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Understanding Trademark Registration

From Mary Bellis,
Your Guide to Inventors.
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This tutorial prepares you to file your application for trademark registration.`

A trademark is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others.

Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

Establishing Trademark Rights

Trademark rights are established from either the actual use of the mark, or by applying for trademark registration and formally claiming your intention to use your mark for business. Federal trademark registration is not required to establish rights on your mark, nor is it required to begin using your mark.

The Right To Register, The Right To Use

There are two related but distinct types of rights in a mark: the right to register and the right to use. The first person to either use a mark in commerce or files an application generally gains the right to trademark registration.

Trademark registration can provide significant advantages to a party involved in a court proceeding. The USPTO determines who can register. However, the right to use a mark can be more complicated to figure out. Two parties could begin using the same or similar marks without knowledge of one another and neither applied for trademark registration. Only a court could decide the right to use, with an injunction stopping one party from using the mark, and a settlement for damages caused by trademark infringement.

Trademarks Do Not Have To Expire

Trademark rights can last indefinitely if the owner continues to use the mark to identify goods or services. An affidavit and additional fees must be paid at certain intervals. If no affidavit is filed, the registration is canceled.

See - Keeping Your Trademark Registration Alive

What Is Your Filing Basis?

An important part of your application will be selecting your basis for filing. This will determine what materials you will need to submit with your application. Your choices will include:
  • Use in Commerce - An applicant who has already used a mark in commerce may file based on that use called a "use in commerce" application.
  • "Intent-To-Use" - An applicant who has not yet used the mark may apply based on a bona fide or good faith intention to use the mark in commerce after filing.
  • Right of Priority - Filing based on an application or registration in another country.
  • What Does Federal Registration Mean

    United States trademark registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.

    Certain countries, however, do recognize a United States registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. The laws of each country regarding registration must be consulted.

    See - Who Can Apply To Register A Trademark?

    Conflicting Marks

    In evaluating your application, the USPTO examining attorney will conduct a trademark search for conflicting marks. If a conflict is found and the mark cannot be registered. You should do your own trademark search before filing.

    Conflict means a likelihood of confusion caused by the similarity of trademarks. For example, if relevant consumers would be likely to associate one product with another because of the trademark. To find a conflict, the marks do not have to be identical, and the goods and services do not have to be the exactly the same.

    Next > How Your Application Is Examined

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