How can I register my trademark in the US?  The US provides a federal trademark registration registry.  Each of the 50 states and the territory of Puerto Rico provide their own registration registries.  A federal registration takes priority over a state or territorial registration and provides substantial additional benefits.  Based on cost and relative benefit we generally recommend a federal registration for our clients except in very rare circumstances.

How much does it cost to obtain a federal trademark registration in the US?  The costs involved with a federal trademark registration are government fees, search fees and legal fees.  The government charges $325 for one trademark application in one class as well as a variety of other fees for events such as extensions of time.  Search fees can vary based on the nature of the search.  All of these fees, including our fees, can be found on our registration fee sheet available on request.

How long does it take to obtain a federal trademark registration in the US? The time fluctuates from year to year but in 2007 a federal trademark registration could be obtained in anywhere from 12 to 18 months absent problem.  If problems arise with the application process a registration can take longer.

What are the steps in the application process?  Once the application is filed it will be assigned to an examiner within two to three months.  The examiner will review the application against his examination procedure guidelines and will compare it against other applications and registered marks.  If the examiner has a concern he or she will issue an “office action” rejecting the application or asking for some clarification or change.  If the examiner has no concerns he or she will approve it for “publication.”  The trademark will then be published in a federal publication so that anyone can file an “opposition” stating grounds why the registration should not be granted.  If no opposition is filed then, for trademark that are in use, the application proceeds to the issuance of a registration certificate.  For “intent to use” applications (see below) a “notice of allowance” is issued giving the applicant six (6) months to demonstrate use in commerce.  Extensions of time can be filed if use is not completed in six (6) months for additional terms.

Do I have to wait until my trademark is registered to use it in commerce?  No.  You can begin using your trademark immediately.  Even before you file your application for registration.  However, because the US is a “first to use” country (see below) we recommend that you conduct a trademark search first in order to determine that there are no prior applicants, registrants or users.

Can I obtain a federal registration without using the trademark in the US? Unless you are applying for trademark registration based on a foreign registration, you can file an application but will not obtain a registration until you proof use in commerce. 

What is an “intent to use” application? An “intent to use” application is one which is not based on a foreign registration and which an applicant files before using a mark in commerce.  The purpose of the “intent to use” application is to provide prior rights against subsequent users and applicants on the basis that the applicant intends to use the mark in commerce in the near future.  An intent to use application can be kept pending through extension for approximately 3 years before it will lapse for non-use.

What is a trademark search? A trademark search is an attempt to determine whether there are prior applicants, registrants or users of a given mark or of confusingly similar marks.  You can conduct a search by using Internet search engines such a Google or by reviewing trade resources within your chosen industry.  This type of search, while helpful, is very limited because it does not adequately capture pending trademark applications and existing registrations.  Also, this type of search may ignore similar marks in related classes.  Our firm can conduct an “in-house” search.  An in-house search searches the federal trademark registry as well as the 50 states for pending applications and existing registrations.  Although this search is not fool proof and there is no guaranty that a confusingly similar mark will not be missed, it constitutes an important additional step in determining the availability of the mark.  A “full trademark search” is one that is done by an outside company dedicated to conducting such searches.  A full trademark search is substantially more expensive than an in-house search but, while still not perfect, it is far more accurate and includes applications, registered mark and unregistered marks.  We always recommend that our clients conduct a full trademark search.  It is important to note that regardless of which search you conduct the results are never guaranteed and there is always a risk that a mark will be overlooked in the process of searching.

If I register my trademark mark first do I have superior rights to all other users?  No.  The United States, like most of the English speaking countries in the world, is a “first to use” country.  This means that the first person to use a trademark in commerce has superior rights to the trademark in his region of use.  A prior user would be able to cancel a registration granted to a subsequent user. 

If a prior user has superior rights in the US then why register a trademark? A federal trademark registration has certain inherent and substantial benefits.  It prevents junior users who began using the mark in other regions prior to the registration from expanding their use.  It also serves as notice that no one can begin using the mark anywhere in the US and its territories after the date that the application was filed for registration.  After five years the registration becomes incontestable and therefore harder to defeat.  The registration also entitles the trademark owner to certain statutory causes of action under federal law as well as to enhanced damages.  Finally, the registration entitles the trademark owner to record its trademark with the US Customs and Border Protection service in order to prevent the importation of counterfeit goods as well as, in some circumstances, parallel market goods.

What is an “office action”?  An office action is a document sent to you or your attorney by the examiner asking for clarification of your application or rejecting your application.  After a response is filed by the applicant, the examiner will either approve the application to proceed to the next stage or will issue a final office action.

What do I do if the examiner rejects my application? If the examiner rejects your application you can appeal to the Trademark Trial and Appeal Board. 

What is an opposition? An opposition is a proceeding initiated by a third party during the publication portion of the application process to prevent the issuance of your registration.  An opposition is a formalized mini-trial with limited discovery and written submissions.

What is a cancellation proceeding?  A cancellation proceeding is like an opposition but is filed against an already registered mark.

Can my trademark registration or application be challenged in court? Yes.  Someone seeking to challenge your application or registration can do so by filing a court action instead of an opposition or cancelation proceeding.  Usually court actions are filed when the trademark is already in use in commerce and the third party intends to seek injunctive relief.

Does my US registration grant me protection in other countries?  Generally no.  Trademark rights are generally national in nature and do not extend outside of the US.  A US registration can, however, be used to obtain certain priority rights in obtaining a registration in another country if the foreign registration is filed within certain deadlines. 

What is a counterfeit trademark? A counterfeit trademark is a spurious copy of another person’s trademark which is applied to a product in a manner intended to confuse the consumer into believing that it is the genuine mark, without the permission and quality control of the genuine trademark owner.  A product bearing a counterfeit trademark is often called a counterfeit product.

What is a parallel market good? A parallel market good, also known as gray or grey market goods or diverted goods, is a genuine product purchased from the trademark owner or its distributor which is then resold outside of the authorized channels of trade.  Absent a material difference in a foreign sold version of the genuine product, parallel market goods are generally legal in the US and are often sold at a discount for the consumer.  Manufacturers of electronic products will often not honor warranties for parallel market goods.

Why record my trademark registration with Customs and Border Protection?  When you record your trademark registration with Customs and Border Protection (“CBP”) your trademark will be added to a list and CBP will monitor the border for products bearing your trademark.  If counterfeit product is detected by Customs it will be seized and, after providing you notice regarding the importer, the product will be destroyed.  If you own the trademark registration and nowhere else in the world, you can also qualify for parallel market protection and the mark will become “restricted.”  Customs will then also stop the important of genuine product which has left the country and is being imported without your permission.