The Benefits of Trademark Registration and the Trademark Registration Process

There are numerous advantages to securing federal registration of a trademark. Perhaps the most important advantage is that federally registered trademarks are national in scope, regardless of the actual geographic use made of the mark. This national scope contrasts greatly with the limited geographic range of common law trademarks.Additional substantive benefits received through federal registration include:

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;
The right to use the ® symbol in connection with the mark, which may deter potential infringers;
Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
The right to sue for infringement in federal courts;
The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;
The ability to recover attorney fees in infringement actions; and
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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Deborah Sweeney

Deborah Sweeney is an advocate for protecting personal and business assets for business owners and entrepreneurs. With extensive experience in the field of corporate and intellectual property law, Deborah provides insightful commentary on the benefits of incorporation and trademark registration.

Education: Deborah received her Juris Doctor and Master of Business Administration degrees from Pepperdine University, and has served as an adjunct professor at the University of West Los Angeles and San Fernando School of Law in corporate and intellectual property law.

Experience: After becoming a partner at LA-based law firm, Michel & Robinson, she became an in-house attorney for MyCorporation, formerly a division in Intuit. She took the company private in 2009 and after 10 years of entrepreneurship sold the company to Deluxe Corporation. Deborah is also well-recognized for her written work online as a contributing writer with some of the top business and entrepreneurial blogging sites including Forbes, Business Insider, SCORE, and Fox Business, among others.

Fun facts/Other pursuits: Originally from Southern California, Deborah enjoys spending time with her husband and two sons, Benjamin and Christopher, and practicing Pilates. Deborah believes in the importance of family and credits the entrepreneurial business model for giving her the flexibility to enjoy both a career and motherhood. Deborah, and MyCorporation, have previously been honored by the San Fernando Valley Business Journal’s List of the Valley’s Largest Women-Owned Businesses in 2012. MyCorporation received the Stevie Award for Best Women-Owned Business in 2011.

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View Comments

startupattorney says:

16 years ago at 11:36 PM

Based on my experience a lot of people are often confused whether they need a trademark or a copyright for the logo that they are trying to protect. While this may seem complicated the determination is actually quite simple: whether a person needs a trademark or a copyright largely depends upon what the person is protecting:

A trademark protects words, marks, or symbols that identify goods or services sold in commerce. The primary business purpose of a trademark is to protect the identity and brand of a product. Some common examples of trademarks include a brand name or a design used on packaging.

A copyright protects an original work of authorship fixed in a tangible medium. Some common examples of copyrightable works include a song, a movie, a book, or a photo.

So it all comes down to what you're trying to protect.
Andrea says:

16 years ago at 5:31 AM

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