Small Businesses and Trademark Registration

Filing a trademark seems like something simple, right? You can do it on the internet. Who needs an attorney? Just keep reading.

In the United States, your trademark rights are based on use, specifically being the first to use, for example, a sign or design. When it comes to interstate commerce, trademark rights are based on the continuous use of a trademark (for goods) or a service mark (for services). Think of it as a “race.” The race is to use the trademark, not to file an application with the U.S. Trademark Office. Sometimes applications can be filed based on an intention to use a trademark, but those are exceptions.

Trademark owners do not have to file for registration in order to have the right to sue for infringement. Registration, however, can save the owner a lot of money. With a trademark, you can send a “cease and desist” letter to anyone with a sign or design like yours for similar goods and services that might confuse relevant consumers to think your goods or services are sold by the other party.

Without a federal trademark, the burden of proof is yours. You will have to show how long you have been using the sign or design and where you have been using it. You will have to produce your sales and receipts, along with any amount spent on advertising. Attorneys can argue over what constitutes enough “use,” which “use” began first and whether one’s “use” is limited to the geographic areas where the goods were sold.

An attorney can do a comprehensive trademark search. Then, he or she can analyze the results before you even begin to file for registration. Even if you are not “using” a trademark to promote your goods and services in interstate commerce, a trademark application can be filled on an “intent-to-use” basis. You get six months from approval to start using the trademark in commerce. You can request up to six 6-month extensions. When you finally file proof that you are using it, your registration is effective retroactive to the date you filed.

The most important thing to remember is no matter how easy it may look, it can be very costly if you file for trademark registration incorrectly.  As a result, be sure to hire an experienced attorney in this area to do this correctly the first time.