Frequently Asked Questions

Registering your trademark with the United States Patent and Trademark Office (USPTO) secures legal rights to your trademark and grants you exclusive nationwide use of the mark for the goods and services listed in the registration. It acts as a public notice of your ownership, significantly enhances your ability to enforce your rights against others who may attempt to use similar marks, and allows for filing infringement lawsuits in federal court. Registration can also help prevent the importation of counterfeit goods and facilitates the expansion of your business abroad. Only registered trademarks can use the ® registered trademark symbol.

To register a trademark, you must file an application with the United States Patent and Trademark Office (USPTO), providing details about the mark and the goods or services it will be used with. This includes selecting the appropriate class out of 45 possible classes, providing a suitable specimen showing how the mark is used in commerce, and paying the required fees. The USPTO then reviews your application to ensure it meets all legal requirements, including distinctiveness and potential confusion with existing marks. The process requires careful preparation and follow-up on any Office Actions refusals or objections.

The TM (for “trademark”) and SM (for “service mark”) symbols can be used to signify that you are attempting to claim rights to a mark for goods or services, respectively, before registration with the USPTO. The ® symbol, however, signifies that your mark is officially registered with the United States Patent and Trademark Office (USPTO), affirming your ownership and exclusive usage rights. The ® symbol indicates that a mark is federally registered and provides legal notice of your ownership and exclusive rights to use the mark. Using the ® symbol with an unregistered mark is unlawful and can undermine the validity of your trademark application.

While many names and logos can be trademarked, there are specific criteria they must meet to qualify for protection. The mark must be distinctive, not merely descriptive or generic, and must not be likely to cause confusion with existing trademarks. Marks that are purely descriptive can sometimes achieve trademark status through secondary meaning if they acquire distinctiveness in consumers’ minds over time. The United States Patent and Trademark Office (USPTO) evaluates each application on these bases to determine eligibility for registration.

A trademark search involves checking the United States Patent and Trademark Office (USPTO) database and other relevant sources to see if there are any existing marks that are identical or similar to the one you intend to use. Conducting a search before filing your application can save you time and money by identifying potential conflicts early. While not legally required, a comprehensive search can help avoid the costly process of rebranding if your application is rejected due to a likelihood of confusion with an already registered trademark.

A screening search primarily involves looking through the United States Patent and Trademark Office (USPTO) database to find any identical or closely related marks. It’s a quicker, more basic check to spot obvious conflicts with your desired trademark. On the other hand, a comprehensive clearance search is much more thorough. It searches the full federal register for phonetic equivalents, alternate spellings, marks that contain yours as a component, and marks used on related goods and services, rather than just near-identical hits. It then looks beyond the register at common law uses, business names, and domain name registrations. That is where most of the conflicts a screening search misses are actually found.
While a screening search might be sufficient for some trademarks, offering a quick way to identify clear issues, a comprehensive search provides a more detailed analysis, greatly minimizing potential legal problems down the road. Deciding between the two often depends on your comfort level with risk and the specific needs of your business. For those looking to mitigate as much risk as possible, a comprehensive search is the best choice, though it comes at a higher cost and requires more time.

In the United States, trademark registration can last indefinitely, provided you continue to use the mark in commerce and comply with all maintenance requirements. This includes filing a Declaration of Use and Application for Renewal at specific intervals post-registration to prove the mark is still in use. Specifically, you must file between the 5th and 6th year after registration, between the 9th and 10th year, and every 10 years thereafter to keep your registration active.

An Office Action is an official document from the United States Patent and Trademark Office (USPTO) outlining any issues with your trademark application that need to be addressed before it can proceed to registration. These issues can range from minor administrative corrections to more substantial legal obstacles, such as the likelihood of confusion with an existing mark. Responding to an Office Action involves addressing each issue raised, often requiring legal arguments and evidence, within a specified period to avoid abandonment of your application.

You may be able to register a trademark for a name that is already in use but not registered, as long as your use does not infringe upon the common law rights of the prior user in their geographic area. Trademark rights in the U.S. are primarily based on use in commerce, not mere registration. However, navigating potential conflicts with existing unregistered marks requires careful consideration and, often, a legal strategy to ensure your rights are secure.

If someone uses your trademark without permission, you may have several legal remedies available. Initially, you might consider sending a cease-and-desist letter to the infringer, outlining your rights and demanding they stop the unauthorized use. If this does not resolve the issue, you can file a lawsuit for trademark infringement. Success in court can lead to orders stopping the infringer, monetary damages, and sometimes the recovery of legal fees. It’s crucial to enforce your rights to maintain the strength and validity of your trademark. Our team at Harrigan IP is here to help you through this process, ensuring your trademark is well-protected.