Last week I discussed common law trademark rights, and the rights and limitations which accompany them. I submitted for your consideration my fictional company, Awesome Blades Corporation (ABC), which manufactures and sells lightsabers. If you haven’t read that post, you may want to click here and read it before proceeding. Go ahead, I’ll wait.
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Done? Good. Now, as I noted in that post, in order to strengthen and extend your trademark rights, you may want to consider registering your trademark to give people notice of your trademark, and to extend its geographic protection. This is what we (even lawyers) usually refer to as “trademarking” your name/logo/whatever, but that is actually incorrect. You are not establishing a trademark, you are registering your trademark for notice and protection purposes. You have 2 options here: you can register your trademark with your state, or you can register your trademark with the federal government.
State registration is cheap (in Alabama, the application fee is only $30), and very easy. In fact, it’s so easy that I frequently advise my clients to do it themselves, rather than pay me to do it (I’m happy to do it, but I try to save my clients money when I can). State registration gives you protection from, and legal rights against, anyone else using your trademark in that state. Essentially, it gives notice to everyone in the state that your trademark is not usable by anyone else but you (assuming someone else hasn’t already established some trademark rights in your mark, prior to your registration).
Federal registration of your trademark with the United States Patent and Trademark Office (USPTO) is much more expensive and much trickier. This is where you absolutely want to get a competent trademark attorney involved. The application for a federal trademark looks deceptively simple, but you can easily wind up spending a lot of money for a trademark that doesn’t really give you much protection, as the business owner I discussed in my previous post may discover. The good news is that federal registration gives notice to the entire United States that you claim to own the trademark rights to your business name, or logo, or whatever. As a result, nobody in the nation can infringe on your trademark, and then subsequently claim that they did not know that you owned it; registration means that they should have known that you owned it, and they will likely owe you money. Registration also establishes a firm date that you claimed the trademark, so that anyone who tries to use your mark after that date will be prohibited from using it. Of course, if someone was using the same business name or logo prior to your registration date, they may be entitled to keep using it in the same manner, since your registration will not cut off their previous common law trademark rights.
The process for an effective federal trademark registration is very lengthy and complex. It involves first doing an extensive search of the entire United States to see if there is anyone out there who may already be using your mark. This search should include, but not be limited to: all current federal trademark registrations, state trademark registrations for all 50 states, all current business names for all 50 states, an ICANN domain name search, and even a search of all telephone books in the U.S. (for those of you under 30 years old, a telephone book is . . . never mind.) This is the first place where your trademark attorney is really going to earn their fees — it takes a lot of expertise to know how to do an effective nationwide trademark search, and evaluate the results to determine whether your mark can be registered with the USPTO. In the case of my fictional lightsaber company, we will find that there is at least one other company in the United States using the business name “ABC” — the American Broadcasting Corporation. But since that company is involved in a very different kind of business than my lightsaber company (television broadcasting versus futuristic swords), there probably isn’t any real conflict, and I might still be able to register “ABC” for my business.
Once a thorough search has been done to determine federal registerability, then the actual application must be filled out, in which several appropriate choices and decisions must be made. This is another place where your trademark attorney is going to earn their fees, because he or she needs to be able to make such determinations as: whether to attempt to register a standard character mark or a stylized mark, what category or categories to register your mark in (there are currently 45 categories), how to describe your business, what sample to submit, and generally how to make the application most likely to pass examination by the USPTO inspector without some sort of office action or outright denial.
Once the USPTO decides that your trademark is acceptable and goes through a publication and comment period, assuming nobody has objected to it, it will be listed on the federal register, and Viola!, you are done. After that, you only have to maintain/renew your trademark every 5 years.
I hope 2017 is well on its way to being your most profitable year yet.