Today’s post has majorly been contributed by Elisabeth Pickle; who runs a successful law firm in Phoenix, Arizona called Mindful Counsel, PLLC. The firm specializes in Intellectual Property, specifically Trademarks. The contributors describes the important considerations one should note before applying for Trademark Registration in the US.
Why Trademark registration is important?
Federal trademark registration is important and has several advantages, including notice to the public of the registrant’s claim of ownership of the trademark, a legal presumption of ownership nationwide, and the exclusive right to use the trademark on or in connection with those goods or services set forth in the registration. Federal registration also allows the owner of a trademark to sue for infringement in the Federal court and to stop the importation of infringing material.
Trademark registration is essential because it helps to provide your brand or company with its own name or logo. It solidifies your company and ensures that no one else can use the names or logos associated with you. It protects your company and its property.
Richard J. Brandenstein, Founding Partner at Fusco, Brandenstein & Rada, P.C.
Five important things to consider:
Comprehensive Trademark Search
You’ll want to complete a comprehensive trademark search to help identify any legal barriers to your company’s use or registration of its trademark before you actually begin to use the trademark or have it registered with the U.S. Patent and Trademark Office (USPTO). The data you discover during the comprehensive search will allow you to determine which classification you should file in and what kind of specimens to use as evidence. Even if your proposed trademark is currently registered; you may still successfully register your trademark depending on the classification of goods and services.
Registration before actual usage of Trademark
If you’ve not yet begun selling your goods and services you can still apply for your federal trademark using the future use application. The future use application essentially holds your place in line until you are ready to begin use. Another advantage is that your filing date will serve as the date of the first use of your mark. This will be very important in case a conflict develops with another mark. The USPTO will want to see proof that you have begun selling your goods and services to consumers. You will have six months to provide proof and can request additional six-month extensions for up to three years.
Trademarking different elements
Remember that a brand name, a logo, and a slogan are all separate and distinct trademarks which belong on their own application for review with the trademark office. If you are on a limited budget, you’ll definitely want to consider prioritizing which business asset you trademark first. Many people opt to trademark their business or main brand name as a word mark first. Or, if you have a clever tagline that is really helping you turn curious people into buyers, it makes sense to protect that trademark first.
Taking note of Classification
There are 45 classes in which your trademark can be represented. Classifications 001-034 are for goods. Classifications 035-045 are for services. You may apply to register your trademark in multiple classes. These classifications help distinguish the trademarks. It is common for different trademark owners to register the same mark for different products in different classes. For example, think Delta airlines and Delta faucets. Even though both registrations are for the same mark (Delta) they may coexist as federal registrations because they are unlikely to lead to any consumer confusion in the marketplace.
Submitting a specimen
You must submit a specimen as evidence of use for your trademark. There are specific guidelines to follow when submitting your specimen. Some requirements of your specimen are that; it must represent the goods and services that are being identified in your application. The specimen must show the use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods. To constitute a display associated with the goods, a specimen must show the use of the mark directly associated with the goods and such use must be of a point-of-sale nature. In addition, you must show the URL and date from the webpage of your specimen.
Registering a new name as a trademark takes at least a year and carries a risk of rejection, even if you have a trademark attorney research it and file it for you. As a new business owner, you should consider buying an existing trademark registration.