This action might not be possible to undo. Are you sure you want to continue?
Page 1 of 3
UARY 10, 2011
ecuring Trademark Rights: Ownership and Federal egistration
re are three ways to secure your rights in your trademark: (1) use the mark in commerce in nection with a good or service; (2) register the trademark with your state; or (3) register the demark with the United States Patent and Trademark Office ("USPTO"). e you use a trademark in commerce in connection with a good or service, you begin to acquire what called "common law" rights in the mark, so long as it is not confusingly similiar to or dilutive of ther's mark. The common law rights you gain in a trademark through use are limited to the graphic area in which you have actually used the mark, or those areas into which you have monstrable plans to expand your use (the so-called "zone of natural expansion"). This limitation is important for online ventures, however, as availability of your services over the Internet gives rise presumption of national trademark rights. It is important to note that if someone else is already ng a confusingly similiar mark, you will be unabale to obtain rights in your mark and could entially be liable for trademark infringement or dilution. If you intend to obtain rights in a demark through simple use in commerce, then you must be sure to do an effective search of existing demarks before you begin using it in connection with your good or service. Please see our section on ming Your Business: Searching for the Trademarks of Others for details. For more information on w to acquire trademark rights, see Sarah Bird's excellent post, Trademark Basics: Be First in Your rket, Be Distinctive, and Don't Confuse the Consumer. may also choose to register your trademark with your state or with the United States Patent and demark Office, but you are not required to do so in order to bring a lawsuit to protect it against ingement or dilution. State registration is likely to be both cheaper and easier than federal stration, but is probably not the best option for online activities, which by definition have a national international scope. However, if you would like to find out more about your state's registration cess, you can contact your state authority responsible for trademark matters. istering a trademark with the USPTO puts the country on notice that you are using a certain mark, also provides additional protections and procedural benefits if you need to litigate your rights. wever, this process is fairly long (usually taking a year or more) and potentially expensive (the fees t at $275). We provide more information about the federal registration process below.
Legal Guide Navigation
Legal Guide Home Page Browse Guide Sections Search the Guide
TABLE OF CONTENTS
Forming a Business and Getting Online Creating a Business Choosing a Business Form How to Start a Business Other Business Formation and Governance Issues Choosing and Checking the Availability of a Business Name Copyright Ownership of Content in a Business Employee Versus Independent Contractor Limited Liability New York City Taxes Personal Liability Piercing the Corporate Veil Tax Obligations of Small Businesses Trademark Law and Naming Your Business Naming Your Business: Choosing A Name Capable of Trademark Protection Naming Your Business: Searching for Trademarks of Others Securing Trademark Rights: Ownership and Federal Registration Getting Your Words and Other Content Out to the World Deciding Whether and How to be Anonymous Deciding Whether and How to License Your Content J li Skill dP i i l
nefits of Federal Registration noted above, federal trademark registration is not required for you to protect your trademark. wever, registration provides some advantages. Specifically, registering a trademark with the USPTO vides the following benefits: 1. 2. 3. 4. a public record of the trademark claim, which puts others on notice; presumptive evidence of trademark ownership and exclusive right to use the trademark throughout the U.S. (if you sue to protect the trademark, this will help you make your case); a U.S. registration can be used as the basis for obtaining registration in foreign countries; and the ability to file a suit related to the trademark in a federal court and recover the defendant's profits and up to three times your actual damages, as well as your attorney fees if the court finds the case to be exceptional.
