A trademark is a word or symbol that identifies your business and distinguishes it from others in the market. A trademark can help you protect your brand name, logo, slogan, or domain name from being used by others without your permission. But to get the full benefits of a trademark, you need to register it with the United States Patent and Trademark Office (USPTO). This blog will explain the legal requirements for registering a trademark in the US and why it is important for your business.
What Is a Trademark?
A trademark is a type of intellectual property that protects the name, logo, slogan, or design that you use to identify your goods or services. A trademark can be a word, phrase, symbol, image, sound, color, shape, or any combination of these elements. For example, Coca-Cola, Nike, Apple, and McDonald’s are all well-known trademarks.
A trademark can help you build your brand identity and reputation by preventing others from using confusingly similar or identical marks for their goods or services. A trademark can also help you enforce your rights against infringers or diluters who may try to copy or misuse your mark.
Why Register a Trademark?
You may already have some trademark rights by simply using your mark in commerce, even if you have not registered it. This is called common law trademark rights, and they are based on the principle of first use. However, common law trademark rights are limited in scope and may not be enough to protect your mark from competitors.
Registering a trademark with the USPTO gives you several advantages over common law trademark rights, such as:
Nationwide protection. A registered trademark gives you exclusive rights to use your mark throughout the US, regardless of where you actually use it. A common law trademark only gives you rights in the geographic area where you use it.
Presumption of validity and ownership. A registered trademark is presumed to be valid and owned by you unless someone proves otherwise. A common law trademark may be challenged by anyone who claims prior use or superior rights.
Notice to the public. A registered trademark is listed in the USPTO’s online database, which anyone can search for free. This gives notice to the public that you claim rights to your mark and may deter others from using similar or identical marks.
Right to use the ® symbol. A registered trademark allows you to use the ® symbol next to your mark, which indicates that it is registered and warns others not to infringe on it. A common law trademark can only use the ™ or ℠ symbols, which do not have the same legal effect.
Right to sue in federal court. A registered trademark gives you the right to sue anyone who infringes on your mark in federal court and seek remedies such as injunctions, damages, profits, attorney fees, and treble damages. A common law trademark may only sue in state court and seek limited remedies.
Right to record with customs. A registered trademark gives you the right to record your mark with the US Customs and Border Protection (CBP), which can help prevent the importation of counterfeit or infringing goods bearing your mark.
Basis for foreign registration. A registered trademark can serve as a basis for registering your mark in other countries through international treaties and agreements.
How to Register a Trademark?
To register a trademark with the USPTO, you need to meet four basic legal requirements:
· You must file under your own individual or business name. The USPTO requires you to submit your contact information with a physical address where you can receive correspondence from them. P.O. boxes are not allowed.
· You must have ownership and address of the mark. You must be the owner of the mark and have a valid address where you can receive correspondence from the USPTO. You must also state your entity type (individual or corporation) and your national citizenship. If you are not a US citizen, you can still file but you have to use a US attorney.
· You must have a distinctive mark that is registrable. Your mark must be unique and not similar to or identical to any existing registered mark. You can use the Trademark Electronic Search System (TESS) to perform a search before you file. Your mark must also be used or intended to be used in commerce, meaning that you sell or offer your goods or services across state lines or internationally. Your mark must also fall into one of these categories of distinctiveness:
Fanciful marks: These are marks that are made up of invented words that have no meaning other than as trademarks. For example, Kodak, Xerox, and Google are fanciful marks.
Arbitrary marks: These are marks that are made up of existing words that have no connection to the goods or services they identify. For example, Apple for computers, Camel for cigarettes, and Amazon for online retail are arbitrary marks.
Suggestive marks: These are marks that suggest a quality or characteristic of the goods or services they identify, but do not describe them directly. For example, Coppertone for sunscreen, Netflix for online streaming, and Jaguar for cars are suggestive marks.
Descriptive marks: These are marks that describe a quality or characteristic of the goods or services they identify, but do not identify them directly. For example, American Airlines for airline services, Best Buy for electronics retail, and Sharp for TVs are descriptive marks. Descriptive marks are not inherently distinctive and may only be registered if they have acquired secondary meaning, which means that consumers associate them with a specific source.
Generic marks: These are marks that are the common name of the goods or services they identify. For example, aspirin, cola, and cheese are generic marks. Generic marks are not distinctive and cannot be registered.
· You must either be currently in use or have a bona fide intent to use the mark. You must choose between an intent-to-use or a use in commerce application. An intent-to-use application means that you have a good faith intention to use the mark in the future, but you have not started using it yet. A use in commerce application means that you are already using the mark in commerce at the time of filing for the goods and services applied for. To prove your use in commerce, you must submit a specimen, which is a sample of how you use your mark on your goods or services.
These are the legal requirements for registering a trademark in the US. However, registering a trademark may also involve other steps, such as examination, publication, opposition, and renewal. Therefore, it is advisable to seek legal advice from a trademark attorney who can help you with the process and avoid any pitfalls. Contact us today with any questions that you have or for assistance with your trademarks