Navigating the Trademark Registration Process

Navigating the Trademark Registration Process: Dos and Don’ts

Securing a federal trademark registration is a crucial step in protecting your brand. This guide will walk you through the process and highlight important considerations when using the trademark ® symbol, which is sometimes abbrievated (r) or (R).

Federal Trademark Registration: An Overview

Federal trademark registration provides nationwide protection for your brand, offering significant advantages over common law trademarks. The process involves filing an application with the United States Patent and Trademark Office (USPTO) and navigating several stages before receiving approval.

Benefits of Federal Registration

1. Nationwide protection
2. Listing of mark on Federal Trademark Registry
3. Legal presumption of ownership
4. Right to use the trademark ® symbol
5. Ability to file lawsuits in federal court
6. Basis for international trademark registration

The Trademark ® Symbol: Usage Guidelines

The trademark ® symbol is a powerful indicator of your brand’s protected status. However, its use is strictly regulated, and improper usage can lead to legal consequences such as criminal or civil penalties.

When to Use the Trademark ® Symbol

You may only use the trademark ® symbol after your mark has been registered federally with the USPTO. State or foreign registrations do not count.  Because the ® symbol is not commonly available on some typewriters (or ASCII), sometimes you will see it with the characters (R) (or (r)) or the phrase Registered, U.S. Patent and Trademark Office, which may be abbreviated to Reg U.S. Pat & TM Off in the US. Using it prematurely is considered fraud and can result in penalties.

Do:

• Use the trademark ® symbol immediately after your mark is federally registered with the U.S. Trademark Office
• Apply the trademark ® symbol consistently across all media

Don’t:

• Use the ® symbol before receiving official registration
• Apply the ® symbol to unregistered variations of your mark

Alternatives to the Trademark ® Symbol without registration

Before federal registration or while the application is pending, you can use other symbols to claim your rights in your trademark:

• ™ (trademark) for goods
• ℠ (service mark) for services

These symbols can be used as soon as you start using your mark in commerce, before filing an application or after obtaining a state trademark registration.

The Registration Process

1. Conduct a thorough search: Before filing, search existing trademarks to ensure your mark is unique.
2. File the application: Submit your application through the USPTO’s Trademark Electronic Application System (TEAS).
3. Examination: A USPTO examining attorney will review your application for compliance.
4. Publication: If approved, your mark will be published in the Official Gazette for opposition.
5. Registration: If no opposition is filed, your mark will be registered, and you can begin using the trademark ® symbol.

Maintaining Your Registration

Once registered, you must maintain your trademark to keep it active:

• File a Declaration of Use between the 5th and 6th year after registration
• File a Combined Declaration of Use and Application for Renewal between the 9th and 10th year, and every 10 years thereafter

Common Mistakes to Avoid

1. Using the trademark ® symbol before registration
2. Failing to monitor for infringement
3. Not maintaining consistent use of your mark
4. Neglecting to renew your registration

Enforcement and Protection

As a trademark owner, it’s your responsibility to enforce your rights. Regularly monitor the market for potential infringement and take appropriate action when necessary.

International Considerations

While the trademark ® symbol is recognized globally, registration requirements vary by country. Consider international registration through the Madrid Protocol if you plan to expand your brand overseas.

Conclusion

Proper use of the trademark ® symbol is crucial for maintaining the integrity of your brand protection. Contact one of our Trademark Attorneys if you would like to discuss whether you should or how you should use the (r) symbol to help safeguard your intellectual property and leverage the full benefits of federal trademark registration.  Remember, the journey doesn’t end with registration. Consistent use, proper maintenance, and vigilant enforcement with an experienced trademark attorney are key to preserving the strength of your trademark for years to come.