How to Trademark

What are Trademarks for?

The essential function of a trademark is to exclusively identify the commercial source or origin of products or services. A trademark may be the most valuable property a company owns, think of famous logos like Nike or Coke.  They are powerful trademarks.  A trademark indicates the product’s source or serves as a badge of origin. Certain exclusive rights attach to a registered trademark, which can be enforced by way of an action for trademark infringement; even some unregistered trademark rights may be enforced.

Can I reserve a trademark before I actually use it?

If you are not using the trademark already, the Trademark Office allows filing an “intent-to-use” trademark application. The Trademark Office will examine the trademark to make sure it is exclusive for your industry and issue a ruling.  When you do use your trademark in commerce, file an example of use with the Trademark Office.  If the use is proper, the Trademark Office will register your trademark giving you the right to use the registration symbol ®.

Use Of A Registered Trademark

Once a trademark is registered, the trademark owner must protect the use of the mark to keep from losing it.  This requires that each use of the mark provide a notice that the mark is registered. It is recommended that the registration mark ® or the words “Registered, US Patent and Trademark Office” be used at the first instance when the mark is used.

If a trademark owner fails to police his or her trademark, the owner may be deemed to have abandoned the trademark or acquiesced in its misuse.

Do not use the registration mark ® or the words “Registered, US Patent and Trademark Office” unless your mark is registered.  Use ™ instead.

How do I keep my trademark?

Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times (usually every 10 years). In general, the owner of a registration must periodically file Affidavits of Continued Use and Applications for Renewal. Also, after five years of continuously using your mark, you can apply for incontestability status.

For a trademark registration to remain valid, an Affidavit of Use must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. 

The registrant must also file a renewal application within the year before the expiration date of a registration, before the end of every ten-year period after the date of registration.

What if someone else is using my trademark?

If a trademark owner believes someone is infringing his or her trademark, please contact us and do not attempt to rectify the problem yourself.

The advice included in this article is for education purposes only; consult a patent professional for specific information about your invention.

Side Resource

A Trademark is the Most Valuable Intellectual Property You Own Because it Protects Your Brand Name


The advice included in this article is for education purposes only; Please contact us for specific information about your trademark



 

About the Author

 

Mr. Pete Tormey heads the Intellectual Property Group for Antero & Tormey LLP in San Francisco and Walnut Creek.  He has a J.D., an MBA in marketing and a BS in electronic engineering.  He is licensed to practice in California and before the US Patent and Trademark Office.  He can be reached at pt@AnTLegal.com  or at (925) 352-9842.


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