A trademark is something like words, phrases, logos, designs, marks, etc., that are placed on a product or used in advertising/marketing that identify your company as the commercial source of the goods or services. Trademarks are intangible property — that is, intellectual property. As property, trademarks are protected by statutory law and by Anglo-American common law. However, like other forms of property, trademarks are given and entitled to enhanced legal protections if the procedures are followed to register the trademarks.
In the United States, trademarks can be registered at the State level and at the federal level. In the U.S., registration of trademarks to provide enhanced legal protections began at the state level in the mid-1800s. Federal registration of trademarks did not truly begin until the early 1900s. In this century, most U.S. trademarks are registered at the federal level. However, some trademarks are still registered at the state level and, indeed, for some goods and services, like cannabis-related businesses, trademarks can only be registered at the state level. A trademark cannot be registered in association with an illegal product or service.
Trademarks used in international commerce at the global level are also protected by trademark law. However, there is no international body or organization that registers trademarks at the international level. Rather, trademarks used in international commerce must be registered in each country where the trademark is used. There are some international treaties that standardize and simplify cross-border registration of trademarks.
The enhanced legal protections provided by trademark registration include:
- Legal priority of use and ownership if your trademark is challenged by another company using the same or similar trademark
- The authorization to use the circle R symbol on your goods, packaging and marketing
- After five years (at the federal level), the trademark becomes “incontestable”
- Enhanced damages and statutory damages are available in trademark infringement litigation
- Easier proof of the elements of trademark infringement in trademark infringement litigation
- Additional causes of action become available for “famous” trademarks
- Registration provides per se proof of ownership of a trademark for various legal matters like contesting domain name ownership, issuing notices of infringement and online take-down demands, and obtaining action from the U.S. Border Control Services combating importation of counterfeit goods
- Nationwide constructive notice of your trademark (which often prevents an infringer from claiming an innocent or accidental infringement)
The process of obtaining a registered trademark involves completing and filing application forms and paying the designated governmental fees. At the federal level, trademarks are registered by the U.S. Patent and Trademark Office (“USPTO”). Generally, the first step is to conduct a trademark clearance search to ensure that your trademark satisfies the legal requirements and not already being used.
The next two steps involve a combination of using the trademark in interstate commerce and filing an application for registration with the USPTO. A trademark is not valid unless it is actually used in commerce; for federal trademark registration, commercial use must be in interstate commerce. If your company has already been using the trademark, then the USPTO application is for a traditional registration. The other option is to file an intent-to-use application for registration. If this is granted by the USPTO, then use of the new trademark must begin within a few months before the trademark will be deemed registered.
Contact the Trademark Attorneys at Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
