In the United States, trademarks are protected by common law, state law, and federal law. At the federal level, trademarks may be registered with the United States Patent and Trademark Office. Registering your trademark is an investment into your business, as the associated goodwill that comes with your trademark is a valuable business asset that can appreciate in value over time.
Federal registration of a trademark on the Principal Register provides many benefits to trademark owners, including the right to use the ® registered trademark symbol on your goods or services. Your registration can prevent others from adopting confusingly similar trademarks, as the United States Patent and Trademark Office has a duty to deny registration to a trademark that may cause consumer confusion. A federal trademark registration also serves as prima facie proof of the validity of your trademark and it provides notice to the public of your trademark ownership. Owning a federal trademark also permits you the right to sue in federal court if it becomes necessary to enforce your trademark rights. You may also recover monetary damages, including the infringer’s profits and attorney’s fees incurred during the lawsuit.
The trademark office allows you to file for your trademark if you are actually using the mark in commerce or if you intend to use the mark. An intent to use application is used where you have a bona fide intent to actually begin using that mark in commerce. If you file a trademark intent to use application, you will need to file a subsequent Statement of Use to certify that you have used the mark in interstate commerce. Use of a trademark in interstate commerce can be establish through a date of first use of the mark anywhere and a date of first use of the mark in commerce.
When submitting your trademark registration, you must submit a specimen that shows how the trademark is actually used in commerce. For a service trademark, this may be a screenshot of your website which offers the services with the trademark displayed. For goods, this may consist of product packaging or a hang tag. The specific specimen type will depend on the good or service which you are seeking trademark registration for.
Once your application is submitted, it will be assigned to a trademark examining attorney. The trademark examining attorney will review your application to see if there are any issues with allowing your trademark to proceed to registration. If the trademark examining attorney discovers any issues, he or she will issue an Office Action. An Office Action will identify the issues with the registration and may include suggestions to the Applicant on how to cure these issues.