February 27, 2017
Originally posted 2018-11-19 11:21:02
By Ann Marie Sallusti | amdlawgroup.com
Trademarks are not just a mark on a product. Trademarks make products identifiable to consumers and are essentially the product that is being sold. Trademarks “may” be federally registered with the United States Patent and Trademark Office (USPTO), but registration is not mandatory in the United States. Unlike most countries, the United States follows the first to use rule when protecting trademark rights. The first to use rule protects the trademark rights of the first party who uses the trademark of a certain product or service in commerce. Therefore, if a creator satisfies the requirement of using the trademark in commerce in the United States, the creator’s work will be protected. On the other hand, most other countries follow the first to file rule when protecting trademark rights, which protects the trademark rights of the first party to file an application and receive registration for a certain product or service.
It is important the creator designs a strong mark. A strong mark is one that will not be confused with other marks. A creator’s willingness to spend money on protecting their trademark corresponds with the amount research that can be performed in order to protect their trademark. A trademark can be registered federally through the United States Patent and Trademark Office (USPTO) at http://www.uspto.gov/trademarks/index.jsp. A creator can choose a mark and run key word, phrase and design searches on the website to determine if the same marks or similar marks are being used in the intended goods and services. When searching, a creator should consider the likelihood of confusion with other marks and research different constructions of their mark when searching on the USPTO website. Also, a creator should consider searching other websites and the Internet for similar marks. The scope of searches will provide support that the creator’s mark is original and not used by any other creator. Searching the USPTO website and the Internet will save the applicant time and money to help identify any similar marks dealing with the same goods or services that may cause confusion to consumers.
After the creator exhausts all feasible search engines, the creator will then complete and file an application online (http://www.uspto.gov/teas), by mail or in person. Then, the creator will pay the appropriate filing fees in accordance with the application.Once the application is filed and complete, the USPTO reviews the application and either approves, requires an amendment or rejects the application. If the USPTO approves and there are no oppositions to registration, then a registration will be issued. If the USPTO requires an amendment or rejects, the party can issue arguments for withdrawal of the amendment or rejection. A creator should also consider internationally protecting their trademark because the Internet makes all commerce global and there is a possibility that the creator’s brand and mark can be used outside the United States if they are not internationally protected. After a trademark is filed and registered, a party must renew and maintain their trademark in order to keep their mark protected.The party is required to submit evidence of continued use between the fifth and sixth year. Also, renewal is submitted between the ninth and tenth year. The mark will remain protected as long as it is maintained by the creator.
Trademarks are the cornerstone of all products and businesses. A trademark is more than a mark, it becomes the representation the consumer will forever identify with a certain product, brand or business. Creators can protect their originality and identity by federally protecting their trademarks.
Image Credit: http://www.prodality.com/part-3-understanding-trademarks/