How to File for a Trademark for Your Small Business
A trademark is a legal (intellectual property) protection granted by the United States Patent and Trademark Office (USPTO). When you file for a trademark for your business, you are taking a step to secure your intellectual property rights. A trademark is a word, phrase or symbol, and/or design that distinguishes a source of goods from one party from those of another. Trademarks are used for products. It’s important to remember that a Service Mark is a word, phrase, symbol, and/or design that is used for services. This is a common misunderstanding.
What is the USPTO?
The United States Patent and Trademark Office (USPTO) is a fee-funded agency of the U.S. Department of Commerce. You wile file for a trademark directly with the USPTO. The role of the USPTO is to grant patents for the protection of inventions and to register trademarks and service marks for products and services, respectively. It serves the interests of small and large businesses as well as consumers, and helps strengthen the economy by promoting the industrial and technological progress of the nation.
For small businesses, a trademark can provide powerful protections against unfair or out-sized competition. Any breach of a duly registered trademark right is protected by the full force and confidence of the US Government. Violation of a trademark has serious consequences for those who would abuse it and therefore a properly registered trademark is a powerful tool for businesses of any size.
What is Trademark Registration?
A trademark can be either registered with the USPTO or maintain what is known as “common law” status. You are not obligated to register your trademark and still have protections under US law. However, registering your trademark affords you some very powerful protections, including:
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);
- Public notice of your claim of ownership of the mark;
- Listing in the USPTO’s online databases;
- The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol “®”;
- The ability to bring an action concerning the mark in federal court; and
- The use of the U.S. registration as a basis to obtain registration in foreign countries.
Unlike other types of intellectual property protections such as patents and copyrights, a trademark does not have a set expiration date. They can theoretically last forever. Once registered, your trademark remains valid by using it in the regular course of commercial activity. A trademark registration can also last forever as long as you file specific documents and pay fees at the set intervals.
Do You Need an Attorney to File for a Trademark?
If you live outside the United States, you are required to retain an attorney in order to file for a Trademark.
US citizens living within the national border of the United States are not required to hire an attorney to file for a trademark. However, filing a trademark is considered a legal transaction and is a highly complex process. It is recommended that you consult a lawyer to file your application. Keep in mind, if you hire an attorney to represent you, the USPTO will only communicate with your lawyer regarding your application. That said, many people do file applications successfully without an attorney. The USPTO web site has an abundance of information and training videos to assist those do-it-yourselfers navigate the application and maintenance process. In addition, once you begin your application process, you will be assigned an examining attorney who works for the USPTO. Your USPTO trademark examining attorney will try to help you through the process even if you do not hire a lawyer. However, no USPTO attorney may give you legal advice.
Some Pitfalls and Scams to Be Aware of During the Trademark Filing Process
After you make your application to the USPTO, your information becomes public. Like other types of public information about you or your business, there are those who are looking to exploit your potential inexperience. You can expect to receive a flood of solicitations (via phone, email, and regular mail) and notices regarding your application. Many of these notices will look like official documents telling you to remit payments or risk having your application terminated. Be careful with these notices, the USPTO will rarely contact you via these methods other than to send you approval notices and certificates. Many of these solicitations are business scams.
Most of your correspondence with the USPTO will be via the password-protected portal you are given access to when filing. If you are unsure about any correspondence you receive, contact your Trademark Examining Attorney at the USPTO and ask directly, they are there to assist you.
How is a Trademark different from a Patent or Copyright?
It’s important to understand the difference between legal intellectual property protections. Use the following rules of thumb as a basic guide to distinguishing between the different categories of protection. As discussed above, trademarks generally protect brands and logos used on goods. A copyright is used for protecting original artistic or literary works. A patent generally protects an invention. For example, if you invested a new kind of car engine, you would use a patent to protect the idea itself (method and process), a trademark to protect the name you give your invention and a copyright to protect the advertisement for the new engine.
Keep in mind, just because you own a web domain or URL for a web site, or have a business name registered, that does not give you trademark protection. You must apply for the trademark specifically for the name or logo you wish to protect.
How to File For a Trademark
Before you apply for a trademark, it is important to understand if your mark (word, phrase or logo/design) can qualify. This includes checking to see if your proposed protection conflicts with other, already established marks. This can be complex and confusing.
Before filing a trademark/service mark application, you should consider (1) whether the mark you want to register is registrable, and (2) how difficult it will be to protect your mark based on the strength of the mark selected. Note in this regard that the USPTO only registers marks. You, as the mark owner, are solely responsible for enforcement. -USPTO