Six FAQs on Federally Registering Your Trademark, Brand Name or Logo
Hinckley Allen Intellectual Property
February 4, 2019
By: Carol H. Peters, Alexander P. Montgomery
Question 1: Why seek a federal (U.S.) trademark registration?
There are six important reasons to seek federal registration of your trademark or brand name. These include:
- Concern about a third party adopting an identical or similar trademark/brand name;
- Plans to expand your business into other regions of the U.S. or into foreign countries;
- Demonstrating trademark/brand ownership for financing purposes;
- Concern about online enforcement of your rights in your trademark/brand name;
- Desire to maximize the recognition and value of your trademark/brand name for a potential future sale or acquisition of your company; and
- Concern about importation of counterfeit goods or services into the U.S. under your trademark/brand name or something confusingly similar.
Question 2: What advantages are provided by a federal trademark registration?
Federal trademark registration provides your company with exclusive rights to your trademark, brand name or logo throughout the U.S. (and its territories and possessions) even if your company is not doing business in all states and locations. A single federal trademark application results in a national registration covering all potential U.S. markets.
Such national rights are especially valuable to companies using e-commerce channels to promote and provide their goods and/or services. Without a federal registration, your trademark rights are limited geographically to only those regions in which your company is providing goods and/or services.
Question 3: Do I need to use my trademark in order to file for federal registration?
No, your company can place an ‘intent-to-use” (ITU) trademark application on file, even if it is not yet using its trademark, brand name or logo to promote or provide its goods and/or services. The ITU application enables companies to secure trademark rights early, as of the filing date of the ITU application, even for products and services that are still in development. Requirements include a bona fide intention to use the trademark on or in connection with the goods and/or services designated in the ITU application. Such intention can be supported with, for instance, a business plan, ongoing market research, product research and development, product testing, or contracts with vendors. However, these materials are not filed with your ITU application.
Question 4: What if I do not have a registration or trademark application on file and a third party is using a trademark, brand name or logo identical or confusingly similar to mine?
Without a trademark registration or application on file, establishing your rights relative to the third party depends on the evidence your company can present to demonstrate its first use of the trademark. Trademark rights in the U.S. arise through actual use of a trademark, so your rights would depend upon when and where you put your trademark to actual use with the relevant goods and/or services. It would also depend on whether the third party has a trademark application on file, and when and where the third party began to use the trademark. This is referred to as a “priority” conflict, which can be a complicated issue. The party that can demonstrate it used the trademark first will likely prevail.
By filing an ITU application, your company may avoid a priority conflict, or having the “brand rug” pulled out from under it, because the filing date of your ITU application is considered under the law to be your company’s constructive date of first use of the trademark in commerce.
Question 5: How does a federal registration prevent third parties from using my trademark, brand name or logo, or something very similar?
Federal trademark registration (and a trademark application) is a public record and serves as notice to the public of your ownership of and exclusive rights in your trademark as of the filing date of your application. It can also dissuade a third party from adopting a trademark that is identical or confusingly similar to yours. In addition, the U.S. Patent and Trademark Office would likely cite your prior registration or application to reject a later-filed third party trademark application seeking registration of an identical or confusingly similar trademark, brand name or logo. This would help your company maintain the exclusivity and distinctiveness of your trademark.
Question 6: Why hire a trademark attorney to handle your trademark registration application?
Doing so can avoid obstacles and unnecessary delays, and increase the chances of successfully obtaining your company’s trademark registration.
Filing a trademark application requires much more than simply filling out a form. It begins a legal, and sometimes complex, process with the U.S. Patent and Trademark Office, which is governed by U.S. trademark law. A trademark attorney has the legal understanding and experience to steer your application through the process, and can help avoid potential obstacles to and unnecessary delays in obtaining your registration. A trademark attorney will also properly classify and describe your goods and/or services in the trademark application, which would avoid unnecessary actions by the U.S. Patent and Trademark Office and enable you to obtain a broad scope of protection for your trademark. Finally, a trademark attorney can avoid pitfalls that can potentially threaten your filing date or application.
 A recent academic study entitled “Do Trademark Lawyers Matter?” reported that 82% of trademark registrations filed by trademark attorneys passed the scrutiny of the U.S. Patent and Trademark Office and were allowed for registration versus 62% of applications filed by individuals and companies acting on their own. See, Deborah R. Gerhardt & Jon P. McClanahan, Do Trademark Lawyers Matter? 16 Stan. Tech. L. Rev. 583 (2013).