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Federal Trademark Registration |
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One of the most important steps for a small business to take when it enters the marketplace is to secure protection for its brand. While still intended to serve the original purpose of protecting the consumer, trademarks have become an integral part of creating and preserving brand identity for a company.
Before pursuing Federal trademark registration, there are a few things to keep in mind.
- First, a trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Similarly, a service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" refer to both trademarks and service marks.
- Second, the filing fee assessed by the United States Patent and Trademark Office (USPTO) applies to each filing per class of good or service. For example, if ReallyBigCo is in the business of providing widget-creation services, providing book publishing services, and also produces television sets, registration of SuperBigCo as a mark would need to be sought for the widget-creation service, the book publishing service, and the television sets, each of which would entail a fee.
- Third, trademarks are not the same as patents, and they are not the same as copyrights.
- Fourth, there are protections available in common law for unregistered trademarks, but registration provides the following advantages:
- constructive notice to the public of the registrant's claim of ownership of the mark;
- a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
- the ability to bring an action concerning the mark in federal court;
- the use of the U.S registration as a basis to obtain registration in foreign countries; and
- the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
- Fifth, while you can use the TM and SM symbols any time you claim rights in a mark, you may only use the ® symbol after you have successfully registered the mark with the USPTO.
- Sixth, generally, registration of a mark is valid for ten years, after which you must apply for renewal.
- And finally, applying for registration of the mark is sometimes only the first step in the process for securing federal registration of your mark. From time to time, the USPTO may challenge the registration for the following reasons:
- the mark consists of immoral, deceptive, scandalous or otherwise objectionable material;
- the mark is comprised of a flag;
- the mark is comprised of the name or likeness of a living person or a deceased President;
- the mark is impermissibly similar to a pre-existing mark; or
- the mark is
- merely descriptive or deceptively misdescriptive of goods,
- primarily geographically descriptive of goods,
- primarily geographically deceptively misdescriptive of goods,
- primarily merely a surname, or
- comprised of any matter that, as a whole, is functional
If you have questions about registering a trademark in the USPTO, feel free to contact the Law Firm of Christopher M. Choate and Mr. Choate be happy to talk to you about your needs.
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