How to Get a Trademark Registration
February 18, 2014
New brand owners often ask how to get a trademark registration. In the United States, you must sell goods or services in interstate commerce (across state lines) containing the trademark. In much of the rest of the world, use is not required to get a trademark registration, since the first to register can obtain rights, even over a prior user.
Valid use means the trademark must appear on the goods, the packaging for the goods, or displays associated with the goods. When it comes to selling products on the Internet, the “displays” require one offer the product for sale with an online shopping cart that allows for purchase of the product or services.
Rights can be established without registration, but it is not a good idea to rely upon so-called common law rights. A small locally owned business such as a local hair salon or dry cleaners is the exception and probably does not need a trademark registration. However, if you intend to sell goods or services in several states, or nationwide, or via the Internet, it is important to get a trademark registration. Why? Brandaide Conversation: Does a Small Business Need a Trademark?
First, without a registration, rights are limited to those states where the goods have actually been sold. Equally important, without a trademark registration, someone else can establish rights in other states. If they sell in certain states first, they own rights for those territories and can prevent your future expansion.
When planning to launch a new product, it often takes six months or more to plan, design packaging, obtain necessary approvals, etc. One may also file for a trademark prior to first sale, by filing what is called an “Intent to Use” application. Should a Start Up File A Trademark Application?
This type of application guarantees you are “first in line” to obtain a particular name if it is otherwise available as a trademark at the time you file to get a trademark. After you first sell the product, one then files a “statement of use” proving you have sold the products. After you file the statement of use the trademark registration issues.
If a company has plans for international distribution of its products, or will be operating a web site that is marketed in other countries, it is also important to plan for international protection early on. We have a team of foreign associates we have carefully screened and who are an extension of Hodgson Legal who provide services to our US clients overseas. While there are treaties that allow one to file into various countries directly from the U.S. Trademark Office into other countries we advise use of it sparingly and only when U.S. rights are strong and secure. We do not advise use of the Madrid Protocol in many situations since the filing rights are much more limited than a direct filing in each country. In addition, many countries, such as Canada and Mexico are not members, meaning our team of foreign associates will to act on your behalf in non member countries.
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