If your business has a trademark but hasn’t registered it, one of your most valuable assets could be at risk. A key challenge is that many businesses that use trademarks are not even aware that they can and should be registered.
A trademark is a word, phrase, symbol or design, or a combination of any of these that identifies and distinguishes the source of the goods of one party from those of others. Registration of trademarks offers multiple benefits, including the ability to use the registered mark (®) adjacent to the trademark to clearly indicate that it is valuable enough to be registered with and protected by the United States Patent and Trademark Office (USPTO). Registration also gives the trademark owner access to the federal courts throughout the U.S. and the ability to register the trademark with the U.S. Customs and Border Protection Bureau. Failure to register a trademark can enable third parties to use it or something that is confusingly similar to market their own products, thereby devaluing what could have been a significant asset for the business.
In some cases, businesses use trademarks without realizing that they are trademarks and that they could be registered. Trademarks can exist in many forms including, but not limited to: names of specific products or services; logos for the business or particular products or services; specific colors used with products; characters used in corporate ads, such as pictures of babies, novel creatures, borders, outlines, etc; or product trade dress, which refers to visual characteristics of a product
or its packaging. Without the protection of registration, these marketing assets could be used by another company–perhaps a direct competitor–without easy recourse.
Trademarks can be registered if they are not confusingly similar to other already registered trademarks and if they pass an opposition process which allows the public an opportunity to oppose any published mark believed to be damaging to the opposer. Owners of unregistered trademarks unfortunately would likely not even be aware of the publication of a competing mark for opposition.
An easy, inexpensive registration process
Registering a trademark with the USPTO is relatively easy and inexpensive. The first step is to contact an intellectual property (IP) attorney who practices trademark law to determine if the trademark can be registered. The attorney will conduct a search of trademarks filed and/or registered at the USPTO to determine if any are “confusingly similar” to the trademark under consideration. During this process, the attorney considers key features of the trademark, including its visual appearance and meaning, to determine if anything could be considered “confusingly similar.” The cost of a search is usually less than $1,000.
The attorney must also determine if the mark is “merely descriptive,” which means it is descriptive of the goods or services with which it is used. If the mark “fails” this test, the attorney may advise the client to select a different trademark. Otherwise, the attorney will proceed to prepare an application for filing. It’s important to note that the trademark must already be in use in interstate commerce or the owner must have a bona fide intent to use the trademark in commerce in order for an application to be successfully filed. As part of the application process, the attorney will designate the goods and/or services with which the trademark is to be used. Typically it’s better to use the goods and/or services that are designated in the classification manual of the USPTO, since this will reduce the government filing fee. Typical fees are approximately $275 per class. In most cases, especially when dealing with smaller businesses, the trademark is only filed in one class to minimize costs.
The application is filed electronically online with the USPTO for review by an examining attorney often for less than $1,500. Assuming the application passes the examination, the trademark is then published for opposition before the Trademark Trial and Appeal Board. In most cases, there is no opposition filed. In some cases, there may be an applicant using the same or similar trademark for different goods and services. In these cases, applicants could sign an agreement to not use the trademark on those goods or services of the opposer.
The total cost for registering a trademark (assuming little or no opposition) is typically less than $3,000, not including the government filing fee. This is a relatively small investment considering the long-term potential value of the trademark. The average approval process takes between one and two years.
Protecting trademarks abroad
It’s important to note that a U.S. trademark registration is only valid and enforceable in the U.S. Business owners who are concerned about possible trademark infringement by goods or services made, used or sold in other countries, possibly for import into the U.S., can apply for foreign trademark registrations which are also relatively simple and inexpensive. According to reciprocal trademark laws between the U.S. and most foreign countries, a U.S. trademark applicant can file a corresponding application in nearly any other country within six months of the U.S. filing date and still obtain the effective filing date of the U.S. application.
It is possible to file applications in groups of countries for a reduced filing fee. Most countries in Europe, for example, belong to the European United Intellectual Property Office (EUIPO), so an applicant can file a single application and obtain a registration that is enforceable in all member countries of the EUIPO. Considering that many products are made in China and sold in the U.S., it is very common for U.S. trademark owners to also file applications in China.
Considerations for licensing trademarks
Trademarks can be licensed to other businesses, especially in cases where the business of the trademark registrant cannot be marketed in a particular region or to different classes of goods. However, licensing agreements should always require the licensee to meet certain quality standards in order to maintain the value and integrity of the trademark. Licensors should regularly police the use of the trademark by licensees. A license without an accompanying quality and policing agreement is referred to as a naked license and could lead to an invalidation of the registration.
The value of trademark registrations in an effort to protect valuable trademarks cannot be over-emphasized. As this article has documented, the process for registering trademarks in the U.S. and abroad is relatively easy and inexpensive, hopefully making trademark registration a consideration for even the smallest of businesses.
Peter Hochberg is a partner in the Intellectual Property group at Walter | Haverfield. He can be reached at 216-928-2903 or firstname.lastname@example.org.