A trademark registration gives a trademark owner the right to use the ® symbol on its mark whenever the mark is used in accordance with the registration. The ® symbol carries a number of benefits: it creates a presumption that you have senior or superior rights to the mark over anyone else who uses the same mark in the country, it provides constructive notice that you claim ownership in the mark, it allows you to bring a federal lawsuit based on federal trademark laws against anyone who copies or uses similar versions of your mark, it provides a launching pad from which you can establish rights in your mark in foreign countries, and it helps you control or prevent the importation of infringing goods into the US.
But the ® symbol can only be used by those who succeed in registering their trademarks with the federal government. To do this, you must first submit a trademark application to the United States Patent and Trademark Office. Without obtaining a registration, you have none of the above rights, you cannot use the ® symbol, and you have to rely on a patchwork of laws from state to state to enforce your rights, if they are enforceable at all.
Generally, the trademark registration process begins with a trademark search to determine whether the mark can likely be registered and whether use of the mark around the country will be permitted. After the search results are analyzed and a plan forward is made, a federal trademark registration application can be filed. The application involves a number of preparatory actions, such as choosing the proper form of the trademark to file, creating correct drawings of the mark, finding appropriate specimens of the mark if the application is a Section 1(a) filing, and determining what the proper scope of the goods and services description should be.
Once the application is filed, it enters the prosecution – or processing – phase. In this stage, the application is examined by a USPTO trademark examiner, who will review the application for procedural and statutory compliance and will also review the substantive elements of the mark. Rejections may be made and will require responses. If the arguments are successful, the application will be published for opposition, and if no one opposes the mark, it will be registered. Trademark attorney Tom Galvani can guide you through each stage of this process. If you have more questions or would like to set up a free, initial consultation, please contact Tom at 602-281-6481.