Trademarking and the Trademark Registration Process

How to get a trademark registration for your business name and logo
By Xavier Morales, Trademark Attorney, Owner Law Office of Xavier Morales Getting a trademark registration for your business names, logos and slogans has never been faster, easier or less expensive for small businesses. But before we delve into the trademark registration process, we need to explore why trademarking business names and logos is a good idea.

To begin, it should be noted that trademarking a business name or logo is not necessary in order to do business. However, if you would like to protect the name and goodwill that you have created, or will create, through your business from other competitors taking them for their own commercial purposes, then it becomes almost essential to get a trademark for your business. With a federal trademark registration in your back pocket, you can stop infringers from using your trademark or similar versions of your trademark, and can even sue them in federal court for trademark infringement if they don't comply with your demands to stop using the name, logo or slogan in question. In fact, it is possible to recoup damages and even lost profits from intentional trademark infringers. Accordingly, it is clear that having a trademark registration can only help your business.

Before you file a federal trademark application with the U.S. Patent & Trademark Office, however, it is generally a good idea to have a comprehensive trademark search conducted on your behalf by a competent trademark attorney. The purpose of the trademark search is to ensure that the name, logo or slogan that you have chosen to trademark has not already been trademarked by another entity. Even if you believe that the name you have come up with for your business it the best and most unique name there is, there could already be another business with that name, or with a similar version of that name, in which case you want to avoid becoming a trademark infringer yourself. The way to do this is to have a professional trademark search conducted, which usually involves a search of the federal trademark register, a search of the state trademark registers of all the 50 states, and a search of “common law” trademark databases such as national business directories and Internet domain names.

If your search comes back clear of any potential conflicts (as determined by competent trademark counsel), then at that point you may proceed to prepare and file a federal trademark application. Although there are many books and online articles that detail the trademark application process, it is not something that you should undertake without proper legal guidance. Many small business owners are under the mistaken impression that the trademark application is a simple form that anyone can fill out. On the contrary, the trademark application form itself is designed by attorneys, for attorneys. Unless you are familiar with trademark law, it’s best to allow a licensed trademark attorney to handle the trademark application for you, as incorrect filings may jeopardize your trademark rights.

Once your trademark attorney has prepared and filed the trademark application on your behalf, the U.S. Patent & Trademark Office will take approximately 4 to 6 months to review your application for conflicts, errors, and any other issues that may be present. If the Trademark Office does not find any potential conflicts with any other prior-filed trademark applications or registrations, and if there are no other outstanding issues, then the Trademark Office will approve your trademark application for registration.

Once approved, your trademark application will be “published for opposition” for 30 days in the Trademark Gazette. Within this 30-day opposition period, third parties can come forth to oppose your trademark application if they feel that the registration of your application would damage them in some material way. If after 30 days no one comes forth to oppose your trademark application, then your trademark application will register in due course, assuming you have already provided appropriate evidence of trademark use with your application. If you have not yet proved appropriate trademark use in commerce of the mark in question by submitting “specimens of use” (for example, if your application was filed as an “intent-to-use” application), then the Trademark Office will allow you 6 months to prove use. Once use is proven, your application would register in due course.

The benefits gained from attaining a federal trademark registration are varied. Most importantly, the trademarking your business name or logo will give you the exclusive right to use your name or logo in connection with the specified goods and/or services. If some other company begins to use a similar version of your mark in connection with similar goods and/or services, then you would have the option of sending them a cease-and-desist letter telling them that they need to stop using their mark immediately. If they don’t heed your warning, you always have the option of suing them in federal court for trademark infringement.

Additionally, the federal trademark registration will allow you to use the ® symbol next to your mark on your advertising and promotional materials. This will have the effect of alerting your competitors and potential infringers to stay away from your federally protected business name, logo or slogan.

After all is said and done, trademarking your name will provide you with the comfort of knowing that federal law is protecting your good name and your goodwill.