A summary of the benefits of federal trademark registration and the trademark prosecution process
Imagine you’ve spent endless days developing your company to to the point when you can finally declare, “success”! How will you know you’ve reached that point? It’s when someone starts selling counterfeits of your products or purposely starts using a trademark similar to yours. Another way you know you’ve arrived is when a big company, unaware of you, starts using a mark similar to yours and, because your mark has become valuable, you decide you’d be willing to pay big money to defend your right to keep using it. Here’s where a trademark registration with the U.S. Patent and
Trademark Office can help you address these problems
Why register your trademark?
For small companies just starting out, registering a trademark is a powerful way keep big companies from choosing to use similar marks. Big companies or well-funded people will only use marks that they themselves can register with the Patent and Trademark Office. And if you have registered your mark, their lawyers will steer them away from adopting a mark identical or confusingly similar to yours because the Patent and Trademark Office won’t register the mark to them.
For established brands, having a trademark registration makes protecting your rights against infringement much easier. Someone is selling counterfeit goods on Craigslist or eBay? When you contact those sites, to stop the counterfeiter, the first thing they’re going to ask you is your trademark registrations. Someone started using a mark confusingly similar to yours? The cease-and-desist letters you or your lawyers will need to write carry much more weight when they cite a federal registration.
Those are just some of the main practical reasons for registering your marks. There are also a host of legal reason such as:
• the ability to recover attorneys fees if you need to sue an infringer
• the ability to enlist the U.S. Customs Services to stop counterfeit goods from being imported into the U.S.
• a presumption that the mark is valid and that you have the exclusive right to use it throughout the U.S.
• the right to sue in federal court even when the infringer resides in the same state where you file
• Five years after registration, other people cannot attack your mark on the basis that it is confusingly similar to their mark, that your mark is merely descriptive, or that it merely functional
The process to register a mark
The registration process begins by filing an application with the Patent and Trademark Office. Three to four months later, an examining attorney reviews your application. He or she will decide whether to issue an Office Action letter, raising an objection to your application, or clear your application to be published in the Official Gazette. If you receive an Office Action, you’ll have six months to respond. But if the application goes to publication, there will be a thirty-day period for people to file oppositions, if they believe they’ll be damaged by you obtaining a registration. If no one objects you’ll receive a certificate of registration about three months after the end of the opposition period. The whole process takes about ten months, if there are no big issues.