The main reason for registering your businesses’ name and/or logo with the United States Patent and Trademark Office (USPTO) is to keep others from using your company’s trademark. Federal trademark registration is so much more than a fancy certificate of registration from the USPTO. Once your company’s trademark is registered, your responsibilities as the business owner have only begun. This is also where your trademark attorney becomes more involved.
Your company’s registration on the Federal Principal Register gives your company several advantages, which include the following:
- It provides others with notice of your company’s ownership of the mark.
- It creates a legal presumption of your company’s ownership of the mark and a legal presumption that your company has the exclusive right to use the mark in connection with certain goods and/or services listed in your company’s trademark registration.
- It provides your company with the ability to bring an action concerning the mark in federal court, i.e. when another is infringing on your mark, you may file a lawsuit requesting them to stop using your mark and to pay you for any damages as a result of their use.
- It provides your company with a basis to obtain registration in foreign countries.
- It provides your company with the ability to record the registration with the United States Customs Service to prevent others from importing goods that infringe on your mark.
- It provides your business with the right to use the federal registration symbol, i.e. the “®” symbol.
Ultimately, in order to enforce these rights, the business owner (with the help of his or her trademark attorney) must “police” the mark. In other words, it is up to the business owner and his or her attorney to stop third parties from using an infringing mark and to bring any administrative action to stop a party from registering an infringing mark. The USPTO examining attorney will typically prevent others from receiving a federal registration for any mark that is the same or “confusingly similar” to your company’s mark, but it is up to you (as the business owner) to step in and initiate administrative actions if and when you find another attempting to register a mark that will or is currently infringing on your mark.
There are also a number of “maintenance” issues your trademark attorney can advise you of once your trademark is registered. For example, there are specific documents that must be filed and fees paid between the fifth and sixth year after your registration date and again at the tenth year after your registration date. These filings and fees are required to keep your trademark “live” which ultimately prevents the USPTO from canceling your trademark or from allowing the expiration of your trademark registration.
If you have already registered your trademark with the USPTO, call the Bailey Law Corporation today to speak with a trademark attorney to ensure that your trademark is being properly maintained. If you have questions about whether or not you have a case against a third party for possible trademark infringement, we can help you. We have offices throughout Southern California: Los Angeles, Beverly Hills, Manhattan Beach, Pasadena, Long Beach, La Mirada, Mission Viejo, Huntington Beach, Newport Beach, San Diego, Riverside.