Thought Leadership

Why Should I Register My Trademark?

Trademarks are one of the most overlooked assets of any organization.  A trademark is the way that customers remember and find your business, yet many owners do not take an easy step available to protect that important resource.

Under US law, a company or individual has the right to a trademark if they are the first one to use it on goods or services.  However, when a business takes the time to register their trademark rights with the United States Patent & Trademark Office they gain several important legal and practical rights:

  1. The ability to sue for up to $2,000,000 per the type of goods and services sold, when the infringement is willful;
  2. The ability to seek attorney’s fees from a trademark lawsuit;
  3. Easier removal of infringing products from the shelves of retailers or online sellers;
  4. Easier seizure of infringing products from being imported; and
  5. Ability to take down a website using the infringing trademark.

Often, owners are hesitant to seek registration for their trademarks based on uncertainty over their time commitment and costs.  We recommend conducting a search for both pre-existing registered trademarks and other unregistered uses such as on websites, or business names.  The cost to conduct a search is usually less than $2,000.

The next step is to file a trademark application with USPTO.  This can be done in circumstances where a business is already using a trademark, or when they intend to begin use in the future.  The USPTO will usually take around 4 months to review the application.  After that time the USPTO will either file an Office Action citing any problems such as other trademarks over which there may be a likelihood of confusion or approve the mark for publication.  Applicants and their attorneys have an opportunity to respond to the Office Action with arguments for registration.

When a mark is approved for publication, the public has 30 days to file any written objections, or a request to extend the time to file an objection.  After that period, the mark will either issue, or if the mark is not yet in use by the Applicant, a three-year limit to begin use of the mark commences.

Applicant’s filing fees are based on the number of goods and services on which they use the trademark, or intend to use the mark in the future.  For instance, where a business is selling goods made of plastic and metal, two filing fees are necessary.  Therefore, in order to minimize legal costs, it is helpful to identify all the goods and services that the mark is used on before you contact an attorney.  In addition, the attorney must provide proof of use in each class, so gathering that information before-hand also reduces cost.  Common examples of use for services are website screenshots describing or advertising the services.

The total cost to achieve registration is usually less than $4,000 per trademark including filing fees.  In addition, the process of obtaining a clearance search will notify your organization of others that may have superior legal rights.  This allows your group to proactively change any necessary advertising on its own terms rather than through a lawsuit.  As always, we are happy to answer any questions in a complimentary consultation.