How to Secure a Trademark

How to Secure a Trademark

Securing a trademark for your business name, logo, or catchphrases is a vital step in safeguarding your creative assets. Discover a straightforward guide on initiating the registration procedure, understanding the associated expenses, estimating the duration, and more.

Trademark Registration and Its Benefits

Registering a trademark with the U.S. Patent and Trademark Office (USPTO) is not a mandatory requirement for trademark protection. Trademark rights can be acquired through common law by merely using your trademark in your business. However, opting for registration offers several key advantages:

1. Public Notification: Registration serves as a public announcement of your claim to ownership of the trademark, potentially deterring others from using it.
2. Legal Presumption: Registration establishes a legal presumption that you are the rightful owner of the mark and possess the nationwide right to use it for the goods and services specified in your trademark application. This presumption can be crucial if you need to take legal action to protect your trademark rights.
3. Federal Court Lawsuits: Registered trademark holders can initiate lawsuits in federal court to enforce their trademark rights.
4. International Protection: A U.S. trademark registration can serve as a foundation for obtaining trademark protection in other countries.
5. Customs Protection: Registered trademark owners can work with the U.S. Customs and Border Protection Service to prevent the importation of infringing goods.
6. Use of ® Symbol: Registered trademark owners are entitled to use the ® symbol, which further emphasizes their trademark’s protected status.
7. Database Listing: Registered trademarks are included in the USPTO’s online databases, acting as a deterrent to potential infringers.

Usage of TM, SM, and ® Symbols

• The TM symbol indicates your claim to a trademark and can be used without USPTO registration. Anyone asserting ownership of a trademark can employ the TM symbol.
• Similarly, the SM symbol is used for service marks. You can use these symbols even if your trademark registration application is rejected by the USPTO.
• The ® symbol denotes a registered trademark, but it can only be used once the USPTO has approved your application and issued a registration certificate. You are limited to using the ® symbol for the goods or services specified in your application, and it must be maintained as long as your registration is active.

There are no specific rules about the placement of TM, SM, or ® symbols, but many companies choose to display them in the upper right corner of their mark.

Duration of Trademark Registration

Trademark registrations are initially valid for 10 years and can be renewed for subsequent 10-year periods. However, to keep your registration active, you must submit maintenance documents to the USPTO. Failure to file these documents on time can result in the permanent cancellation of your trademark registration. The required filings include:

• Between the fifth and sixth year after registration: A Declaration of Continued Use/Excusable Nonuse of Mark in Commerce Under Section 8, along with a specimen and fee.
• Between the ninth and tenth year after registration, and every 10 years thereafter: A Declaration of Use and/or Excusable Nonuse/Application for Renewal Under Sections 8 and 9.

The USPTO website offers additional information regarding trademark renewals and declarations of use.

Trademark Registration at the State Level

Apart from seeking federal trademark registration, you have the option to register your trademark with the specific state where your business operates. State trademark registration offers localized protection for your trademark within the boundaries of that particular state. This is particularly valuable when your goods or services are exclusively available within that state. However, it’s important to note that state registration does not provide the broad national coverage that federal registration offers.

The prerequisites for state trademark registration can differ significantly from one state to another, so it’s essential to familiarize yourself with the specific requirements of the state where you intend to register your trademark.