ause federal registration is expensive, you'll want to weigh these benefits against the out-of-pocket s of obtaining a registration. w to Register e you have decided to federally register your trademark, you can file the necessary forms to apply federal trademark registration with the United States Patent and Trademark Office online. The cost etween $275 375 per mark for each International Class in which you seek registration depending
it will publish your trademark in the Official Gazette. see the Chilling Effects FAQ on Trademark.. you can hire an attorney to do it. is that you are more likely to encounter a conflict h someone else who is using the mark or a similar one in another field or industry. so it is relatively inexpensive. re are two different filing bases for a new trademark application: use based. with year renewal terms upon filing an affidavit of continued use. along with a specimen of use. At this time. you may want to consider filing in more than one class. You will be required to submit a specimen date of first use later in the application process before your mark is allowed to register. but once it is approved your rights date back to the day on which you d your application. including "immoral. You can request up ve 6-month extensions of time in which to submit a specimine of use. and one who believes that they would be damaged by its registration (such as a senior user of a fusingly similar mark) will have thirty days in which to oppose registration of the mark. can register your trademark for use in connection with more than one set of goods or services. but will have to pay an additional filing fee if the goods and services you list fall into more than one rnational Class. All told. USPTO estimates that filling out the form should take about 15-20 minutes. Page 2 of 3 etween $275-375 per mark for each International Class in which you seek registration. you will have six months in which to respond to any es raised by the examining attorney. if do expand in the future. the owner can an affidavit of incontestibility that. between the fifth and sixth years after the date of initial registration.citmedialaw. If you e already begun using the trademark in interstate commerce. as this would give you the greatest protection and flexibility. the registration cess can easily take 1-2 years. by issuing what's called Office Action. he USPTO approves your application. The term of a federal trademark registration is 10 years. If no affidavit is filed. deceptive. you y want to hire an attorney to draft your response. In ition. if the mark has been in tinuous use in interestate commerce for five years following the date of registration. you will have six months from the date on which it was issued to either submit an eptable specimen. and marks that are fusingly similar to others that are already registered." If you receive an Office Action. A federal application must contain at least four things.. additional details on registering a trademark.. If the USPTO issues a ice of Allowance. 1/10/2011 . depending n the filing method you chose. Journalism Skills and Principles Dealing with Legal Threats and Risks Newsgathering and Privacy Access to Government Information Intellectual Property Risks Associated With Publication Unique Content: Special Risks Guides and Resources Citizen Media Law Briefs Signup for our monthly newsletter: E-mail: * Subscribe Unsubscribe Submit Previous issues Did you find what you are looking for Please leave us Feedback! Username: * Password: * Log in Create new account Request new password Subscribe to our content! Follow us on Twitter Maintaining Your Trademark Rights demark rights can last indefinitely so long as the trademark owner continues to use the mark in mmerce to identify goods or services. Furthermore. There are several categories of marks that the USPTO will refuse to ster. se that disparage or falsely imply a connection to other people or entities. USPTO attorney may contact you to resolve any issues in your application. the USPTO will either rove your mark for registration (if you have already submitted an acceptable specimen of use) or e a Notice of Allowance (if your application is still based on an intent-to-use). as well as the date(s) which you first used the mark anywhere and in interstate commerce. you must supply the USPTO with a cimen showing the mark as it is used in connection with your goods or services. you should file an intent-to-use application. although first time s are likely to take longer.. you can apply for a new registration at that time (unless someone else has ady registered the mark in that area). in addition to the g fee: (1) the owner's name and address. hin about 3-6 months after you file the registration forms an attorney with the USPTO will examine research your application. If the issues raised in the Office Action are too complex. in addition to filling out the application. If you have not yet begun using trademark. you should file a use based lication.org/legal-guide/securing-trademark-rights-ownersh. or scandalous" marks (such as those including foul language). If no one oses (or requests an extension of time to oppose) within those thirty days. the registration is canceled. or intent-to-use. but you can also type in something else if r product or service does not fit into one of these categories. if accepted by the USPTO.Securing Trademark Rights: Ownership and Federal Registration | Citizen . aside from the additional filing fees. Trademark registration sually fairly straightforward for attorneys who specialize in it. ddition to renewing your registration (should you choose to register). you need to take some Need legal help? http://www. his process sounds too complicated for you. To do so. The USPTO has available a searchable index of identifications for goods and vices that they recommend you use for your application. (2) a clear drawing of the mark (which can be omatically generated from text if you do not have a logo). (3) a description of the goods or services which the mark is or will be used and the corresponding International Class number(s). the registrant must file additional affidavit confirming that the mark is still in use in commerce in order to maintain the stration. The downside to seeking registration in more n one class. If your business does not clearly fall hin one category of goods or services. and (4) the g basis. will significantly narrow the grounds n which a third party can seek to have the registration cancelled. or request an additional extension of time in which to do so.
This action might not be possible to undo. Are you sure you want to continue?
We've moved you to where you read on your other device.
Get the full title to continue reading from where you left off, or restart the preview.