From TM to ®: Directing the Trademark Registration Maze

The transition from ™ to ® marks a brand's development from common law rights to the strong protections afforded by federal Trademark Registration. By means of this transformation, your brand’s personality will be strengthened and so will its legal position in the market. Let’s make our way through this complex labyrinth step by step, guaranteeing a smooth transition to a registered trademark.

Understanding the Symbols: ™ vs. ®

The ™ symbol signifies an unregistered trademark, showing that a company asserts ownership of a term, slogan, or logo as a trademark. While it acts as a public notification of your claim, it does not grant legal rights beyond those established by common law. In contrast, the ® symbol denotes a trademark that is officially registered with the United States Patent and Trademark Office (USPTO), providing exclusive rights to use the mark in connection with the specified goods or services across the country.

Step 1: Assess the Distinctiveness of Your Mark

Before departing from the registration process, examine the distinctiveness of your mark. Trademarks are categorized based on their distinctiveness:

• Fanciful Marks: Invented terms with no prior meaning (e.g., "Kodak" for cameras).

• Arbitrary Marks: Existing words used in an unrelated context (e.g., "Apple" for computers).

• Suggestive Marks: Terms that hint at a product's qualities without directly describing them (e.g., "Netflix" for streaming services).

• Descriptive Marks: Directly describe a feature or quality of the product and are generally not registrable unless they acquire distinctiveness through extensive use.

• Generic Terms: Common terms for products or services that cannot function as trademarks (e.g., "Bicycle" for bikes).

Choosing a fanciful, arbitrary, or suggestive mark increases the likelihood of successful registration and reliable protection.

Step 2: Conduct a Complete Trademark Search

Conduct a thorough search to verify that your desired mark is not already in use or registered. Use the USPTO's Trademark Electronic Search System (TESS) to look for existing trademarks that could potentially conflict with yours. Furthermore, investigate state Trade Mark Registration databases, domain name registries, and conduct internet searches to find any unregistered marks that may present challenges. This carefulness aids in averting possible legal disagreements and rejections of applications.

Step 3: Determine the Appropriate Filing Basis

In your application, you'll need to specify the basis for filing:

• Use in Commerce: Applicable if you're already using the mark in commerce across state lines or internationally.

• Intent to Use: Suitable if you plan to use the mark in the future but haven't yet commenced commercial use.

Selecting the correct basis is important for a valid application.

Step 4: Prepare and Submit Your Application

File your application through the USPTO's Trademark Electronic Application System (TEAS). You'll need to provide:

• Owner Information: Legal name and address of the trademark owner.

• Representation of the Mark: A clear image or description of the mark as it will appear in commerce.

• Goods/Services Description: Detailed explanation of the products or services associated with the mark.

• Filing Basis: Indicate whether it's "use in commerce" or "intent to use."

• Specimen (if applicable): For "use in commerce" applications, provide evidence of the mark's use, such as product labels or marketing materials.

• Application Fee: Fees vary depending on the application type and number of classes selected.

Step 5: Application Examination

Once submitted, your application is reviewed by a USPTO examining attorney to verify that it meets legal requirements and to check for any conflicting marks. It can take several months for this process to be completed. If problems occur, you will get an Office Action that outlines the issues, and you must reply within six months.

Step 6: Publication for Opposition

If the examiner approves your application, it is published in the Trademark Official Gazette. This publication allows third parties to oppose the registration within 30 days if they believe it would cause them harm.

Step 7: Registration or Notice of Allowance

• For Use in Commerce Applications: If no oppositions are filed, your mark proceeds to registration, and you'll receive a registration certificate.

• For Intent to Use Applications: You'll receive a Notice of Allowance, giving you six months to either use the mark in commerce and submit a Statement of Use or request an extension.

Step 8: Maintain and Protect Your Trademark

After registration, it is key to actively utilize your trademark and keep an eye on its usage to avoid infringement. Submit maintenance documents like the Declaration of Use in the fifth- and sixth-years post-registration, and renew your registration every decade.

This detailed plan enables you to safeguard your brand character, secure exclusive rights to your trademark, and strengthen your market position.