There are three ways to secure your rights in your trademark: (1) use the mark in commerce in connection with a good or service; (2) register the trademark with your state; or (3) register the trademark with the United States Patent and Trademark Office ("USPTO").
Once you use a trademark in commerce in connection with a good or service, you begin to acquire what are called "common law" rights in the mark, so long as it is not confusingly similiar to or dilutive of another's mark. The common law rights you gain in a trademark through use are limited to the geographic area in which you have actually used the mark, or those areas into which you have demonstrable plans to expand your use (the so-called "zone of natural expansion"). This limitation is less important for online ventures, however, as availability of your services over the Internet gives rise to a presumption of national trademark rights. It is important to note that if someone else is already using a confusingly similiar mark, you will be unabale to obtain rights in your mark and could potentially be liable for trademark infringement or dilution. If you intend to obtain rights in a trademark through simple use in commerce, then you must be sure to do an effective search of existing trademarks before you begin using it in connection with your good or service. Please see our section on Naming Your Business: Searching for the Trademarks of Others for details. For more information on how to acquire trademark rights, see Sarah Bird's excellent post, Trademark Basics: Be First in Your Market, Be Distinctive, and Don't Confuse the Consumer.
You may also choose to register your trademark with your state or with the United States Patent and Trademark Office, but you are not required to do so in order to bring a lawsuit to protect it against infringement or dilution. State registration is likely to be both cheaper and easier than federal registration, but is probably not the best option for online activities, which by definition have a national and international scope. However, if you would like to find out more about your state's registration process, you can contact your state authority responsible for trademark matters.
Registering a trademark with the USPTO puts the country on notice that you are using a certain mark, and also provides additional protections and procedural benefits if you need to litigate your rights. However, this process is fairly long (usually taking a year or more) and potentially expensive (the fees start at $275). We provide more information about the federal registration process below.
Benefits of Federal Registration
As noted above, federal trademark registration is not required for you to protect your trademark. However, registration provides some advantages. Specifically, registering a trademark with the USPTO provides the following benefits:
- a public record of the trademark claim, which puts others on notice;
- presumptive evidence of trademark ownership and exclusive right to use the trademark throughout the U.S. (if you sue to protect the trademark, this will help you make your case);
- a U.S. registration can be used as the basis for obtaining registration in foreign countries; and
- the ability to file a suit related to the trademark in a federal court and recover the defendant's profits and up to three times your actual damages, as well as your attorney fees if the court finds the case to be exceptional.
Because federal registration is expensive, you'll want to weigh these benefits against the out-of-pocket costs of obtaining a registration.
How to Register
Once you have decided to federally register your trademark, you can
file the necessary forms to apply for federal trademark registration
with the United States Patent and Trademark Office online. The cost is between $275-375 per mark for each International Class in which you seek registration, depending upon the filing method you chose.
The USPTO estimates that filling out the form should take about 15-20 minutes, although first time filers are likely to take longer. A federal application must contain at least four things, in addition to the filing fee: (1) the owner's name and address, (2) a clear drawing of the mark (which can be automatically generated from text if you do not have a logo); (3) a description of the goods or services for which the mark is or will be used and the corresponding International Class number(s); and (4) the filing basis.
You can register your trademark for use in connection with more than one set of goods or services, but you will have to pay an additional filing fee if the goods and services you list fall into more than one International Class. The USPTO has available a searchable index of identifications for goods and services that they recommend you use for your application, but you can also type in something else if your product or service does not fit into one of these categories. If your business does not clearly fall within one category of goods or services, you may want to consider filing in more than one class, as this will would give you the greatest protection and flexibility. The downside to seeking registration in more than one class, aside from the additional filing fees, is that you are more likely to encounter a conflict with someone else who is using the mark or a similar one in another field or industry. Furthermore, if you do expand in the future, you can apply for a new registration at that time (unless someone else has already registered the mark in that area).
There are two
different filing bases for a new trademark application: use based, or
intent-to-use. If you have already begun using the trademark in
interstate commerce, you should file a use based application. To do so, in addition to filling out the application, you must supply the USPTO with a specimen showing the mark as it is used in connection with your goods or services, as well as the date(s) on which you first used the mark anywhere and in interstate commerce. If you have not yet begun using the trademark, you should file an intent-to-use
application. You will be required to submit a specimen and date of
first use later in the application process before your mark is allowed
If this process sounds too complicated for you, you can hire an attorney to do it. Trademark registration is usually fairly straightforward for attorneys who specialize in it, so it is relatively inexpensive.
