What are the Benefits to Having a Trademark Registered with the USPTO?

There are several benefits to having a trademark registered with the United States Patent and Trademark Office (USPTO). Some of the most significant include:

  • Public notice of your ownership in the trademark.
  • Legal presumption of ownership: A trademark registration creates a legal presumption that the registrant is the owner of the mark and has the exclusive right to use it in connection with the goods and services listed in the registration.
  • Right to bring a legal action in federal court: A trademark registrant can bring a legal action in federal court to enforce their trademark, seek damages, and obtain injunctions against infringement.
  • Statutory damages and attorney’s fee: In a trademark infringement suit, if the mark is registered, the registrant may be entitled to statutory damages and attorney’s fees.
  • Right to stop importation of infringing goods: A trademark registrant can record their registration with the U.S. Customs and Border Protection (CBP) to prevent the importation of infringing foreign goods.
  • Right to use the registered trademark symbol (®): A trademark registrant can use the registered trademark symbol (®) to indicate that the mark is registered with the USPTO.
  • Right to list the registration in the USPTO’s online databases, which can serve as constructive notice to others of the trademark registration.
  • Right to use the registration as a basis to obtain registration in other countries: A USPTO registration can be used as a basis to obtain registration in other countries through the Madrid Protocol.
  • Right to use the registration as a valuable business asset: A registrant can license or sell their registration to others, providing a valuable source of revenue for the business.
  • Right to register the trademark with a specific state to pursue state trademark infringement and dilution claims.
  • Right to file oppositions and cancellation proceedings: A registrant has the right to file oppositions against applications for marks that may cause a likelihood of confusion with their registered mark, and cancellation proceedings against registered marks that they believe infringe on their rights.

Overall, registering a trademark with the USPTO can provide a significant advantage for businesses that want to protect and enforce their brand.

What Do I Need To Do To Register A Trademark With The USPTO?

To register a trademark with the USPTO, the following information and documents are typically required:

  • A representation of the trademark: This can be a drawing, design, or photograph of the mark, or a typed or printed reproduction of the mark if it is a word or phrase.
  • A list of the goods or services for which the trademark will be used: This should be a detailed and specific description of the goods or services for which the trademark will be used.
  • The name and address of the person or business seeking registration: The name and address of the person or business seeking registration must be included in the application.
  • A USPTO filing fee: A filing fee is required to file a trademark application with the USPTO. The fee varies depending on the type of application and the number of classes of goods or services for which the mark will be used.
  • A specimen of use: A specimen of use is a sample of how the trademark is actually being used in commerce, such as an image of the mark as it appears on packaging or a website.
  • A statement of use : A statement of use is a legal declaration that the mark is in use in commerce and that the specimen of use is a true representation of how the mark is actually being used.
  • A signed declaration of the applicant: A signed declaration of the applicant is required, which states that the applicant believes they are entitled to use the trademark in commerce, that the trademark is in use in commerce, and that the trademark is not similar to any existing marks that would cause confusion.

Note, a specimen of use and statement of use (along with dates of first trademark use) is only required with Actual Use (AU) applications.  Intent to Use (ITU) application do not require a specimen of use and statement of use (and allegation of use) until the mark is first used in commerce.

Once the trademark application is filed, the USPTO will review it and determine whether the trademark is eligible for registration. If the trademark is approved, the registrant will be issued a certificate of registration.  The average processing time to register a trademark with the USPTO is generally around 10-14 months.

It’s important to note that obtaining a trademark registration requires a legal process and it is recommended to seek guidance from a trademark attorney to ensure that the application meets all the legal requirements and has the best chances of success.
If you would like to register a trademark with the USPTO, please do not hesitate to contact us.  Our trademark attorneys can assist!

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