Is a U.S. trademark registration necessary to enforce your rights?

No. Trademark rights in the United States arise from using a trademark, not from registration. If you are making proper trademark use of your mark, you can successfully sue for an injunction or damages, even in federal court, based solely upon your earlier use of that mark. These are called common law trademark rights, and they are limited in geographic scope. In order to assert your common law trademark rights, you must be able to show that you were the first to offer and sell your goods and services in the geographic area of the infringing activity you seek to stop.

Is a state trademark registration worth pursuing?

Each of the 50 states operates a trademark office within the secretary of state's office. However, because state registrations generally grant no rights that you do not already possess under common law, the value of a state trademark registration is limited. Because no examination is made by state authorities to assess whether there are any existing state or federal registrations that are confusingly similar to the mark sought to be registered with the state, infringing marks can co-exist on a state trademark register. State registrations often create a false sense of ownership. If you have further questions about a state registration, contact a competent trademark attorney in your state.

Owning a U.S. registration does provide certain advantages:

• Nationwide Priority Date. The filing of a U.S. registration application establishes a nationwide priority date that can far pre-date the date you first begin to use a mark.
  


• Presumption of Validity and Ownership. Owning a registration creates a presumption that the trademark is valid, that you are the owner, and that you have the exclusive right to use the mark in commerce.
  


• Constructive Notice. Registration gives constructive notice to all third parties that you own the registered mark, thus eliminating any defense of good faith adoption after the filing date.
  


• Easily Searched. Registered marks are easily searched, reducing the chances that a competitor will unknowingly adopt a closely similar mark.
  


• Customs Service Protection. A registered mark can be recorded with the U.S. Customs Service and used to deny entry into the U.S. of any infringing or counterfeit products.
  


• Incontestability. After five years, a registration may become "incontestable," eliminating a number of defenses that might otherwise be available to an infringer, including the defense that your mark is descriptive.
  


• Delaying Costs of Filing in Other Countries. Most countries permit U.S. applicants to assert the filing date of their U.S. trademark application as a priority date for their foreign application, provided the foreign application is filed within six months of the U.S. filing date. Essentially, this allows U.S. applicants to postpone the expense of foreign trademark filings for up to six months, without any loss of priority date.
  

Why bother to seek a U.S. registration?

Ask yourself these questions and then contact your trademark lawyer or email us at info@iph2.com.

• Do you care if someone else were to adopt "your" trademark in a far-off part of the United States? If the answer is no, you are only concerned with infringers in your local geographic area, then the advantages of filing a U.S. registration may not outweigh the costs.
  


• Can you imagine spending several thousand dollars or more enforcing your trademark rights against a third party, either now or some time in the future? If not, consider saving the money you would spend on a full trademark search, and rely on your common law trademark rights rather than seeking a federal registration. If you are just beginning to use a mark, conducting a good search may be more crucial than owning a U.S. registration.
  


• Are you currently making nationwide use of your mark, or will you be doing so very soon (say within the next few weeks)? If not, filing a U.S. application will allow you to secure a nationwide priority date immediately and will grant you nationwide rights that can be enforced once your registration issues.
  


• Are you worried about competition from foreign-made, counterfeit goods? If so, the benefits of U.S. Custom Service Protection make pursuing a registration worthwhile.
  

What is involved in the registration process?

To obtain a federal trademark registration, an application must be filed, along with a filing fee of $325 per class. It takes about twelve to 36 months from the date of filing to obtain a U.S. registration, but your priority date relates back to the date of filing.

During the review period, your application must clear two hurdles:

• Pre-publication Examination. A trademark attorney within the U.S. Patent and Trademark Office ("PTO") will be assigned to examine your application to confirm that it meets all of the statutory requirements, that the goods and services you are (or will be) selling under the mark are specifically described, that your mark is sufficiently distinctive and not descriptive, and that there are no confusingly similar, earlier-filed applications or existing registrations that conflict with your application.
  


• Publication. Once the examining attorney in the PTO accepts your application for publication, it is published in the Official Gazette, a government publication monitored by many trademark owners and watching services. Any third party may oppose your application within thirty days of publication, if they believe they would be injured by your application registering. Usually, this means they own an earlier registration or have earlier common law rights. Assuming no opposition is filed, your application will either be "allowed" (meaning you filed an intent-to-use application and all you must do is prove that you have begun use of the mark before a registration certificate will issue), or a registration certificate will be sent to you. If an opposition is filed, an administrative litigation (called an Opposition Proceeding) is commenced.
  

What does it cost to file a U.S. trademark application?

The cost varies depending on the complexity of your application, whether you are filing an intent-to-use application or an actual use-based application, the types of goods or services for which you seek registration and the nature of your mark. Generally, we charge $850, including the filing fee of $325 for a one class application. But this estimate may be high or low depending on the details of your application. We will give you a specific cost estimate for your application. Just email us at info@iph2.com.

For a list of the information we need to prepare a trademark application for you, click the appropriate link below:

• Actual use is being made of the mark
  


• Mark has not yet been used