Protecting your brand is fundamental when entering any market and for the success of any business: (1) your brand is the first thing that the customer sees when buying a product or a service, (2) you want your brand to be recognized over other competitors’ brands, and (3) the more your business grows, the more valuable your brand is, making your business more profitable and appealing to a bigger corporation that might be willing to acquire or invest in your business.
The most efficient way to protect your brand is by registering your mark in any country where your business has or might have a connection because each country offers protection to the trademark registered there. Once you obtain registration, you can legally stop anybody who tried to use a mark similar to your registered mark from doing so.
In the United States, the appropriate office is the United States Patent and Trademark Office (USPTO), providing you protection at the federal level.
You can register your business name as a “wordmark” or your logo or label as a “design mark,” as long as the mark is distinct and in business use (or about to be used in commerce).
However, before registering your mark, a thorough search for identical or similar marks is highly recommended to save you time and money. Indeed, a mark could have been registered in a State registry or have acquired common law protection: this does not bar your mark from registration at the USPTO but might give rise to an infringement claim against you.
Registering a mark with the USPTO can be achieved on four different bases:
“Actual Use” basis under Trademark Act Section 1(a), when the applicant has been using the trademark in commerce in the U.S. at the time of filing with the goods/services identified in the application;
“Intent to Use” basis under Section 1(b), when the applicant has not yet started using the trademark in commerce in the U.S. at the time of filing but has a bona fide intention to do so in the near future;
“Foreign Application” basis under Section 44(d), when the applicant owns an earlier-filing foreign application filed within 6 months of the U.S. application at the USPTO for the same mark and the same goods/services. In this case, the “priority” filing date for the U.S. application would be the same date as that of the foreign application filing date;
“Foreign Registration” basis under Section 44(e), when the applicant owns a foreign registration of the same mark and for the same goods/services from the applicant’s country of origin.
In addition, Section 66(b) of the Trademark Act allows registration based upon an international trademark registration under the Madrid Protocol.
The registration fee is in the range of $250/class (based on the simplest application process) unless additional filings are required. Suppose everything goes smoothly and the USPTO officer does not issue any Notice of Action relating to the existence of a similar mark. In that case, the registration is usually granted within about 7 to 15 months (depending on the filing basis) from the application date. It is important to note that the precedence on the trademark is acquired once the application is filed. Registration lasts 10 years and can be renewed for a 10 year period as long as the owner continues to use the mark to identify its goods/services and timely files all necessary documents, the first of which is between the fifth and sixth year from registration.