Trademark Registration - Explanation of the Purpose and Value

Many entrepreneurs wonder about the value of a trademark registration and whether it makes sense to incur the cost of filing and prosecuting an application to register their trademarks marks. This is understandable, since it is the marketing and quality of goods or services that brings customers into the business, not a trademark registration. However, business owners and entrepreneurs need to understand that trademark registrations protect the brands that they have built through extensive time, energy, and funds spent on creating its marks and branding, advertising the brand, promoting its business name, and training employees to provide quality goods and services.

A business owner does not want a competitor in its market or potential areas of market growth to adopt trademarks or a business name that creates inadvertent or intentional brand confusion. Filing a trademark application to obtain a federal registration of a trademark or service mark (which are generally referred to as "trademarks") establishes nationwide priority over any third party later attempting to use or apply for registration of the same or similar mark. And, if the United States Patent and Trademark Office (USPTO) approves the mark for registration, it provides a nationwide right to exclude others from using the mark in connection with the goods and/or services identified in the application. This exclusivity of use is a primary benefit of a registration. The right to exclusive use eliminates of a Johnny-come-lately business lawfully adopting a confusingly similar mark in the same market or another US market. This is a powerful tool for protecting the business name, branding, and reputation of a business.

A federal registration also allows its owner to sue those using confusingly similar marks for infringement with a legal presumption that the registration is valid, thus putting the burden on the infringer to try to attack the validity of the registration and/or show that the infringer is justified in using its mark. This means that the owner of the registration can file an trademark infringement lawsuit in federal court and the court will presume that the registrant owns the trademark and has valid trademark rights. There are also powerful remedies available to the owner such as an injunction barring the infringer from further use of the infringing mark.

The ® symbol can be lawfully used on only registered trademarks and service marks. The ® symbol is universally recognized as an indication of proprietary rights in a mark, and provides notice to third parties of the registrant's exclusive rights in the mark. The ® symbol also provides some cachet to the owner's brand in the eye of the consumer and the market. It indicates that the owner takes its business seriously and plans to maintain a quality, long-standing brand.

Under section 22 of the Lanham Act (federal trademark act), registration of a mark and the use of the ® symbol puts everyone on notice of the registrant's use of the mark. If a third party uses a confusingly similar mark, he cannot avoid liability by claiming (truthfully or not) that he was unaware of the registration. When a trademark is registered with the USPTO, liability arises without actual knowledge of the owner's ownership of the mark as long as the ® is placed next to the registered mark in connection with the owner's goods or services.

Trademark registrations are published through the Trademark Electronic Search System (TESS) database and the Trademark Status & Document Retrieval (TSDR) system provided by the USPTO. This allows anyone to search existing trademark applications and registrations to see whether there are any pre-existing uses of their proposed mark or confusingly similar marks. The TESS and TSDR system thus provide a convenient means for businesses to vet their trademarks before they commit to using them, thereby avoiding the adoption of marks that are confusingly similar to prior registrations and reducing the number of infringements. Of course, not every business is aware of the TESS and TSDR systems or cares to use them. But, for the wary and scrupulous, the TESS and TSDR systems reduce the risk of infringement disputes.

Trademark registrations are becoming increasingly important for businesses who rely on internet advertising and commerce. For example, Amazon launched a brand registry service for businesses protects their brands and products from trademark infringement and/or counterfeit goods on the Amazon platform. However, Amazon will only allow a business on the brand registry if it has a US trademark registration for the trademark associated with the brand. Additionally, infringement can often happen on social media platforms like Instagram, Facebook, and Snapchat. As examples, another business may use a social media account to advertise its products or services with a username (a “handle”) that is confusingly similar to one or more of your trademarks and/or your username, or another business may sell goods through a social media platform under a confusingly similar mark. These social media platforms generally will not remove accounts or content from their platforms (through a “takedown request”) on the basis of infringement, unless they are provided with a trademark registration.

Trademark registrations can be recorded with the US Customs and Border Protection (CBP), enabling the CBP to block imports that infringe the registered mark or feature a counterfeit use thereof. The CBP enforces US trademark registrations without costs to the owner of the registration. The CBP has legal authority to make infringement determinations and to detain, seize, examine, forfeit, and destroy infringing goods, pursuant to such determination. The CBP takes intellectual property rights seriously and makes many thousands of seizures of infringing goods each year. The owner of a registration can aid the CBP's enforcement by notifying the CBP of a known infringement through an online notification portal here.

US trademark registrations are likely more attractive to potential licensees than a common law trademarks because registered marks hold nationwide exclusivity. Common law trademark rights are limited to the specific geographic area in which they are used in commerce. Additionally, a trademark license can be recorded with the USPTO, giving the licensee officially recorded rights. If the license so allows, the licensee may have the right to institute legal proceedings itself and thereby police the market for infringing trademarks.

