s registration cancelled.