Trademark Registration: Role of a Trademark Lawyer

How can you say that this belongs to you? Here "this" could be anything ranging from business logo to a name, word, phrase, symbol, design, image, or a combination of these elements, or in short, any intellectual property. The term trademark is used to refer to any distinguishing attribute or special characteristics by which an intellectual property is readily identified. In the United States when a trademark is used in relation to services rather than products, it may sometimes also be referred to as a service mark.

Trademark registration comes from either by actual use of the mark, or by filing a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. It is important to understand that federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, if one gets the registration it can secure benefits beyond the rights acquired by merely using a mark.

The trademark applications must be filed by your lawyer in your name as the owner of the mark, and can be filed under the individual, corporation or partnership categories. You may submit and process your own application for registration or you may be represented by a trademark attorney. However, as the owner of a mark, you solely control the nature and quality of the goods or services branded by the mark.

Your attorney may apply for federal registration in three principal ways. Firstly, if you have already commenced using a mark in commerce, the attorney must file a "use" application. Secondly, if you have not yet used the mark, your attorney must apply for an "intent-to-use" application. Lastly, under certain international agreements, a trademark application from outside the United States may be filed in the United States based on an application or registration in another country. However a United States registration provides protection only in the United States and its territories and hence in order to protect the mark in other countries, you must look for protection in each country separately under the relevant laws there.

Rights in a mark can be classified into two types namely the right to register and the right to use, which are related. In general, the first party who either uses a mark in commerce or files an application in the Patent and Trademark Office (PTO) has the ultimate right to register that particular mark. The Patent and Trademark Office's authority is limited to determine the right to register only. On the other hand the right to use a mark can be more complicated to determine. This holds good when two parties have begun use of the same marks without knowledge of one another and neither has a federal registration. In such a case only a court can render a decision about the right to use of the mark, and can issue an injunction or award damages for infringement. It should be noted that a federal registration could provide significant advantages to a party involved in a court proceeding hence it is always advisable to get the registration for the mark. Only a private trademark attorney can provide advice concerning rights in a mark and not by the patent and trademark office. Trademark rights can last indefinitely if the owner continues to use the mark to identify their goods or services, dissimilar to copyrights or patents. The period of a federal trademark registration is of ten years, with ten years renewal terms. However, the registrant must file an affidavit setting forth certain information to keep the registration alive between the fifth and sixth year after the date of initial registration. If no affidavit is filed, the registration is canceled.

Few technical nuances in the trademark registration are the use of a mark in commerce must be a bona fide use in the ordinary course of trade, and not made simply to reserve a right in a mark. It is imperative to understand that the use of a mark in promotion or advertising before the actual product or service is provided under the mark on a normal commercial scale does not become certified as use in commerce. Also the use of a mark in purely local commerce within a state does not make the grade as "use in commerce". It is always good to consult with the trademark lawyers to understand the law properly.

In addition to trademarks and service marks, other types of marks provided by the Trademark Act are certification marks, collective trademarks and service marks, and collective membership marks. To claim rights in a mark one may use the TM (trademark) or SM (service mark) designation with the mark to alert the public of the claim. Since it is not necessary to have a registration therefore the claim may or may not be legally binding. However the registration symbol (®), can only be used when the mark is registered in the patent and trademark office.

I know the entire process and all the definitions listed above sounds very complicated. Use of trademarks is very important for a business venture as it helps you build brand recognition. Hence, it is always advisable to higher a trademark lawyer to guide you so that you register and retain your trademarks with no legal issues.