Filing for trademark protection through the United States Trademark And Patent Office can appear to be a complex and intimidating process.
The reality is that there is far too much information on hand across the website, and much of it is hard to understand.
Here is a basic overview covering the essentials to filing for trademark protection as a start-up.
A trademark is a brand name, and may include any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the source and the goods/services of one seller or provider from those of others.
There are several different forms and levels of protections to choose from when considering trademark protection.
Section 1 A - Actual Use
Section 1 B - Intent to Use
Section 44d - Foreign Application
Section 44e - Foreign Registration
1 A is for filing a trademark for a company or product or service that is being marketed and sold at the time of the filing.
1 B is for filing a trademark for a company that is not yet marketing and selling a product or service, but intends to do so in the near future.
44d is for companies outside to the United States who want to file for a U.S. Trademark and for its corresponding protection within the United States. The company filing must be from a country that is party to a treaty or agreement with the U.S. for the company to receive the U.S. trademark and its corresponding protection.
44e is for companies outside of the U.S who want to file for a U.S. Trademark, its corresponding protection within the U.S, and who already have a registered trademark from their home country. The trademarks must match each other, and the company filing must be from a country that is party to a treaty or agreement with the United States for the company to receive the U.S. Trademark and its corresponding protection.
For complete Trademark protection, a company is required to submit a specimen of the product or service. This submission can be done at a later date. However, to start the process a company must submit a form of ‘alleged use’, or a ‘statement of use’.
To initiate the Trademark Filing process a company must have a Bona Fide intent to use trademark, based on 3 different criteria:
1. Business Plan:
To sell goods and services under the mark.
2. Creating Sample Products:
To sell under the mark.
3. A Visible Public Promotion:
Creating or updating a website to promote the goods and services under the new mark.
The trademark filing process can take 6-12 months.
Entrepreneurs should expect additional fees as the process unfolds, and to maintain the trademark protection every year in the future.
Filing for a Trademark
The following steps are required in order to complete the filings for a company’s or organization’s trademark with the United States Patent and Trademark Office.
1 - Initial Application Form
2 - Response Forms
3 - Intent-To-Use Form
4 - Post Approval Amendment Form
5 - Correspondence & Attorney Representative Form
6 - Petition Forms
7 - Miscellaneous Forms
8 - Registration Maintenance / Renewal / Correction Form
Steps 1, 2, 3, 4 & 5 represent the required documentation for receiving trademark status.
The remaining steps 6,7, & 8 represent additional documentation that may be required should changes occur during the filing process.
A trademark must not be descriptive, generic, or likely to cause confusion with other marks, and must comply with legal requirements for registration. Therefore a trademark’s first benefit is to be a clear representation of the company that is filing for trademark protection.
While there is no requirement for businesses to register for a trademark, entrepreneurs should not miss out on the following additional crucial rights and protections:
- Exclusive national rights to use our mark / brand.
- Legal presumption that we have the right to use our brand.
- Ability to file legal proceedings against unauthorized use of our brand.
- Basis for registering our brand in another country.
- Prevent foreign entities from infringing on our product / services.
- ‘R’ circle symbol can be used.
A crucial component entrepreneurs, companies and organizations should realize is that it is their duty to protect their trademarked entity.
The USTPO will not prosecute violators, or actively defend a trademark.
Registering for trademark protection provides a company with a foundation to protect their brand, and the legal right to use their trademark, but it does not prevent violators.
So company’s leadership must be actively aware and conscious that their trademark can still be copied or used inappropriately even with trademark protection.
Ultimately, It is the responsibility of a company's management to protect it's trademark, much like any other asset of their business.
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