Trademarks – should I register?

By Derrick Galantowicz - Otis and Bedingfield, LLC — 

Whether it be a logo, slogan, or a brand name, trademarks are all around us. Many businesses reach a point in their lifecycle when they consider whether they should federally register their brand name or logo with the United States Patent and Trademark Office (USPTO).

What is a Trademark?

A trademark is a unique identifier, be it a word, logo, phrase, etc., that identifies a service or product from a specific source and distinguishes it from others. A trademark must be distinctive and not generic or descriptive of the service or product. The USPTO categorizes goods and services into 45 trademark classes (34 classes for goods and 11 for services).

Benefits of a Registered Trademark 

One main benefit of registering a trademark with the USPTO is that it grants the business exclusive rights to use the trademark in the trademark class or similar classes across the United States. It provides conclusive evidence of ownership, deters potential infringement, and can increase the business’s brand value. Additionally, some online marketplaces, such as Amazon, require a registered trademark to participate in certain programs, and allow the business to enforce their rights against counterfeit sellers.

Factors to Consider before Registration

While there are many factors a business should contemplate before registering their trademark, following are some primary considerations:

  • A business should evaluate the strength of their chosen trademark.
  • A business should assess the breadth of their intended market. For example, a local coffee shop that has no intention of expansion might only need regional protection for their business.
  • A business should conduct a thorough trademark search to ensure their chosen trademark isn’t already in use.
  • A business should weigh the long-term benefits of trademark protection against their current budget, considering filing fees and potential legal costs if they encounter infringement issues.

The Trademark Registration Process

For a trademark already in use, rather than a trademark a business intends to use in the future, the first step would be to prepare the application with the USPTO. Once submitted, the application will be assigned to an USPTO examining attorney for review. Subsequent to the examination, objections may be raised for various reasons. 

If the application is approved by the USPTO, it will be published for public review, to allow a 30-day period for public objections. If there is no opposition, registration would be complete 4-6 months after publication. Once a trademark is registered, between the 5th and 6th year after registration, and every 10 years thereafter, a business must renew their trademark registration with additional filings and payment of renewal fees.

If your business is considering registering a trademark, it is important to approach that decision with strategic awareness and to seek the counsel of an attorney experienced in trademark law.