Registering a Trademark
You
can establish rights in a mark based on legitimate use of the mark.
However, owning a Federal trademark registration on the Principal
Register provides several advantages, including the following:
- Constructive notice to the public of the registrant's claim of ownership of the mark;
- A legal presumption of the registrant's ownership of the mark and
the registrant's exclusive right to use the mark nationwide on or in
connection with the goods and/or services listed in the registration;
- The ability to bring an action concerning the mark in Federal court;
- The use of the U.S. registration as a basis to obtain registration in foreign countries; and
- The ability to file the U.S. registration with U.S. Customs and
Border Protection to prevent importation of infringing foreign goods.
Registering a Trademark
You
can establish rights in a mark based on legitimate use of the mark.
However, owning a Federal trademark registration on the Principal
Register provides several advantages, including the following:
- Constructive notice to the public of the registrant's claim of ownership of the mark;
- A legal presumption of the registrant's ownership of the mark and
the registrant's exclusive right to use the mark nationwide on or in
connection with the goods and/or services listed in the registration;
- The ability to bring an action concerning the mark in Federal court;
- The use of the U.S. registration as a basis to obtain registration in foreign countries; and
- The ability to file the U.S. registration with U.S. Customs and
Border Protection to prevent importation of infringing foreign goods.
Any time you claim rights in a mark, you may use the "TM" (trademark)
or "SM" (service mark) designation to alert the public to your claim,
regardless of whether you have filed an application with the USPTO.
However, you may use the Federal registration symbol "®" only after the
USPTO actually registers a mark, and not while an application is
pending. Also, you may use the registration symbol with the mark only
on or in connection with the goods and/or services listed in the
Federal trademark registration.
Starting the Process
Step 1: Is your product eligible for a trademark?
Most U.S. applicants base their application on their current use
of the mark in commerce, or their intent to use their mark in commerce
in the future. What is "use in commerce"?
For the purpose of obtaining Federal registration, "commerce" means all
commerce that the U.S. Congress may lawfully regulate; for example,
interstate commerce or commerce between the U.S. and another country.
"Use in commerce" must be a bona fide use of the mark in the ordinary
course of trade, and not use simply made to reserve rights in the mark.
Generally, acceptable use is as follows:
- For goods: the mark must appear on the goods, the container for the
goods, or displays associated with the goods, and the goods must be
sold or transported in commerce.
- For services: the mark must be used or displayed in the sale or
advertising of the services, and the services must be rendered in
commerce.
If you have already started using the mark in commerce, you may file
based on that use. A "use" based application must include a sworn
statement (usually in the form of a declaration) that the mark is in
use in commerce, listing the date of first use of the mark anywhere and
the date of first use of the mark in commerce. A properly worded
declaration is included in the USPTO standard application form. The
applicant or a person authorized to sign on behalf of the applicant
must sign the statement. The application should include a specimen
showing use of the mark in commerce.
Step 2: Conduct a trademark search
The next step is to search our database, before filing your
application, to determine whether anyone is already claiming trademark
rights in a particular mark. You may conduct a search online for free
via our TESS (Trademark Electronic Search System) database.
If your mark includes a design element, you will need to search it by
using a design code. To locate the proper design code(s), please
consult the Design Search Code Manual.
Registering a Trademark
You may file your trademark application online using TEAS - the Trademark Electronic Application System.
TEAS allows you to fill out an application form and check it for
completeness, and then submit the application directly to the USPTO
over the Internet. You can pay by credit card, through an existing
USPTO deposit account, or via electronic funds transfer.
You may also contact the Trademark Assistance Center
for a hard copy of the Basic Facts brochure, or a paper form. Paper
forms are not processed as quickly as those submitted electronically,
however.
Registering a Trademark Overseas
Federal
registration is not valid outside the United States. However, if you
are a qualified owner of a trademark application pending before the
USPTO, or of a registration issued by the USPTO, you may seek
registration in any of the countries that have joined the Madrid
Protocol by filing a single application, called an "international
application," with the International Bureau of the World Property
Intellectual Organization, through the USPTO.
Also, certain countries recognize a United States registration as a
basis for filing an application to register a mark in those countries
under international treaties.
Read Small Business Copyright Information
|
Subscribe to this comment's feed
