Trademark registration: 6 FAQs

The advantages of obtaining federal trademark registration

New Hampshire’s business community is thriving, with more than 130,000 small businesses. For both startups and established companies, protecting intellectual property is a fundamental step in the ongoing journey of leading a successful business.

But this step doesn’t need to be complicated. By understanding the answers to six frequently asked questions about federally registering a trademark, brand name or logo, Granite State business leaders can position themselves for continued success.

1. Why seek a federal trademark registration?

There are six reasons to federally register your trademark or brand name:

• Concern about a third party adopting an identical or similar trademark/brand name

• Concern about online enforcement of your rights in your trademark/brand name

• Plans to expand your business into other regions of the U.S. or foreign countries

• Demonstrating trademark/brand ownership for financing purposes

• Desire to maximize recognition and value of your trademark/brand name for a potential sale or acquisition of your company

• Concern about importation of counterfeit goods or services into the U.S. under your trademark/brand name or something confusingly similar.

2. What advantages does federal trademark registration provide?

Federal trademark registration provides your company with exclusive rights to your trademark, brand name or logo throughout the U.S., even if your company isn’t doing business nationwide. A single federal trademark application results in a national registration covering all potential U.S. markets.

Such national rights are especially valuable to companies using e-commerce channels to promote their goods and/or services. Without a federal registration, your trademark rights are limited geographically to those regions in which your company provides goods and/or services.

3. Do I need to use my trademark in order to file for federal registration?

No, your company can file an “intent-to-use” (ITU) trademark application, even if it is not yet using its trademark, brand name or logo to promote or provide goods and/or services. The ITU application enables companies to secure trademark rights early, as of the filing date of the ITU application, even for products and services still in development. Requirements include a bona fide intention to use the trademark on or in connection with the goods and/or services designated in the ITU application. Such intention can be supported with a business plan, ongoing market research, product research and development, product testing or contracts with vendors.

4. What if I don’t have a registration or trademark application on file and a third party is using a trademark, brand name or logo identical or confusingly similar to mine?

Without a trademark registration or application on file, establishing your rights relative to the third party depends on the evidence your company can present to demonstrate its first use of the trademark.

Trademark rights arise through actual use of a trademark, so your rights would depend upon when and where you put your trademark to actual use with the relevant goods and/or services. It would also depend on whether the third party has a trademark application on file, and when and where the third party began to use the trademark. This is referred to as a “priority” conflict, which can be a complicated issue. The party that can demonstrate it used the trademark first will likely prevail. Filing an ITU application can help your company avoid a priority conflict.

5. How does a federal registration prevent third parties from using my trademark, brand name or logo, or something very similar?

Federal trademark registration (and a trademark application) is a public record and serves as notice to the public of your ownership of and exclusive rights in your trademark. It can also dissuade a third party from adopting a trademark that is identical or confusingly similar to yours. In addition, the U.S. Patent and Trademark Office would likely cite your prior registration or application to reject a later-filed third-party trademark application seeking registration of an identical or confusingly similar trademark. This would help your company maintain the exclusivity and distinctiveness of your trademark.

6. Why hire a trademark attorney to handle my trademark registration application?

Filing a trademark application begins a legal, and sometimes complex, process with the U.S. Patent and Trademark Office. A trademark attorney has the experience needed to navigate the process and can help avoid obstacles and delays. An attorney will also properly classify and describe your goods and/or services in the application, avoiding unnecessary actions by the U.S. Patent and Trademark Office and enabling you to obtain a broad scope of trademark protection. Finally, an attorney can avoid pitfalls that could threaten your filing date or application.

Carol H. Peters and Alexander P. Montgomery are attorneys in Hinckley Allen’s Trademarks & Copyrights Group.

Categories: Legal Advice