by Brian McKay
A trademark or service mark is a word, phrase or symbol by which people recognize your product or service and differentiate it from others. A trademark is essentially the brand name of your offering that tells consumers which company the product or service belongs to—that is, it helps them identify the source of the offering.
Here are seven questions and answers to help you understand the importance of registering your trademark with the USPTO (the United States Patent and Trademark Office).
Is it mandatory to register a trademark?
No, there is no federal law mandating the registration of a trademark; however, it is highly recommended that you get your trademark registered to avoid its unlawful use by third parties. Federal trademark registration gives you the exclusive right to use the trademark on your products or services that you listed in your registration application.
Registering a trademark not only safeguards your rights but it also ensures that your business is not committing infringement when selecting a brand name, symbol or design.
What is the difference between state and federal trademark registration?
You can have your trademark registered at the state or the federal level. State-level registration wins you the exclusive right to use your trademark within the state where it is registered. Federal registration protects your trademark against infringement across the United States.
Do note that you can opt for federal registration only if your business activities extend to other US states or to other countries.
What is the key difference between a registered and an unregistered trademark?
A registered trademark is one which has been granted registration by the USPTO. It allows the use of the symbol ® next to your trademark. A registered trademark is owned by you and is considered your property, and can, therefore, be sold or licensed by you.
You can continue to use your trademark without registration, but in case of an infringement, proving the ownership of an unregistered mark is both a difficult and costly process. To protect a trademark that has not been registered, you can use the symbol ™ next to an unregistered unique trademark and must use it on your business website, invoices and business communication (including emails).
Do I need a trademark attorney for registration?
The USPTO does not mandate that you hire an attorney to help you with the registration process, but it seems to recommend that you do it, on its official website. Filing for a trademark registration through an expert attorney has several advantages.
A good trademark attorney will do all the prep work to ensure that your application is error-free and has maximum chances of success, as not all trademark applications are granted registration.
Hiring privacy experts for the process also ensures that a detailed step-by-step approach is followed, which includes understanding your business and its goals, doing a detailed trademark search, filing a tailor-made application, replying to any objections by the examining USPTO official, offering legal advice on trademark use and infringement, and avoiding litigation.
Can I hire a non-attorney to help me with the trademark registration process?
The USPTO website clearly states that, according to US federal laws, only a licensed trademark attorney who practices in the US may be hired to represent you before the USPTO. Therefore, for trademark-related matters, you may not hire a non-attorney or a foreign attorney who is not licensed to practice in the United States.
Using the services of an individual other than a qualified US trademark lawyer can result in the rejection of your application or affect the validity of your registration if and when it does come through.
How do I choose a strong trademark?
Choose a distinct brand name and symbol that your potential consumers won’t confuse with other existing trademarks. Do not use a generic word or phrase or manipulate another brand’s symbol or design to create yours.
Creating an original trademark is even more important if you want to apply for registration with the USPTO, as the agency the does not approve trademarks that even slightly resemble existing marks or are generic in nature.
Should a trademark be in use before it is registered?
No, you need not be using the trademark before filing for registration. It is, however, advisable to file for registration as soon as you develop the mark and decide that you’re going to use it on your goods or services. Using the counsel of an experienced trademark lawyer is useful at every step of the registration process.