Information for Small businesses

The firm receives many inquiries from small or start-up businesses concerning their particular intellectual property rights and strategies concerning branding their housemarks, products, slogans, logos and designs.

When do I register?

Even if a trademark or design is not yet in use, a company can register for trademark protection with the United States Patent and Trademark Office (“PTO”) by filing an intent-to-use application. As long as the company or individual has a bona fide intent to use the mark in commerce, this option is available.

It is generally preferable to seek a registration so that the business’ trademarks and logos are presumed valid, and to potentially establish priority over later filed and used trademarks nationally. If a mark is not registered, it only receives protection in the geographic area in which it has actually been used.

What are the steps for registration?

The first step to registering a trademark is choosing a marketable name or design. The more unique the mark is, the more protection it is likely to receive. If the mark brings to mind the products or services under the marks, or even describes those goods and services, the trademark would likely receive minimal protection, and in the case of a descriptive mark, more would have to be shown to receive any protection at all.

I have my design, what do I do?

Once the mark is chosen, it is imperative to make sure that the trademark or design is not likely to cause confusion with a trademark or logo which is already in use. The last thing a small business wants is to begin using a mark only to receive a cease and desist letter two to three years after bringing in customers through the goodwill created by the company trademarks.

A full search of the PTO database, state registrations, domain name registries and common law sources is advisable here, because it shows that the company has engaged in due diligence in choosing the mark, and has not acted in bad faith by using a mark which may have already been in use by another entity.

If the mark is “clear,” a trademark attorney can provide a written opinion letter discussing the availability of the mark. This can be very useful in defending against an infringement action because it makes available the defense that the mark was chosen in good faith and pursuant to advise from counsel.

Choosing to register the trademark

If the company desires registration, the next step would be to file a trademark application with the PTO. The PTO examining attorneys will evaluate the application for procedural issues, and will also determine whether a substantive refusal is warranted based on a likelihood of confusion with an earlier filed mark, descriptiveness, deceptiveness, or whether it creates an association with a particular geographic region, among other things.

If the examining attorney issues a refusal or asks for a procedural requirement to be addressed, the applicant has six (6) months to respond. If the applicant fails to respond, then the application is abandoned. However, the application can be revived if it is shown that the failure to respond was unintentional.

If the mark is approved by the Trademark Examining Attorney, then it will be in condition for publication. Essentially, once a mark is published, any one who can verify that they will be injured by the registration of the mark can file an opposition to the registration, or can file an extension of time to oppose. If the mark passes through the publication period without opposition, it will be ready for registration, assuming use has been shown. If use has not yet been shown, the applicant will have opportunity to file an extension of time to show use for six (6) months. Six of these extensions are permitted up to three years.

Once the mark is registered, the registrant will have to continue to use the mark, and will have to file an affidavit to show continued use between the fifth and sixth year of registration, and also renew the registration between the ninth and tenth year of registration. Registrations must be renewed every ten years.

Choosing not to register the trademark

Of course, as discussed above, a company can choose not to register its mark and rely on its use to establish trademark rights in the mark, and that mark will have priority over later filed marks and later used marks, but only in the geographic area in which the mark is used. That is why it is always preferable to seek federal registration, because it establishes nationwide priority in a mark as of the filing date of the application, and of course, because a registration is presumed to be a valid trademark. In addition, after five years of registration, the mark can become incontestable to attack, assuming it has not been abandoned, procured by fraud, or become generic, among other reasons.

This information is not intended to serve as legal advice, but to serve as information concerning the process of registering a trademark and using the mark in common law. If additional information is needed, please contact us at the office for a free consultation.