Before a business begins to use or files to register a trademark, it should research if other businesses are using the same mark for the same services, or if any have in the past. It should also do the same for any related, or similar marks for similar goods or services. This sort of search is designed to find federal trademark registrations, pending applications for federal registration, and common law (unregistered) trademarks that are in current use.
Such search should be conducted and reviewed by an experienced trademark attorney who can determine whether your proposed mark is, or may be considered, confusingly similar to a preexisting mark and can assess the risks associated with such finding. For example, if your proposed mark is confusingly similar to a preexisting mark, you face the risk of receiving a cease-and-desist letter or trademark infringement claim from the prior mark owner. You could also lose the investment and goodwill in your mark and spend considerable sums to re-brand your business if forced to cease usage.
Additionally, you will not be able to federally register your mark if it is confusingly similar to a mark covered by a prior federal registration or a prior-filed pending application. A trademark attorney can also advise whether your mark is distinctive (and thus capable of federal registration) or whether it is too descriptive to qualify for registration because the mark describes some feature, characteristic, function or purpose of the products or services to be provided under the mark.
It is far better to know and understand these risks early on so that you can make an informed business decision and avoid unnecessary costs and business interruption in the future. A modest amount of money spent clearing and registering a mark upfront can avoid claims and enhance the strength, scope of protection and enforceability of your mark.
Moreover, in some instances, a business’ failure to conduct a thorough trademark search has been found to constitute bad faith and has weighed in favor of a finding of willful infringement, resulting in a greater damages award, including attorneys’ fees.
If the trademark search reveals no potential conflicts with preexisting marks, the next step is to determine whether the mark is, or is expected to be, used in “interstate commerce.” To qualify for federal registration, a mark must be used in “interstate commerce.” This generally involves selling or transporting a product in more than one state with the mark affixed to the product or its packaging, rendering services under the mark to persons in more than one state, or rendering services under the mark which affect interstate commerce (such as restaurants, hotels, gasoline stations, or other businesses which serve interstate travelers). If you only expect your mark to be used in connection with products or services to be provided exclusively within one state, consult an attorney to see if you can meet the “interstate commerce” requirement.
Assuming there are no conflicting marks and your business is using a distinctive mark (or planning to use such mark) in interstate commerce, you can move forward with the registration process.
Applications for federal trademark registration are made to the United States Patent and Trademark Office (USPTO) and can be filed on-line at www.uspto.gov. Marks may be registered based on actual use of a mark in interstate commerce (i.e., a Use application) or on the basis of a bona fide intention to use a mark in interstate commerce (i.e., an Intent to Use application). The filing fee for an on-line trademark application ranges from $225 to $275 for each international class of goods and services for which the applicant seeks registration.
For example, if you wanted to register the name of your restaurant, you would register the name in international class 43 covering restaurant services. If you are also planning to use the mark on t-shirts, you would want to register it for a second class as well—class 25 for clothing. The classification system is set forth on the USPTO website.
The trademark registration process generally takes 9 to 18 months, and includes the following steps:
- Application Filing
- Assignment of Application to An Examiner – Typically within 3 months of filing
- Issuance By the Examiner of Office Actions – Communications from the examiner identifying issues with the application and the basis for any refusal to register the mark. The first one is generally issued within 6-7 months of filing, and further Office Actions could be issued if the matters raised in the first one are not satisfactorily addressed
- Notice Of Publication – If the mark is approved by the examiner. The timing of this notice depends upon the time involved in the Office Actions phase
- Publication Of the Mark in The Official Gazette – Published for a 30-day opposition period, during which time third parties have the right to oppose registration of the mark
- Issuance Of Registration – Final step if no opposition is filed
If an Intent to Use application is filed, there are additional steps in the process. This includes the issuance of a Notice of Allowance following the opposition period (if no opposition is filed), and the filing of a Statement of Use confirming and demonstrating the use of the mark. The Statement of Use is to be filed within 6 months of the notice of allowance or it can be filed earlier in the process any time the mark is in use. Finally, registration will issue following acceptance of the Statement of Use.
There are instances where an application moves through the process without any issues being raised. However, typically issues are raised that need to be addressed with the examiner. They can be addressed in a phone call, e-mail or written Office Action response, depending on the nature of the issue.
If you need help understanding your trademark rights, or searching, clearing or registering trademarks, Goodell DeVries can help. Contact Donna Thomas, Esq. at 410-783-3522 or dthomas@gdldlaw.com.