What Are the Advantages of a Federal Trademark Registration?

There are numerous advantages to a federal trademark registration, and these advantages are why, if possible, you should always opt for a federal registration if you are using the mark in interstate commerce. Yes, you could apply for a state trademark registration in the states where you are using the mark, but this is far inferior to the more robust set of rights that you get with a federal trademark registration.

Advantage 1: Nationwide Trademark Rights

While you can acquire “common law” trademark rights just by using your trademark, the problem is that your common law trademark rights are limited to the geographic area in which you are actually using the mark. So if you are using your trademark only in California and Nevada, for example, you only get rights to your mark in those states. If someone else gets a federal trademark registration for a similar mark, then they have the right to use that mark in every state that you are not using it in. So if you were planning on expanding to other states, you may be out of luck.

Advantage 2: Your Trademark is Listed in the USPTO Database So Others Can Avoid It

When you have a federal trademark registration, your mark is listed in the Federal trademark database maintained by the United States Patent and Trademark Office. This means that when someone does a search to see if your mark is “in use,” the mark will show up in the search results. This puts everyone else on notice that you are the owner of the mark, and that they won’t be able to register a similar mark for similar goods. This can often prevent people from adopting a mark similar to yours, so you don’t have to waste time going to court to fight about it later.  

Advantage 3: Presumption of First Use

When you have a federal trademark registration, you are presumed to have the best rights to the trademark, and any challenger will have to prove otherwise.  When you file your trademark application, you are stating that your first use was “at least as early as” a certain date. (Don’t fudge this, okay? If you lie, it’s always found out later, and the USPTO does not view this favorably.) Unless and until someone can prove otherwise, your use of the mark is considered to be on that date.

Advantage 4: The Trademark Examiner Will Refuse Registration for Conflicting Marks

Another advantage to a federal trademark registration is that your mark is listed in the Federal trademark database maintained by the United States Patent and Trademark Office. This means that when someone files a trademark registration that is “confusingly similar” to your mark, the trademark examiner will find your mark in the USPTO database, and refuse to register the competing mark. A federal trademark registration obligates the trademark examiners to — in effect — serve as your “trademark watchdog” to refuse infringing marks.

Advantage 5: Intimidation Value

When you own a federal trademark registration, any cease and desist letter that you send will likely be taken more seriously. Instead of a wimpy, “Hey, I was using that first!” you can instead assert that you are the owner of a trademark registration, and the naughty infringer better stop now. Guess which assertion is more powerful?

Advantage 6: If You Own a Federal Trademark You Can Sue in Federal Court for Trademark Infringement

Without a federal trademark registration, you don’t have the right to sue for trademark infringement in federal court. This means that you have to sue in each and every state where you want to stop infringement of your trademark. Would you rather file a lawsuit in one federal court to stop an infringer, or file 50 separate lawsuits to stop an infringer? I think the answer is obvious. Contact trademark attorney Angela Langlotz today to start the trademark registration process

Should I file a Trademark Application for a Logo or For a Word?

That depends on what your resources are, whether you plan on changing your logo later, and how important your logo design is to you. In general, word marks offer broader protection, because they prevent another party from registering any mark that contains those words or words that are substantially similar.

If it would bother you to have someone use a similar logo on similar goods, then apply to register a logo mark (also called a “design mark”). This will prevent anyone from registering a similar logo for similar goods, even apart from any character elements in the logo.

Also, remember that if someone else registers a similar logo for similar goods, and you want to assert your common law rights in your logo mark, you may either have to 1) sue them to make them stop using the mark, 2) file an Opposition to their mark, or 3) give up using your logo and choose a different one. The bottom line is that if you really care about your trademarks — be it a word mark or a design mark — the best course is to file a federal trademark application

What Is A Word Trademark?

