What is a Trademark? Think of a trademark (or servicemark for services) as a word, phrase, symbol or design that identifies and distinguishes one source of goods or services from another. It is not necessarily the name of your company but the mark that you use to identify your goods or services.

Why Register a mark? In general terms, if you have such a mark and you have used the mark in commerce, you already own it. Trademark rights come into being upon use in commerce – not upon registration, as many people believe. However, registration with the United States Patent and Trademark Office (USPTO) provides protection in many ways that most people feel are worth the comparatively reasonable expense. The benefits of Federal Registration are:

• constructive notice to the public of the registrant’s claim of ownership of the mark;

• a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;

• the ability to bring an action concerning the mark in federal court;

• the use of the U.S registration as a basis to obtain registration in foreign countries; and

• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Essentially, this means that while you may own the mark in advance of registration, it becomes somewhat difficult to enforce the ownership of your mark against another person if you do not have access to Federal courts to enforce the mark – or at least registering it offers you the threat to do so if necessary. Also, given that registering the mark affords you the “legal presumption” of the ownership of your mark and that your mark becomes publicly searchable by all those that are interested in such things, the likelihood of an unintentional infringement is reduced significantly.

What does it cost to Register a Mark? The fees are presently set at figures that range between 275.00 and 375.00 PER INTERNATIONAL CLASS. An International Class is essentially the type of goods or services that you provide. If you sell t-shirts and shot-glasses for example, those are two different International Classes. If you have an attorney prepare the application for you, you should get an estimate up front and not expect to pay more than an few hours for anything but the most complicated of applications. At InternetLitigators, we often complete single class applications in under an hour.

Can I register a mark before I start using it? Recognize that you may file an application even before you start using the mark. This is called an “Intent to Use” application and is quite common. Once approved you have 6 months to prove your use of the mark. This way, when you have that sudden spark of inspiration for a new product or service name, you can immediately protect the mark so that when you finally start using it your claim will pre-date anyone that came up with the same idea in the meantime. The process typically takes about 8 months so filing an Intent to Use application is not a bad idea if you are just getting started.

Do I need a Lawyer? You do not need an attorney to register your mark. However, we have had many clients come to us after having their application rejected by the Examining Attorney. This can significantly delay and/or complicate your registration. In addition, if you represent yourself, be certain that you comply with all requirements of the trademark statute and procedural rules.

May I use the TM, SM, ® Symbol? Prior to your successful registration you may NOT use the ® symbol. This is a designation for marks that have achieved a Federal Registration only. Up to that point in time you may label marks in which you claim ownership with either TM or SM as long as the use of those designations is not otherwise prohibited in your State.

See. InternetLitigators Blog Entry: You Registered a Domain Name, But Do You Have the Right to Use It? for more information.

About: Mr. Cohen is a Partner in the Law offices of Chapman, Glucksman & Dean apc in Los Angeles, California. He chairs the firm’s Internet & Technology Practice Group and represents Internet companies Nationwide on all business law issues. He is also the director of InternetLitigators. This Blog neither constitutes legal advice nor creates an attorney client privilege with the reader. Do not post comments concerning specific legal situations. Mr. Cohen can be reached at jcohen [@] InternetLitigators.com.

This entry was posted on Wednesday, March 26th, 2008 at 6:09 am and is filed under Issue 8 - March 2008, Lunar Legal. You can follow any responses to this entry through the RSS feed . You can leave a response, or trackback from your own site.