A frequent question that comes up when starting a business is when to file for trademark protection. The answer to this question will depend on a few things, such as the type of trademark protection that you want for your brand/business and whether you are already using the trademark in commerce or have a bona fide intent to do so within the required regulatory timeframe (as discussed below).
What is a trademark?
A trademark is a word, phrase, logo, design or combination thereof, that serves as a source identifier for goods and/or services. An example of a well-known trademark is Nike’s swoosh symbol. Most people would recognize the swoosh symbol trademark as belonging to Nike. The same goes for the brand name “Nike,” which is also trademarked.
Common Law and Federal Trademark Rights Explained
Common law trademark rights originate as soon as a business, offers a product or service in commerce. However, these common law trademarks are limited to the geographical area in which the goods and/or services are offered for sale. The first to use the trademark in commerce will be able to enforce their rights against others to prevent use of the trademark within the same geographical area in which they are operating (within the same or similar line(s) of business). For example, if you start operating a swimming school under the name “KMT Swimming School” in New York, your common law trademark protection will be limited to preventing others in New York from using that name for a swimming school or similar business, assuming you were the first to use the mark.
On the other hand, a mark that has been registered with the United States Patent and Trademark Office (“USPTO”) offers protection for a trademark throughout the United States and its territories and is not limited to the geographical area of common law marks. In order to obtain federal trademark protection, one needs to apply with the USPTO and pay the required fees. The additional benefits of a federally registered trademark are: inclusion of the trademark in the USPTO search database, which is publicly available; the ability to enforce your rights in federal court; the legal presumption that you own the mark and can use it; the right to use the ® symbol; the fact that the federal trademark can be used as a basis for filing for international trademark protection; and the right to apply to the U.S. Customs and Border Patrol for enforcement of your federal trademark to protect against counterfeit goods being imported into the United States.
When Should You File for Federal Trademark Protection?
You are not required to file for a federal trademark in order to operate a business, but if you want to protect your trademark from being used by others outside of your geographical area and throughout the U.S. and its territories, a federal trademark will offer the best protection. If you are using the trademark in commerce, or have a bona fide intent use it in commerce within six (6) months, you should be in good position to file your trademark application with the USPTO. However, prior to filing the trademark application, a clearance search should be conducted to ensure that the trademark is not already in use. See further discussion about clearance searches here.
Federal trademark application filing fees range from $250 – $350 per class of goods/services. Presently, the timeframe from filing a trademark application to registration is approximately 12-18 months, assuming, of course, that there are no Office Actions, oppositions to the trademark application itself, or refusal of the registration by the USPTO.
Do I Need an Attorney to File my USPTO Trademark Application?
While you are not required to hire an attorney to file a trademarkapplication (if domiciled in the U.S.), it is advised. An experienced attorney can assist with providing advice on the strength of your trademark, obtain clearance of your trademark and ensure that your application is properly filed. Trademark attorneys will also be able to assist with responding to any Office Actions issued by the USPTO in connection with your application. In the event that an opposition is filed against your trademark application proceeding to registration, an attorney can represent you before the Trademark Trial and Appeal Board (“TTAB”).
If you are interested in filing a trademark application or need legal counsel in connection with your brand strategy, please email us at info@kleinmoynihan.com, or call us at (212) 246-0900.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.
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