As noted in our prior post, clients often ask us whether they should get a trademark for their business. The answer is usually “yes”, but the considerations – especially regarding whether to register the trademark with the United States Patent and Trademark Office (USPTO) – are complicated. However, the considerations are also fun to consider, especially when a business owner is excited about future growth opportunities. Trademark rights are created through use, not registration. If you use it first, if your mark is truly distinctive, and if you use it within a particular industry, then you are usually the rightful owner of the mark, even if someone else beats you to the finish line of federal registration via the USPTO. Use also gives you the right to include the TM and SM symbols on your mark.
Federal registration does, however, provide significant additional trademark protection.
- An applicant obtains federal registration by filing an application with the USPTO. The most common bases for federal registration are (1) actual use or (2) intent to use. For actual use, you must submit examples of your actual use in commerce.
- Each federal trademark application must indicate one or more classes of goods or services in which the mark is used, and the distinctiveness of a mark will be measured based on this classification and description.
- The principal benefits of federal registration are: (a) the right to use the registered trademark symbol: ®, (b) the right to file a trademark infringement lawsuit, if necessary, in federal court, and (c) a statutory presumption that (i) the mark is valid, (ii) you are the owner of the mark, and (iii) the registrant has the exclusive right to use the registered mark.
- After a mark is registered, the owner must protect the mark by properly using it, by monitoring use of the mark and monitoring confusingly similar marks by others, and by maintaining federal registration via the periodic filing of declarations of use and payment of maintenance fees.
For assistance with any legal matters related to your business or estate planning, contact Fournier Legal Services at firstname.lastname@example.org or 860.670.3535 now for a free consultation and planning session.
Joseph E. Fournier is an Attorney and a CPA who has more than twenty years of experience in a variety of business legal matters, including start-ups and company formations, drafting shareholder and operating agreements, contracts, employment law, commercial litigation, tax planning and audit defense, and mergers and acquisitions (M&A). He also handles estate planning matters, such as business succession planning, wills, trusts, and probate.