The Trademark Registration Process – Part 1

Posted by on Oct 1, 2013

How does one go about registering a trademark?  What are some of the requirements in order to obtain protection?  There are many steps and several issues to consider, but overall the process is not arcane or excessively complicated (unlike, for instance, the steps necessary to obtain a utility patent).  Federal Trademark registration is handled by the United States Patent and Trademark Office.

Trademark Search

To be registrable, a trademark cannot already be owned by someone else.  Thus the first step is to conduct a trademark search.  Various private companies and even some attorneys offer trademark search services and will generate for you a search report.  Obviously an identical mark for an identical good is a problem, but the search report will generate more data than that.  The report will assess three broad categories of information: similarity of marks; similarity of products or goods; and non-trademark references.  Recall that a very similar mark on a very similar good to your own is likely to be problematic.  The report will look at current, expired, and cancelled Federally registered marks.  It will also provide information from state trademark registries, as well as other sources, such as web searches and trade directories.  You may have a competitor with a similar mark and a similar good that has not yet obtained any form of trademark protection but that still may cause problems for you.  People seeking to establish a trademark typically give their search report to a trademark attorney, who can then advise them of any problems or issues that are likely to arise during the registration process.

Trademark Use

Recall that trademark law is very practical and business-oriented.  One cannot simply register a mark for the abstract purpose of having the mark – there is a requirement that the mark actually be used for a business purpose.  Thus, once the search has been performed and any issues addressed, the next step is to actually use the mark in trade.  There are a variety of ways in which this may be accomplished.

Marks could be stamped or printed onto containers – e.g. a label on a wine bottle.  Marks could be engraved or monogrammed onto the product itself – e.g. a jeweler’s mark on a gold bracelet.  Marks could even be used as advertising on retail displays – e.g. a large display board featuring your mark with the actual product (such as an energy drink) being located directly underneath in a store.  There MUST be an actual association of your mark with the product being sold to satisfy this requirement.  One important thing to note: a retail display is quite different from a ‘naked’ advertisement.  Simply advertising your mark in say a newspaper is not the same as having the mark prominently displayed above bottles of the product actually being sold in a store.  The naked advertisement is not sufficient to satisfy the actual use requirement.

This requirement may also be satisfied by the filing of what is known as an ‘intent to use’ application.  Intent to use may be satisfied simply by a bona fide intention on your part to use the mark, however without some form of document or evidence this becomes very problematic to prove, and is not a recommended course of action.

Next week we will discuss the filing of an application with the United States Patent and Trademark Office.