The Process of Registration of Trademark — Two concepts we need to keep in mind before starting.

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a. Consulting databases to know if a symbol has been registered or not

It is a best practice to consult official databases to know if a symbol is already registered. In the United States, registration can be done at the State level, with the trademark state offices, or at the National level with United States Patents and Trademarks Office (USPTO). This is very important because a registration gives notice to the world that a trademark right has been claimed, but it also informs the public about the party claiming that right, the class of goods or services covered by the registration, the initial date of use, the registration #, and more.

The identity of the party claiming a trademark right

In many cases, what a client wants is to register its own mark to develop a business project, promote a not-for-profit entity, or to develop a brand. However, in some cases, a client is interested in registering a variation of an existing trademark or in getting a license to use an existing registered trademark. To get a license to use a trademark, this is, the right to use another’s trademark, a person needs to know who is the owner. This appears in the registration database. Additionally, public databases also include information about the attorneys who registered the trademark in the first place. This information can be useful too.

The class of goods or services covered by the trademark registration

Even if a trademark is already registered, it could be used by others in the market. It is important to know that a trademark registration protects the exclusive right to use the mark, in connection with the class of goods or services covered. This means, that if you register a trademark to sell shoes and clothing, someone else could register the same mark to promote social services or events. Each registration covers certain classes of goods or services. Why? Well, when a trademark is registered it is taken out of the market as a competitive tool, and others in the same industry cannot use it to promote the same kind of goods or services.

The initial date of use

When it comes to trademark rights in the U.S., it is important to understand that the use of the trademark is fundamental. Trademark rights can exist even before a trademark was registered. Accordingly, the date of use indicated in the registration is good information if you want to enforce or defend your rights over a trademark. Additionally, if you are sued for trademark infringement, the first use date is important too. For example, a plaintiff could be asking for monetary damages accrued since 2018. However, if the trademark registration states that the initial date of use is January 2019, the success of such a claim is unlikely.

The registration #

The registration # identifies the trademark registration and allows the public to do research related to the history of the trademark to know whether the trademark is alive, whether it has been sold, abandoned, or renewed, among others.

b. Doing the typical Google or Yahoo Search

We have already said that trademark rights can be acquired by use or by registration. Accordingly, there may be trademarks that are valid and owned by others, but which have not been registered. In some cases, not every trademark is registered. For example, in industries where certain trends stay for a short period of time, companies do not register every trademark, this is because by the time the registration is complete the company may be already launching a new collection with a new temporary trademark.

c. Research of business names

When it comes to registering a trademark it is also important to know whether there is any business or entity name already registered using the same words that make your trademark. You most likely want to know what businesses, if any, are registered in the state or states where you will be doing business. However, if this an e-commerce business and you are most likely doing business nationally, you can hire an expert to do the search, or if you can focus the search on those states where you are more likely to have customers. By doing this research, you will be reducing the risk of being sued for using a business name that has been registered or is otherwise protected.

d. The right of publicity search

If a trademark is figurative and portraits the characteristics features of a person, it may be better to determine whether those features are so manifest that a particular person could claim that the trademark is actually portraying her or him. This is important because if a trademark portraits the specific features of a specific person, it is usually required to ask for permission before moving forward. Otherwise, you could be sued and forced to pay a considerable monetary judgment.

e. Industry-specific search

Finally, it is also important to know if the trademark at issue is actually registrable. There are certain industries and professions that have specific requirements when it comes to the use of trademarks or logos, or when it comes to doing advertising. These requirements or restrictions are intended to protect the public and to avoid the use of misleading or deceptive trademarks. According to the Trademark Manual of Examining Procedure (TMEP), it is absolutely prohibited to register marks that are likely to mislead or deceive consumers. Deceptive marks may include marks that falsely describe the material content of a product and marks that are geographically deceptive.

2. Use in Commerce

Trademark rights can be acquired by use or by registration. If a person uses a trademark in commerce, this person gets what is called “Common Law” rights. A person can use those rights to oppose a trademark registration or to register a trademark. On the other hand, if a person registers a trademark, this person not only acquires official ownership of the trademark, by means of the registration the world is put on notice of this person’s rights over the trademark. Then, if someone else uses that trademark she can be sued for infringement and forced to pay damages.

Written by

Giselle Ayala is an attorney focused on immigration, business, marketing, and artist’s transactions.

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