The Benefits of Trademark Registration and the Trademark Registration Process

1. The incontestable status that a mark can achieve after five years of registration, which serves to eliminate most arguments that the registrant does not have the exclusive right to utilize the mark;
2. The right to use the ® symbol in connection with the mark, which may deter potential infringers;
3. Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
4. The right to sue for infringement in federal courts;
5. The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;
6. The ability to recover attorney fees in infringement actions; and
7. The ability to have the customs service block the importation of goods bearing an infringing mark.

Federal registration also makes it easier to prove an allegation of trademark infringement by providing prima facie evidence of trademark ownership and use. The registration can also be used as evidence that the mark does indeed function as a mark and is not confusingly similar to other registered marks.

In terms of the process:

About four months after filing, an examining attorney at the USPTO reviews the application and determines whether the mark may be registered. If the examining attorney determines that the mark cannot be registered, the examining attorney will issue a letter listing any grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter, or the application will be abandoned. If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO.

A common ground for refusal is likelihood of confusion between the applicant’s mark and a registered mark. Marks which are merely descriptive in relation to the applicant’s goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.

If there are no objections, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO will send a NOTICE OF PUBLICATION to the applicant indicating the date of publication. In the case of two or more applications for similar marks, the USPTO will publish the application with the earliest effective filing date first. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.

If the application was based upon the actual use of the mark in commerce prior to approval for publication, the USPTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published, if no opposition was filed.

If, instead, the mark was published based upon the applicant’s statement of having a bona fide intention to use the mark in commerce, the USPTO will issue a NOTICE OF ALLOWANCE about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the NOTICE OF ALLOWANCE to either (1) use the mark in commerce and submit a STATEMENT OF USE, or (2) request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE. The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the STATEMENT OF USE is filed and approved, the USPTO will then issue the registration certificate.

Register your Trademark today! You’ll be glad you did!

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