Trademark Registration (U.S.)

A registered trademark gives a trademark owner the right to use the ® symbol on its mark whenever the mark is used in accordance with the registration.  As opposed to the “TM” symbol, which can be used without restriction, the ® symbol carries a number of advantages, including the presumption that you have senior or superior rights to the mark over anyone else in the country, as well as constructive notice that you claim exclusive ownership in the mark in the country, which consequently allows you to bring a federal lawsuit against anyone who copies or uses similar versions of the mark.  In addition, the registered trademark may be used as a launching pad for establishing trademark rights in foreign countries.

But the ® symbol is reserved to those who succeed in registering their trademarks with the US Patent and Trademark Office (“USPTO”).  To do this, you must first prepare and file a trademark application for the mark with the USPTO, and outline the goods and/or services associated or used with the mark.

Generally, the trademark registration process begins with a trademark database search to determine whether the mark is a good candidate for registration.  Factors involved in determining this include, the use of the mark by 3rd parties, the use of similar marks in association with identical or similar goods/services by 3rd parties, as well as other factors.  After a search is conducted and analyzed, one can assess the ‘trademarkability’ of the mark and map a plan for registration.  The application involves a number of preparatory actions, such as choosing the proper form of the trademark to file, creating correct drawings of the mark, finding appropriate specimens of the mark if the application is a Section 1(a) filing, and determining what the proper scope of the goods and services description should be.

Upon filing the application, it is assigned to a trademark examiner, who examines the application for procedural and statutory compliance and reviews the application to make ensure that it is unlikely to be confused with an existing trademark registration. Customarily, the examiner presents his/her concerns and reservations through a written process know as an ‘office action’, which may be rebutted by written arguments and case law.   If the arguments are successful, the application will eventually be published for opposition (a forum for 3rd parties to voice their concerns regarding the pending registration), and if no one opposes the mark, it will be registered.

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