United States: Trademarks Guidelines

Last Updated: December 19 2014
Practice Guide by Brinks Gilson & Lione

If your business sells goods or services, a strong trademark will help your customers identify your company's goods or services, as well as distinguish your company's goods or services from those of competitors. As your business grows, your trademark becomes more valuable. A trademark can be any word, name, symbol or device used by a manufacturer or merchant to identify its goods or services and distinguish them from others. In this Practical Guide, we provide a step-by-step guide to selecting and registering trademarks for your company's goods or services.

A. Choosing a Trademark

As soon as you decide that you will be bringing a new product or service to market, you will want to select a trademark. Preferably, you will want to select a strong, distinctive, trademark. After selecting a strong trademark, you will want to make sure that no other party has established rights in that trademark.

B. Registering Your Trademark

Once you've selected a trademark and conducted a search to verify that no other party has established rights in that trademark, you will want to register your mark. While federal registration is not required, registration places others on notice of your rights in your trademark and provides for nationwide rights, among other benefits. A federal trademark registration application may be based on use of a trademark in commerce or on intent to use the trademark. If you begin using your selected trademark before you apply for registration, you will apply for registration based on your use of the mark. On the other hand, if you apply for registration before you begin using your selected trademark, you will apply for registration based on your intent to use the mark.

In both cases, you will begin by filing a written application for federal trademark registration, along with certain supporting documents. If your application is based on your use of the mark, your application will also include the date of first use and one or more specimens showing the use of the mark in commerce. In addition to the written application, an application for federal trademark registration includes a declaration of the applicant and a drawing of the mark.

After filing your application, you will enter a period of trademark prosecution, during which a trademark examiner at the USPTO will examine your proposed trademark. If the examiner determines that your mark complies with the requirements of the trademark act and that its registration would not violate the rights of another party, he or she will issue a Notice of Allowance.

If your application was based on use, the Notice of Allowance will trigger the publication of your mark in the USPTO's Official Gazette. Barring any opposition, the mark will be registered. On the other hand, if your application was based on your intent to use the mark, you must file an Allegation of Use in the USPTO before your mark will be registered. An Allegation of Use may be filed before the Notice of Allowance issues or during a six-month period after the Notice of Allowance issues (extendable up to three years from the Notice of Allowance). After you submit your Allegation of Use, the mark will be published for opposition and then registered.

C. Using Your Mark

After registering your mark, you will want to use your mark in connection with your sale of goods or services. Proper use of your mark is essential not only to distinguish your goods and services from those of your competitors, but also to maintain your rights in the mark. Correspondingly, improper use of your mark can destroy your rights in the mark. You should follow these guidelines when you use your trademark. You should also ensure that others using your trademark follow these guidelines.

D. Maintaining Your Registration

If you continue using your mark after registration, you will be able to maintain your registration for as long as you continue to use the mark in commerce. Therefore, you should document the use of your trademark, or the reasons for its non-use. You will be required to file an Affidavit of Use, showing that you are still using your trademark in commerce, between the fifth and sixth anniversaries of registration, and again on every tenth anniversary of registration.

E. Your Duties as a Trademark Owner

In addition to using your mark properly, you should also observe the following duties with respect to your mark. First, you should ensure consistent quality of the goods or services associated with your mark. Second, you should police the use of your mark by others. Some companies find it useful to employ a trademark watch service for this purpose. If you do find that others are using your trademark, you should document any evidence of confusion caused by such use.

F. Using the Trademarks of Others

In some cases, you will need or want to use the trademarks of others in your advertising, product labeling, and promotional materials. However, you will want to do so without incurring liability for trademark infringement. Fortunately, the law allows merchants to use the trademarks of others under certain circumstances. First, the statutory doctrine of "fair use" allows merchants to use the trademarks of another when such use is necessary to adequately describe the merchant's own goods or services. Second, the court-made doctrine of "nominative fair use" allows merchants to use the trademarks of another to refer the trademark owner's goods or services. By adhering to the guidelines on "fair use" and "nominative fair use" your business can use the trademarks of others without risking trademark infringement liability.

To find out more please access our IP Primer page.

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

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Supporting Documents
Other United States Advice Centres
Advertising and Marketing
Telemarketing
More Advice Centers
Useful Resources
The IP primer provides an overview of the complexities of IP law, is an excellent resource for both new and experienced professionals and available in a number of languages.
A collection of recent and significant publications by the Experts at BGL.
USPTO is the federal agency for granting U.S. patents and registering trademarks.
Administers the U.S. copyright law and advises Congress and other government agencies regarding copyright issues.
WIPO is the global forum for intellectual property services, policy, information and cooperation.
INTA is a global association of trademark owners and professionals.
The Intellectual Property Owners Association is a trade association for owners of patents, trademarks, copyrights and trade secrets.
The AILPA is an innovator, powerful advocate, and visible global leader in intellectual property.
AIPPI is an international organization comprised of business firms, executives, lawyers, educators, patent and trademark agents, intellectual property owners, and other persons interested in the worldwide protection of patents, designs, trademarks, trade names, know how, goodwill, copyright, and other intellectual property rights and the elimination of unfair trade practices.
BIO is the world's largest trade association representing biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations.
Supports innovation, competitiveness and economic growth across Europe through a commitment to high quality and efficient services delivered under the European Patent Convention.
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