Within about 3-6 months after you file the registration forms an attorney with the USPTO will examine and research your application. There are several categories of marks that the USPTO will refuse to register, including "immoral, deceptive, or scandalous" marks (such as those including foul language), those that disparage or falsely imply a connection to other people or entities, and marks that are confusingly similar to others that are already registered.
The USPTO attorney may contact you to resolve any issues in your application, by issuing what's called an "Office Action." If you receive an Office Action, you will have six months in which to respond to any issues raised by the examining attorney. If the issues raised in the Office Action are too complex, you may want to hire an attorney to draft your response.
If the USPTO approves your application, it will publish your trademark in the Official Gazette, and anyone who believes that they would be damaged by its registration (such as a senior user of a confusingly similar mark) will have thirty days in which to oppose registration of the mark. If no one opposes (or requests an extension of time to oppose) within those thirty days, the USPTO will either approve your mark for registration (if you have already submitted an acceptable specimen of use) or issue a Notice of Allowance (if your application is still based on an intent-to-use). If the USPTO issues a Notice of Allowance, you will have six months from the date on which it was issued to either submit an acceptable specimen, or request an additional extension of time in which to do so. You can request up to five 6-month extensions of time in which to submit a specimine of use. All told, the registration process can easily take 1-2 years, but once it is approved your rights date back to the day on which you filed your application.
For additional details on registering a trademark, see the Chilling Effects FAQ on Trademark.
Maintaining Your Trademark Rights
Trademark rights can last indefinitely so long as the trademark owner continues to use the mark in commerce to identify goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms upon filing an affidavit of continued use, along with a specimen of use. In addition, between the fifth and sixth years after the date of initial registration, the registrant must file an additional affidavit confirming that the mark is still in use in commerce in order to maintain the registration. If no affidavit is filed, the registration is canceled. At this time, if the mark has been in continuous use in interestate commerce for five years following the date of registration, the owner can file an affidavit of incontestibility that, if accepted by the USPTO, will significantly narrow the grounds upon which a third party can seek to have the registration cancelled.
In addition to renewing your registration (should you choose to register), you need to take some additional steps to make sure that you do not lose your trademark rights:
- Periodically check whether another individual or company is using your trademark in a way that is confusingly similar to your use of the mark. If you see something like this, you should probably send a cease-and-desist letter and contemplate filing a lawsuit. Otherwise, a court might later determine that you have abandoned your trademark. We know that this may be objectionable to some, but it is one of the costs of asserting trademark rights. Remember that nothing requires you to acquire or enforce trademark rights in the first place.
- Try to use the mark continuously. If you stop, keep a record of why you stopped, and your plans to resume use of the mark in the future. Otherwise, a court might determine that you have abandoned it.
- Discourage others from using your trademark as an ordinary verb or noun, or it might become generic. For example, if consumers refered to xeroxing documents instead of photocopying them, blowing their noses with kleenex instead of facial tissues, and googling things instead of using a search engine, at some point the owners of the marks Xerox, Kleenex, and Google would lose the ability to prevent others from using those terms to describe their own products or services. This in fact happened to aspirin (formerly a trademark of Bayer), cellophane (formerly held by DuPont), and escalator (created by the Otis Elevator Company), among many other words that we now take for granted. The basic test is whether consumers generally understand a word as referring to the products or services of one company or individual (e.g., Xerox with a capital "X") or as including all makers of a certain product or service (e.g., Canon and HP make a xerox machine with a lowercase "x"). Admittedly, it is not easy to control the public's diction, but you can start yourself by only using the term in its trademark sense.
You can choose to include a trademark notice next to your trademark, but you are not required to do so in order to protect the mark. A trademark notice indicates to others that you claim ownership of the trademark in connection with the goods or services in question, warning them against possible infringement. Any time you believe you have a rightful claim to a mark you may designate the mark with a TM (for goods) or SM (for services). You do not have to register the mark to use these notices. In addition, if you choose to seek federal registration of your trademark, you can use these notices during the registration process. If you obtain a federal registration, you will probably want to use the more powerful ® notice, which can only be used after a successful registration with the USPTO. Even then, you can only use the ® notice in connection with the goods or services listed in your application for registration.