QUESTION: Should I register my trademarks and service marks on the Principal Register of the United States Patent and Trademark Office (USPTO)?
There are two ways to acquire rights in a protectable trademark or service mark (a "mark") - using the mark in commerce or registering the mark on the Principal Register of the USPTO before anyone else uses the mark or registers it.
Registration on the Principal Register, as opposed to just using the mark, provides the following additional benefits:
(1) You can apply before you are using the mark and, if the registration is successful, you will end up with rights prior to people who start using the mark after you have filed.
(2) Obtaining registration does not give you a right to block people that were using the mark before you, or from using the mark in the area in which they were using it before you applied. However, if you applied before anyone else used it, it gives you rights throughout the U.S. and not just where you use it.
(3) After you register the mark, which generally takes about 10 months to one year, if you then use the mark continuously for five years and file what is called an "affidavit of incontestability," it is virtually impossible for anyone to take the mark away by claiming a priority right (i.e. that they used the mark before you).
(4) In certain situations, having your mark registered enables you to collect substantially more in damages for an infringement.
(5) Registering the mark either with the USPTO or the secretary of state for any state will often make it much easier for startup franchisors to comply with applicable state business opportunity laws.
(6) You can register any mark on the Principal Register with the United States Customs Service so its agents can block goods they see with your mark from entering the country without your consent.
(7) For all of the above reasons, anyone who is interested in acquiring your business from you will likely be more comfortable acquiring your business if your mark is registered.
You will only be able to register your mark on the Principal Register if:
(1) No one else has applied to register the same or a similar mark with the USPTO for use in the same or a related industry before you file (or filed in another country before filed in the USPTO within six months);
(2) Before or during the application process, you use the mark in commerce in more than one state, or the U.S. and another country;
(3) Your mark is not considered generic, such as "clothing store" for the name of a clothing store;
(4) Your mark is either not considered descriptive of an aspect of your product or service or, if it is, it has become "distinctive" by use, promotion and/or advertising so that when people hear the descriptive name, such as "Best Buy," they think of your product or service, and;
(5) Your mark is not a surname (i.e. a last name) or if it is, has become "distinctive" such as "McDonald's."
You should keep in mind that if someone was using a mark that was the same or similar to yours in the U.S. before you filed an application to register, that person may be able to block or cancel your registration.
Although anyone can try to register a mark with the USPTO at www.uspto.gov, I strongly urge business owners to hire a qualified intellectual property lawyer to take care of these matters.
Rob Hassett is an attorney in technology, entertainment and corporate law with the Atlanta law firm of Casey Gilson P.C. He also teaches in the professional education program at Georgia Tech and is the co-author of a volume on Internet Law of a leading treatise on entertainment law. If you have a question about intellectual property or corporate law, you may contact him at rob@internetlegal.com.
