A federally registered trademark can secure your brand nationwide by limiting similar uses of your name, symbol, or other distingushing mark by others in a crowded marketplace. Though trademark rights can be obtained through common law use of a mark, federal registration provides the advantages of public notice of trademark ownership, and a legal presumption of ownership nationwide.
Trademark rights are obtained by using a mark in commerce in the ordinary course of one's business. Therefore, an applicant must set forth evidence of use before their mark will be registered. The evidence of use may but need not be submitted with the applicant's initial application. For example, if the mark has not yet been used in commerce, but the applicant has a bona fide intent to do so, an intent-to-use application may be filed. An intent-to-use application allows an applicant to prepare, file, and hopefully obtain allowance for registration before actual use in commerce has occured. However, the mark will not be registered (even after allowance) unless and until evidence of use in commerce is provided. Use in commerce for an intent-to-use application must be shown within an extendable but limited time period provided by the Trademark Office.
In addition to use in commerce, a mark must be distinct for and cannot be descriptive of its associated goods or services. For example, should a mark be found confusingly similar to another mark (associated with the same or similar goods or services), registration will be refused via an Office Action from the Trademark Office.
Marks that describe or are descriptive of their goods and services will also be refused registration, with certain limited exceptions. Generally speaking, this is to prevent competitors from limiting each others speech when promoting or advertising their brands. A mark will typically be deemed descriptive if it immediately conveys the idea of its goods or services to an ordinary consumer.
It is important to note that there are other basis for refusing registration, however these are traditionally the most common. In any case, should an Office Action refusing registration be issued, the Applicant will be afforded an opportunity to respond. There are often a number of arguments (and other responses) that can be made to show a lack of confusion, that a mark is not descriptive, and that a mark should be registered.
Since trademark rights have a basis in use in commerce, a registrant must continue to use their mark in commerce in order to preserve their trademark rights. In fact, non-use is one avenue for cancellation of a registration. In addition, a registrant is required to periodically show continued use of their mark, or face cancellation by the Trademark Office.
In seeking trademark registration for your mark, our business is to evaluate the potential for registration by conducting screening searches on your mark. Also, we will guide you with regard to the possibility of a descriptiveness or other refusal, or lack thereof. Should an Office Action be issued by the Trademark Office, we will review the arguments therein to ensure that any refusals or objections have been properly made, and suggest potential responses to the same. We will also provide guidance on proper use of your registered trademark.