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Trademark Protection and the Benefits of Registering with the USPTO

Registering a trademark with the United States Patent and Trademark Office on their Principal Register offers the most protection for your brand name or logo used on your goods and/or services sold. If your trademark is registered, then you will have standing to exclude the rest of the public from using the same, or even a substantially similar mark, in some cases, to sell their own product. For example, no brand other than Nike is permitted to use the classic "Nike Swoosh" symbol to market athletic shoes, because Nike has already registered the symbol for that same use. Trademark owners enjoy the benefit of the legal presumption that you own the mark and have the right to use it, should a dispute arise. Registration can also be a basis for filing for trademark protection in foreign countries and registering with U.S. Customs and Border Protection to stop the importation of goods using an infringing trademark (a.k.a. "copycats").

As a trademark owner, you are free to sell, transfer, or license the use of your trademark to others, however you see fit. Initially, protection of your mark lasts for 10 years, provided that appropriate maintenance filings were submitted during that time. However, the life of the registration may be by successively extended by filing renewals between every 9th and 10th year from the date of registration.

What is a trademark?

The USPTO defines a trademark as "any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It's how customers recognize you in the marketplace and distinguish you from your competitors." Registration to the Principal Register is often known to the public by the ® symbol, which should only be used after registration has been granted.

What are the initial steps to take towards registration?

First, the USPTO announced a new identity verification policy in 2022, which impacts all online submissions (the quickest route to registration approval). In addition to a myUSPTO.gov account, every submitter must have their identity approved by the USPTO before making any submissions. The deadline for the implementation of this policy is TBA as of April 1, 2022, but K&D's attorneys and legal staff are already approved and ready to go.

Next, a potential applicant should consider the mark's current use and any intended future use for the mark. The mark can cover any number of different types of use, called "classifications" by the USPTO by paying a fee for each. Fees are generally determined based on the timing of the application and in accordance with the USPTO's fee schedule. K&D's experienced legal team can advise the most strategic way to submit your application to accomplish your particular goals, whether your priority relates to timing, or keeping the costs as low as possible, etc.

To efficiently gather all the necessary information, K&D offers clients a simple questionnaire which can be filled out and returned to us. Our goal at every step of the way is to advise our clients regarding the USPTO's processes, provide the most up-to-date timelines, and make comprehensive, persuasive arguments in support of registration to the USPTO.

Are there additional steps to be aware of?

Yes! Trademark registration is a process, which can potentially include multiple variables along the way. One reason for such is that each initial application and related subsequent submission will be reviewed and evaluated by an "examining attorney" appointed by the USPTO. Examiners often have a considerable amount of discretion in determining the sufficiency of a submission. Fees often accompany submissions made for the purpose of correcting deficiencies. The USPTO is a "user funded" agency, meaning that all funds utilized for its operations are derived from submission fees. Additionally, at some point prior to the granting of the registration certificate, the USPTO requires a "specimen," which refers to evidence that the mark is being used for each type of use claimed in the application. Such evidence is often not available at the time of the initial application; therefore, this is a common area where questions and additional fees arise.

Unsure about trademark registration?

Navigating through the USPTO's online system, responding to their additional inquiries, and meeting all the registration requirements can be a tricky, and sometimes lengthy process. This is especially true for those who desire to protect their mark or brand before their product actually hits the market. Additionally, it is easy to neglect periodic maintenance filings to retain the mark's registration status. For these reasons, many people opt to hire legal representation to navigate through the registration process on their behalf.

If you think that you might benefit from trademark registration or renewal, K&D can help. Please feel free to reach out to us with any questions or concerns using the information below, or by email at stephaniemeaglia@kroghdecker.com.

Authored By: Stephanie Meaglia

Krogh & Decker, LLP, Business Attorneys (916) 498-9000 or www.kroghdecker.com/contact

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