A trademark registration creates a legally recognized intangible property that can be easily identified on a list of assets for a business.

Registered trademarks can be pledged as security to secure a loan much the same way as tangible property. The use of intellectual property assets as a source of financing for the owner has grown to be a common practice. Companies routinely leverage their IP assets, including trademarks, to obtain financing and lenders are generally willing to accept such assets as collateral.

A trademark application filed in the US can be used as a basis to obtain a registration in other countries with the benefit of the US filing date, if the foreign applications are filed within six months of the US application. The US registration provides a starting point for protecting a business's trademark rights in a multi-national or worldwide scope.

In the case of counterfeiting, a registration allows the owner to recover up to triple the actual damage amount (treble damages) and attorney fees. Alternatively, the owner can pursue statutory damages of $1,000 to $200,000 per type of goods or services sold, offered for sale, or distributed. The statutory damages remedy relieves the owner from having to demonstrate actual damages in order to receive a monetary award.

The registration process requires that a trademark application be filed with the USPTO. Trademark applications and the application process are conducted through the USPTO's online services portals, including the TEAS. In order to file an application through the TEAS, the filing attorney or application needs a uspto.gov account. There are two filing options: an intent-to-use application (an "ITU" under 1(b) Section 1(b)) and a current use application (under Section 1(a)). The applicant can utilize the ITU filing basis if the applicant has not yet established trademark use, if the applicant has a bona fide intent to use the mark in commerce.

The USPTO provides a manual for selecting pre-determined, standardized identifications of goods and services for an application. These form identifications provided in the manual can be included in the application, if they accurately reflect the applicant's goods and services. If the applicant can utilize the form identifications, the application will qualify for TEAS plus status, which means the applicant will avoid additional fees when filing the application (required fees are $250). In some situations, the trademark owner may not find a standard identification that provides an accurate description of their goods and services. If the applicant opts to not use the standard identifications, the application will be a TEAS standard filing, and the applicant will have to pay additional fees (filing fees are $350). A single application may include multiple kinds of goods and services in a number of classes. However, additional filing fees must be paid for each class of goods and services.

The application must provide an accurate description of the mark and the goods and services. The application must also provide a an accurate date of first use of the mark in commerce, if the applicant asserts current use in commerce (under section 1(a)). A 1(a) application must also provide a specimen demonstrating how the mark is used in commerce. The application must also furnish formal information about the applicant (e.g., address, email, etc.). Once the application forms are properly filled, the applicant may file the application. A filing receipt and serial number will be provided after submission, establishing a priority date for the application. The application will then pend for several months until the examination process begins. 

An examiner at the USPTO will be assigned to examine the application. Typically examination begins within about six to nine months. The examiner will perform a search of prior trademark filings that are similar to the applied-for mark. If it is found that the applied-for mark is likely to cause consumer confusion with previously filed marks, a refusal under section 2(d) of the Lanham Act will be issued. The examiner will also evaluate the mark for formal issues such as genericness, descriptiveness, the presence of names, and geographic designations in the mark. If the examiner finds that any of the foregoing issues or possible other issues are present in the application, an office action will be mailed to the applicant or their attorney. The applicant then has six months to respond to the office action. A response may include legal arguments, amendments to the listing of goods and services, and other submissions to overcome the issues raised by the examiner in the office action.

If the applicant or attorney is successful in convincing the examiner that the application is registrable, the examiner will approve the application and issue a notice of publication. Every application must be published for opposition before being registered. After the notice of publication is issued, the application will be published in the USPTO official gazette for a 30-day publication period. Any third party that believes that its trademark use or rights will be impinged by the published mark has the opportunity to file an opposition proceeding against the published mark in the Trademark Trial and Appeal Board (TTAB). If no opposition is filed during the publication period, the examiner will issue a notice of allowance (in the case of an ITU application) or a registration certificate (in the case of a current use application). In the case of a notice of allowance, the applicant must file a statement of trademark use once use in commerce is established (i.e., there is a first sale of the goods and services in connection with the trademark).

The entire process of registering a trademark typically takes from about nine months to two years depending on the number of office actions issued and how quickly responses to the office actions are provided.

Trademark registrations are an invaluable tool for protecting the brand and reputation of a business. For most businesses it is well worth the monetary investment to pursue a registration. While many businesses attempt to pursue protection of their trademarks without the assistance of an attorney, there a many subtleties in the requirements, rules, and process for obtaining a registration that may prove treacherous for the unwary. The USPTO regularly recommends that applicants seek the assistance of an experienced trademark attorney in pursuing a trademark registration, and provides explanations of the benefits of hiring a trademark attorney here.