Registering a trademark (often called a “mark”) is not a simple process.
There are multiple stages and many hoops through which to jump, but the end result—a successfully registered trademark—can distinguish and protect brand names for products or services, slogans, and logos. Whether you’re in the early stages of needing a clearance search to ensure another company isn’t already using the same name (or a confusingly similar one!), ready to prepare and file the application, or need to maintain an existing trademark, EMP&A can help.
What happens without a trademark registration? It is akin to building a new home on a weak foundation. Let’s say a new business, XYZ & Associates, filed their company name with the state but did not register a trademark for their name with the U.S. Patent and Trademark Office (USPTO). In essence, all they would have achieved was notifying the state of their name, and any right to the name could be limited to the state within which XYZ physically operates.
Alternatively, what happens with a trademark registration? First, the owner of a USPTO registration gains nationwide priority: The moment an application for a Federal trademark registration is filed, everyone across the country is on notice. As a result, anyone who subsequently attempts to use or register a confusingly similar mark can generally be stopped. Once registered, a company vastly increases its chances of preventing anyone else from using its name anywhere else in the United States, which also increases the asset value of the name, slogan, or logo. If the business is ever sold, franchised, or licensed in part to another company, the trademark registration can even be assigned a dollar value.
In addition to extending trademark rights to all 50 states, Federal registration allows the owner to use the ® or Registered Trademark wording alongside the name or logo. This way, if someone adopts a confusingly similar mark, they cannot claim ignorance of your rights. Registration also provides constructive notice to everyone in the U.S. about the mark; after five years of registration, the rights become incontestable, eliminating nearly every defense to trademark infringement. Registering a mark also provides substantial benefits and savings if the owner ever has to go to court to stop an infringement—registered marks can collect up to triple damages plus attorneys’ fees. And, if someone tries to register a domain name online that infringes, a registered trademark owner can generally shut down the infringing website more easily (and quickly and affordably) than if the trademark is not registered. The cumulative effect of these benefits is a powerful warning to others to avoid using infringing marks.
Lee Wilson, The Trademark Guide
Why Do Trademarks Matter?
XYZ & Associates registers their company name with the state in which they operate but does not register a trademark for their name with the U.S. Patent and Trademark Office (USPTO).
- XYZ & Associates’ name would be recorded in the state in which XYZ physically operates.
- Any right to the name could be limited within the confines of that state.
XYZ & Associates successfully registers their name with the U.S. Patent & Trademark Office (USPTO).
- From the moment the application is filed, everyone across the country is notified that XYZ is claiming rights in its mark.
- Anyone who subsequently attempts to use or register a confusingly similar mark can be stopped.
- Once registered, XYZ further increases its chances of preventing anyone else from using its name anywhere else in the U.S. because they appear in the USPTO database.
- The asset value of XYZ’s name increases.
- If the business is ever sold, franchised, or licensed in part to another company, the trademark registration can be assigned a dollar value.
- Federal registration would allow XYZ to use the ® or Registered Trademark wording alongside its name.
- If another company tried to adopt a similar name, they could not claim ignorance of XYZ’s rights.
- After five years of registration, XYZ’s name rights become incontestable, eliminating nearly every defense to trademark infringement.
- If XYZ had to go to court to stop an infringement, they could potentially collect up to triple damages plus attorneys’ fees.
- If someone tried to register a domain name online that infringes upon XYZ’s mark, XYZ could generally shut down the infringing website more easily.
EMP&A handles everything related to trademark registration and protection, ranging from a basic search to the most complex brand analysis. Since 1999, we have represented clients big and small, from all over the world, from all industries (such as software, real estate, restaurants, cosmetics, apparel, publishing, breweries, toys, and much more), in all types of trademark work, using predictable and affordable flat fees. Core services we provide include:
- Register at U.S. Patent and Trademark Office
- Register internationally
- Defend all aspects of infringement
- Monitor for infringement
- Help businesses stop infringements
- Represent parties in Trademark Trial and Appeal Board disputes
- Negotiate trademark compromises
- Draft licenses
- Strategize regarding brand creation, use, or redevelopment
- Handle Federal Circuit Court of Appeals cases
- Provide specialized feedback.