If you are starting or running a business that involves selling goods or services, chances are you are using brand names, logos or other identifying words, symbols, sounds, or colors that function as trademarks. Trademarks are a form of intellectual property which, if properly protected and maintained, can be a valuable business asset. While trademark rights arise through use or the mark in connection with the sale of goods or services (“common law” trademark rights) – formally registering your trademarks is an important part of protecting your investment in your business and your brand.
While most states offer some form of state trademark registration, the best approach is to file for federal trademark registration through the United States Patent and Trademark Office. The first step in the process is to conduct a thorough search to determine if the same or similar mark is being used in connection with the same or similar goods or services. You do not want to discover, after investing time and money to develop your brand, that someone else already owns the trademark rights.
There are companies that offer to perform formal trademark availability searches for a fee. An attorney experienced in trademark registration can help you to order a search and can review the search report and provide a legal opinion on the advisability of pursuing a federal trademark registration. If no competing trademarks are identified in the search report, the trademark may be a candidate for federal trademark registration.
The next step is to draft a description of the goods or services with which the trademark is being or will be used. The USPTO maintains a list of approved descriptions as part of the Trademark Manual of Examining Procedure (TMEP). Use of an approved description will save on filing fees and minimizes the risk that the trademark examiner will reject your description. In some cases, a custom description will have to be used. The description must accurately describe the goods or services with which you are or will be using the mark.
If you have not yet started to use the trademark in interstate commerce, you can “reserve” the trademark by filing an “intent-to-use” application. You may file up to five 6-month extensions before you must either file a “statement of use” or abandon the application. If you are already using the mark in interstate commerce, you can go straight to filing a “use” application.
After the application is submitted, it is assigned to a trademark examiner. The examiner will review the application. If there are problems, the examiner may issue an “office action” and require changes. Once the examiner’s concerns are addressed, the application will be published for opposition. Barring any objections, the examiner will issue a registration for the trademark. This process can take more than a year from start to finish.
You must maintain the trademark registration by consistently using it in connection with the described goods or services and submitting periodic renewal applications beginning in the fifth year after the registration is issued. Another trademark owner can contest your registration any time before this first renewal. If properly maintained, your trademark rights can last forever, and can be sold or assigned along with your other business assets.
Obtaining and maintaining a federal trademark registration can be complicated, so it is best to consult an experienced attorney to guide you through the process.