A word trademark is any combination of “standard characters” consisting of only words, letters, numbers or any combination of those three. When you apply to register a word mark, you can’t claim any design element, like size, stylization of the characters, or the color of the characters. The advantage of a word trademark is that you can change at any time the way the characters are presented without having to file a new trademark application. So if you decide that you want your word mark to be red instead of blue, or in Arial font instead of Bookman font, you’re still covered by your original trademark registration.

What is a Logo Trademark?

A logo mark — also known as a design mark — can appear as just a design, or it can be combined with other characters. You can also claim a particular color or combination of colors with a design trademark. But here’s the catch: You have to keep using your logo exactly as you filed it with the Trademark Office. If you change anything about the logo, such as the styling of the letters or the color of your logo, then you need to file another application for that logo.

What International Class Should I Choose for My Trademark Application?

This is one of those “it depends” questions. Remember that when you get trademark rights, you get them not only for the goods for which you are now using the mark, but any “reasonable zone of expansion.” So when you are deciding which International Class to assign to your mark, consider whether others are already using that mark in a class that is within their natural zone of expansion. Actually, this is one of the best reasons to hire an attorney for your trademark filing: A clever attorney will find out what competing marks are out there, and craft your application in such a way that any “similar” marks may not seem so similar because of the way the trademark application is presented.

Oh, and another thing to watch out for: If you file your trademark application yourself, and you mess it up and claim an International Class that you shouldn’t have claimed given the rights of an opposing mark, now you’ve made a record — permanently — in the trademark database. Any subsequent application by you for that same mark will cause the examiner to go look at your previous application, where the International Class that is “too close” to your competitor’s mark will be highlighted.

Don’t make the mistake of trying to file your own trademark application. You don’t know what the possible pitfalls are, and you may be messing up the trademark record for any subsequent actions your competent trademark attorney might want to take on your behalf. Call trademark attorney Angela Langlotz for the best strategy for your particular trademark filing.  

What is “Use in Commerce”?

In order to apply for a federal trademark registration, you have to show that you are using the mark in interstate commerce. Use in interstate commerce depends somewhat on the class of goods for which you are filing your mark. If you are restaurant on an interstate highway between Texas and Oklahoma, and your restaurant name is shown to people from both states, that can constitute interstate commerce.

How Do I Prove I Am Using My Trademark?

Generally, you have to submit what is called a “trademark specimen” to prove your use of the mark. This means you have to show the trademark examiner some proof — an invoice scan, a tag on the item, or a point of sale display — that has the trademark on it. You have to show use on the actual goods; you can’t just scan in the mark and send it in as proof unless it’s on the actual goods you are selling.

How Long Does the Trademark Process Take?

Generally, the trademark process takes about 9 months to a year if there are no issues with your trademark. If you get an Office Action from the examiner, or someone files an Opposition to your mark, it can take much longer to get your trademark registration.

What Are The Steps in the Trademark Process?

Once your trademark attorney searches your trademark and clears it for use, a trademark application is submitted to the United States Patent and Trademark Office. Within about 3 months, the application is assigned to a trademark attorney, who then begins the examination process, checking the trademark database for any conflicting marks. The trademark examiner also looks objectively at the trademark to ensure that there are no other reasons (such as being merely laudatory, merely descriptive, or indecent) under the law why the mark is not suitable for registration. If the examiner finds no reasons to refuse the mark, the mark applicant will be sent a “Notice of Publication.”

The Notice of Publication sets forth the Official Gazette publication date, and that date begins the 30 day period in which the public can file a Notice of Opposition. If no Notice of Opposition is filed, then the examiner will send the applicant either a Notice of Allowance or a Certificate of Registration.

If the applicant has not yet proven their use of the trademark, the Notice of Allowance begins a 6 month period during which the trademark applicant must file a Statement of Use or a Request for an Extension of Time to File a Statement of Use. If the Statement of Use or the Extension is not timely filed, the mark will be abandoned. Once the Statement of Use is filed ane accepted by the trademark examiner, the Certificate of Registration can issue.