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Filing a Trademark Registration Application

Thursday, 17 December 2015

by Seth Gomm, JD MBA

There are clear advantages to federal trademark registration. If a trademark is granted, it provides a presumption and notice of nationwide use. If you were ever to become involved in a trademark infringement dispute, possessing federal registration provides initial evidence of a valid trademark. Federal registration would also enable you to seek better statutory remedies against infringers under the Lanham Act.

To file a trademark application, you will need to provide the following information:
• The name and contact information of the entity or person to whom the mark should be registered.
• A depiction of the mark (this includes the words for a standard character mark and a copy of the logo for a design mark).
• A description of the goods or services on or in connection with which the mark is used.
• The date on which the mark was first used in commerce.
• A specimen, or picture, of the mark as it appears on merchandise or services that are used in commerce.
• The intended international class(s) that you are seeking protection with regard to the mark.

There are, of course, costs to seeking federal registration. First, the fee for filing a registration application with the Patent and Trademark Office (PTO) begins at $225 to $325 per international class, if filed electronically. This is in addition to attorneys’ fees to initially prepare the registration application and the cost of performing a third-party trademark search, if desired, for each mark. There could be additional attorneys’ fees and PTO costs incurred depending upon the actions the PTO takes in evaluating the application. The current average timeframe for registration of a mark is about nine to eighteen months; however, if there are any additional PTO actions or challenges, that timeframe would be extended. There are also additional fees and costs associated with maintaining and enforcing the marks.

There is also no guarantee that you will be successful in obtaining federal protection of any of the marks. For instance, the PTO could make findings during the process that could bar registration. This could include a finding of a likelihood of confusion between your trademark and another already registered trademark, or a finding that another trademark owner has priority of use of the mark and is therefore entitled to the mark.

ADDITIONAL RECOMMENDATIONS

• Once you start using use your marks in commerce, records and samples of the use (including the dates of use) of any marks should be saved in a database. These records will be useful when a specimen is required, or to maintain or enforce trademark rights in the future. For goods, “use in commerce” means that the trademark 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 service mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

• The marks to be registered must be used consistently (i.e., there should be no variation in the words or design).

• The notation “TM” or “SM” should be used to designate any marks until they are registered. Federal registration (and only federal registration) grants the right to use the distinctive circled “R” symbol.

• You should consider registration at the state level. The primary benefit of registering at the state level is that it takes substantially less time to go through the application process (the application itself is also more basic than a federal application). However, it does not afford the same protection as a federally registered mark and should not be considered in lieu of federal registration. State trademark registration mainly serves a notice function and offers limited protections.

This information is made available by Spaulding Law for educational purposes only and not to provide legal advice. By using this website, you understand that there is no attorney-client relationship between you and Spaulding Law, unless you have entered into a separate representation agreement. This information should not be used as a substitute for competent legal advice from a licensed professional attorney.

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