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Small business owners who are just starting their business adventure in the United States should always consider trademark registration. A trademark can be a graphic design, words, slogan, symbols, or a combination of a number of these features. It provides protection for their business identification associated with the products or service. It makes it easier for trademark owners to fight against potential future copycats. Also, registration services as notice to everyone else that this trademark is already under use.
Trademark registration is relatively simple and straightforward. However, before apply for your trademark, there are other things that should go into your consideration.
First of all, it is true that trademark registration is not required by law. Just by first using a name or design associated with your product or service, it is already a common law trademark. An unregistered trademark can be appended with the letters “TM”, but it cannot use the registered symbol “®”. More importantly, an unregistered trademark does not provide as much protection as registered trademark. If a trademark is registered with United States Patent and Trademark Office (USPTO), it serves as a notice to everyone that this trademark has been used. Therefore, it can be enforced throughout the whole United States. In contrast, an unregistered trademark, in some states, can only be enforced at the region where the trademark is actually used. Moreover, some states use the first to file rule instead of first use rule to determine who enjoys protection when more than one person is claiming the trademark. In these states, even if the unregistered trademark has been used before the registered trademark, the later registered trademark would take precedence. The owner of the unregistered trademark will lose its trademark. Therefore, even though registration is not required, it is highly recommended.
Secondly, understanding some of the basics of trademark can help small business owners to choose a trademark that will benefit the business the most. The strength of a trademark depends on how distinctive the trademark is. If a trademark is fanciful (a made-up word) or arbitrary, the protection is relatively strong. For instance, “Kodak” is a made-up word that carries no meaning other than association with the brand, therefore, if someone uses the word, it has to be referring to the products, thus it provides the broadest scope of protection. “Apple” computers is an example for arbitrary trademarks. The word has a completely unrelated meaning with the products provided by the company, therefore it also provides strong protection, but they cannot stop people from using the word in its original meaning. The next level of protection is suggestive trademarks, which means the mark itself suggests some attributes of the product. An example of this is “Microsoft”. A suggestive mark is not a mere description, it requires the use of imagination and thought to determine the nature of the products. A fanciful, arbitrary or suggestive trademark is considered inherently distinctive. On the other hands, if a trademark is descriptive or generic, then it provides weak protection or will be considered unprotectable. A descriptive mark is something that directly convey trait, purpose, or quality of the underlying products. “American’s Best Popcorn” is a descriptive trademark for popcorn. A generic term is the common name for the products, it is considered not protectable. For instance, Super Glue was deemed generic and not entitled trademark protection after a court battle.
Thirdly, before filing application for your trademark, one should always conduct a search on the existing registered trademark database to see whether your chosen trademark or similar ones have been used by others already. Especially in the field of industry that you wish to use the trademark for. If you chosen trademark is already registered, even if you used it first, the registration will still be denied.
Lastly, the timing of registration is important for small business owners too. If you want to file the registration before you actually start using the trademark, then your filing basis is intent to use. You have to start using the trademark within six months of the time of application. If you don’t use it within that period, you can file for a six-month extension, up to three years in total. However, you need to convince the USPTO that the delay is due to legitimate reasons. When you actually start to use the trademark, you need to inform the USPTO that you have started using it by filing an additional document with them. You will also be asked to provide your product to show how the trademark is used. Once you filed this form, you first use date will go back to the date you filed the intent-to-use application, therefore your trademark will be protected during the period you haven’t started using it yet. It costs more to file an intent-to-use application, and each extension will cost you money as well.
For other information about trademarks, please click on one of the following topics below: