This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.
The registration of a trademark is not a mere formality. The applicant must first have used the trademark in association with goods or services in interstate commerce. The application process involves filing with the United States Patent and Trademark Office a fee, specimens of the trademark as it is actually used, and various required statements outlining when the mark was first used and the types of goods and services on which the mark is used. Trademarks are categorized for registration purposes into several different classes, such as, for example, cosmetics, toys, or clothing. If a trademark is to be registered in more than one class, that is, it is used on both toys and clothing, then a separate registration fee must be paid for each class in which registration is sought.
Once the application is filed, the application is examined by Trademark Office personnel referred to as Trademark Examining Attorneys. The examination process is designed to determine if any other trademark is federally registered for similar goods and services which may be “confusingly similar” to the trademark in the application. One must keep in mind that trademark infringement may occur even if an identical mark is not being used. The legal standard states that a trademark is infringing if it is “confusingly similar” to an existing trademark used on similar goods and services, and so the Trademark Office bases all of its examinations on this particular standard.
If a Trademark Examining Attorney determines that the trademark is not confusingly similar to an already registered mark, the mark is “published” in a government publication. This official publication gives members of the public an opportunity to “oppose” the registration of the mark if they feel that it is confusingly similar to some trademark that they are using, even if their mark is not already federally registered. After a waiting period of thirty days has elapsed, the trademark is granted federal registration (unless the mark was “reserved”, which would then require that a statement be filed that the trademark has actually been used). The trademark registration may still be canceled at a later time if it is not used properly, or if a prior user of the mark discovers only after the registration is granted that someone else is using its trademark. Commercial use is required to maintain a registration. A trademark registration is good for an initial term of ten (10) years. If the mark is still in use in connection with the goods and/or services with which it is registered, then the registration can be renewed for additional ten year terms.
An important point to remember in selecting and using a trademark is that the adoption of a new trademark can entail a substantial expenditure of money. Therefore, prior to adopting and using a mark, it is usually a good idea to perform a “trademark search” to determine if a similar mark is being used anywhere in the country. Various organizations are available which can perform a professional trademark search, the cost typically being between $400 – $1,000. If the results of the trademark search are positive, use of the mark should begin immediately, including interstate use, so that the trademark can be registered federally.