Today we’re continuing our conversation about trademarks, in particular, about the registration process after a mark’s been cleared. It’s often complicated enough to get the initial forms filled out and signed off on when you have a creative to-do list that’s piling up, though it’s important not to let things slide at the half way point. Follow along and if you have any questions, don’t hesitate to reach out! – SK

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Once a mark has been cleared for use, registration is not required in order for trademark protection to arise.  In the U.S., use of the mark allows for certain “common law” protection.  However, there are often significant benefits and advantages to registering a trademark.

An application to register a mark can be filed before the mark is actually used.  The advantage of this “intent to use” application is that it provides notice of your claim to a mark prior to actual use of the mark and therefore, would make the mark unavailable to others.   Use of the mark, and in most instances registration, is necessary to enforce certain rights, to publicize the use of the mark, and to obtain national or state priority rights.

A federal registration in the United States can be obtained from the United States Patent and Trademark Office, and a state registration can be obtained from any of the fifty (50) state agencies. Federal registration generally provides greater benefits (substantive and procedural) and protection than state registration, and is often the preferred means of protection if available.  Any party interested in registering a trademark should consult trademark counsel to ascertain whether federal or state registration is appropriate.

Coverage by: David Sherman

Have a question?  Contact David at david.sherman [at] kattenlaw [dot] com