Knowledge Base
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Why Should I Register My Trademark?
A federally registered trademark protects your brand name, logo or slogan from unauthorized use by others. A registered trademark provides legal protection and enforceable rights under the law against competitors and provides a basis to sue for trademark infringement if someone starts using your mark without permission on similar or related goods or services. A federally registered trademark guarantees:
Use of the registered trademark symbol (®) alongside your brand or logo.
Constructive notice to the public of your claim of ownership and exclusive right to use the mark in connection with the goods or services listed in the registration.
National priority of ownership against anyone who attempts to use or register a confusingly similar mark.
The ability to bring legal action concerning the mark in federal court.
In a case of trademark infringement, registered trademark owners are entitled to seek triple damages plus attorneys’ fees.
United States trademark registration may be used as a basis to obtain registration in foreign countries.
A federal trademark registration may be filed with the U.S. Customs Service to block the importation of infringing (counterfeit) foreign goods.
The ability to shut down Internet domain names, social media usage, Amazon, Etsy and other competing e-commerce use that attempt to infringe upon your mark.
After five years of registration, your right in the mark becomes incontestable, eliminating nearly every defense to trademark infringement.
Why Should I Conduct A Trademark Search?
Running a trademark search prior to filing your trademark application saves time, therefore saving money and protects your business from potentially serious disputes in the future. A trademark search provides valuable information about common law uses or existing registrations for the same or similar marks that may affect your application at the USPTO. The USPTO may refuse your application on the basis of a prior registered trademark, or a common law trademark user could oppose your application during the 30-day publication period. If the USPTO refuses registration of your mark for any reason, any filing fees and/or legal fees paid are non-refundable.
What If My Trademark Search Results Are Unfavorable?
If the results of the Comprehensive Trademark Search results are not in your favor, we will provide a second search of your new/alternate mark (for the same goods or services as your original order) at no additional cost. If you would like another Comprehensive Search with written Attorney Opinion Letter, the cost would be $425.
My Application Was Filed As Intent-to-Use. What Next?
If your trademark was filed as an “Intent to Use” mark (the mark was not yet in use), you will have to file a Statement of Use once you start using the mark, or when the mark is granted provisional approval by the USPTO, whichever occurs first. If the mark passes approval, the USPTO Examiner will issue a Notice of Allowance for your application.
The Statement of Use informs the USPTO that you are now actively using your trademark in commerce and your Intent to Use (ITU) application should be allowed full registration. We must also submit a specimen showing actual use of the mark in commerce on the goods or services specified in the ITU application. Once filed, your mark will proceed to registration and you will receive a Certificate of Registration 2-3 months later.
Intent to Use trademark applications provide the benefit of any earlier filing date if you are not yet using your mark when the application is filed. However, ITU applications do incur additional fees. Our legal fee to prepare and file the Statement of Use is $225 and the USPTO filing fee is $150 per class. If you are not yet using the mark and need more time, we can file a Request for Extension of Time. The legal fee for an Extension is $225 plus the USPTO filing fee of $125 per class.
Failure to file a timely Statement of Use, or Request an Extension of Time will result in significant late filing penalties, or abandonment of your ITU application.
Can I Use The ® Symbol Once My Trademark Application Has Been Submitted?
No. The federal registration symbol, the R in a circle (®), is for use only on trademarks registered with the USPTO, not for pending applications. The use the ® to provide notice to others of your legal rights in a federally protected trademark once your mark is accepted for registration. If you would like to provide informal notice of your claim to trademark rights in a particular name, you may use a superscript TM in connection with your mark while pending registration.
What’s Included In The Comprehensive Trademark Search?
A Comprehensive Trademark Search provides a complete picture of the trademark landscape for your brand. It informs you if someone has sought federal trademark registration for a mark that is identical or similar to your proposed mark, or if someone has sought protection for the mark in any of the 50 U.S. states. It also lets you know about commercial uses of the mark for domain names and for business name registrations.
Our Comprehensive Trademark Search includes a search for identical and similar marks in the federal trademark records, state trademarks, domain name registrations, and common law uses. Our search service also includes an Attorney Opinion Letter. This explains the search results and how they may affect your trademark rights and trademark registration process.
What is the Difference Between a Word Mark and a Stylized Design Mark?
A word mark protects the words themselves. If registration is granted, you can use the registered word mark any way you like and still have protection. This makes word marks the strongest trademark protection you can get (because the words are protected, it will not matter what your logo or someone else’s looks like).
For a stylized logo, the look and design of the logo is what’s protected. It includes any literal (text) and design elements of the logo. But if you change the logo, you risk losing some of your trademark protection. A stylized logo registration protects the exact design that was filed.
In the case of a stylized design mark, the trademark filed must exactly match the mark that appears on your goods/services.