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Trademark registration

November 14, 2021

What is a registered Trademark?

A trademark that is registered has been through the trademark registration process. It has been registered with Intellectual Property Office. The trademark owner is granted exclusive rights to the trademark across the USA after it has been registered. Infringement actions can be brought in Federal Court to stop unauthorized use.

After the trademark has been issued, you are responsible for ensuring the correct use of it. A circled R can denote registered trademarks. This sign can be used to identify goods. It can be used to identify goods at transport and packaging. Noting that a trademark marked with an R within a circle can only be denoted in countries where the trademark is registered, it is important to remember. If you are selling products in Canada and the United States, it is prudent to wait until both countries have registered the trademark with the R enclosed in a circle before denoting it.

Examples of registered trademarks

The benefits of registered trademarks

Sue for trademark infringement

The primary benefit of a registered trademark is that it allows you to sue any competitor or other person who may infringe on your trademark. You can also recover damages for the infringement. You have no recourse if someone in New York violates your trademark if you are in Nevada.

You are the trademark owner

An unregistered trademark will not have the same benefit as a registered trademark. If your trademark was not registered, you must prove that you were the first person to use it. If you want to sue someone for trademark violation, you need to prove that you used the trademark first and that the infringer uses the trademark to confuse consumers. These are just a few of the differences between registered trademarks and unregistered trademarks. 

What is an Unregistered Trademark?

Common Law governs the logistics of unregistered trademarks. Unregistered trademarks are not registered with the Office of the Registrar of Trademarks. Instead, rights associated with an unregistered trademark depend on their use. Unregistered trademarks have a limited, regional protection. They do not offer protection across the nation unlike registered trademarks. A trademark that is not registered does not have the legal protection of registered trademarks.

Difference between registered and unregistered trademarks.

The primary difference lies in the protection scope. Unregistered trademarks can be protected by common law resolution, but registered trademarks have the benefit of statutory remedies. Registered trademarks have a statutory obligation. The opponent that challenges your validity is responsible for proving your assertion. Unregistered trademarks are subject to the owner’s burden of proof. Registered trademarks are valid for 15 years after the date of issue. They can be renewed at any time. For trademarks that are not registered, the owner must provide evidence of the time the reputation has been maintained. Registered trademarks can be legally recognized by an official body and offer protection. It is easier to claim benefits and profits if you win a court case in an infringement case than if your trademark is not registered.

Examples of unregistered trademarks

Trademarks RegisteredTrademarks not yet registered
ValidityValidity is presumed to be in existence upon registration of a trademark at the Intellectual Property Office. It is necessary to actually use the trademark.The owner must prove there is Reputation and goodwill. It may attach a trademark unregistered to goods and services it sells to consumers. It is also necessary to prove that the reputation of the product or service’s source can be identified.
Burden of ProofThe proof-first burden lies with the opponent if the validity or registration of a trademark is being challengedThe burden of proof is on the owner. The invalid validity of an unregistered trademark can be revoked. It is generally expensive and takes a long time.
TimeThe registration of a trademark lasts for 15 years from the date of registration and can be renewed multiple times.The trademark owner is the one who has not registered it. The length of the time must be proved for which there is or was goodwill.
LocationThe protected area in the Trademarks Act. It protects nation-wide.Unregistered trademarks may not be enforceable unless the owner proves that they are valid. And in the geographical area in which it has achieved goodwill or reputation.
Goods and/or ServiceRegistered trademarks are presumed valid so long as they are used in conjunction with the specific goods and/or services.The owner must prove that there are no registered trademark rights associated with the goods/or services they offers for sale.
EnforcementThe owner can claim that the registered trademark they own has been used illegally or oppose the registration of a confusing trademark. The registered trademark will be presumed valid.An owner might claim that its trademark unregistered has been infringed. Or, he may object to the registration of a confusing mark. The burden lies with the owner to establish the validity and scope the unregistered trademark.
Overall AdvantagesThe registration provides security. The registration is valid for a minimum of 15 years (renewable), and it provides nation-wide protection. The validity of a trademark registered is presumed. It is the first burden of proof on opponents.Passing off could protect an invalid or unregistered trademark. In one instance, the owner obtained a remedy for a passing-off action by establishing reputation in the absence of use.
Overall DisadvantagesServices and goods that fall outside the scope of trademark registration are not protected. Proper use of the trademark registered must be done by its owners.Owners of unregistered trademark rights cannot be granted them until the mark is used over a time period and has earned enough goodwill and reputation. In order to prevent copycats and infringers or counterfeiters, the trademark owner must prove its validity and scope. This is often costly and takes a lot of time.

The difference between unregistered and registered trademarks can best be understood using the diagram below.

Requirements for trademark registration

Four basic requirements are required to file a trademark or service mark with the U.S Patent and Trademark Office.

  1. The trademark must be filed under the name of its owner. The trademark owner is the person responsible for the quality and nature of the goods or services sold under the trademark. An individual can be the owner. An individual, partnership, corporation, or association can be the owner. If the owner of the application is a corporation then the name of the corporation is used.
  2. The applicant must indicate what type of entity it’s (individual, corporate, etc.). The applicant must also state its national citizenship. Although the applicant does not need to be U.S. citizen, everyone must declare his, her or their citizenship in a trademark application.
  3. The trademark application must be based upon actual use of the trademark in commerce.
  • If the application is based on actual usage, the applicant must indicate the products on which the trademark was placed and the sales price. If the trademark is displayed or sold in advertising or sales of services, it will be considered “actual use”.
  • It is enough to make a good faith declaration that you intend to use the trademark in commerce if you file an “Intent To Use” application. Before a trademark can be registered, however, you must actually use it. After you have registered your trademark, you must file a document called “Statement or Amendment to Allege Use”.
    • You can file this document either before or after publication of your trademark by the examiner (in which case your filing is known as an “Amendment To Allege Use”), or after you have received your Notice of Allowance.
    • Do not file this document after your Notice of Allowance has been approved for publication.
    • You have six months to file if you choose to file after your Notice of Allowance has been mailed (in which case the document will be known as a “Statement Of Use”) or you can request an extension. The USPTO will register your trademark only after you have filed.

4. If the application is to be based on actual usage, you must submit a drawing and a specimen. A specimen is an actual example of how the trademark is used in relation to goods or services. Acceptable specimens of trademark use are labels, tags, and containers for the goods. Examples of use for a service mark can be advertising materials such as brochures or magazine ads. Acceptable specimens include packaging photographs and labels. A “ornamental usage” of the trademark, such as an image on a front of a T-shirt, is not acceptable without a hangtag to prove actual commerce. The specimens should be flat and not larger than 8 1/2″ x 11. You can also use DVDs, CDs or the like.

A drawing is a page showing the trademark you want to register. Drawings must be drawn in the form of actual use. Drawings that are based on Intent To Use must clearly show the trademark in its intended use. Even if a specimen has been submitted, a drawing is required.

Trademark symbol

Registered Trademarks

To denote registered trademarks, the symbol ® (R within a circle) is used. It is generally a good idea to use it with your own trademark. It is important to make it clear that certain words and graphics are registered trademarks. This protects them from becoming generic, meaning that they do not identify the origin of the product. It is also more difficult for others not to use ignorance as defense in trademark infringement lawsuits. Commonly, the ® symbol can be used to acknowledge third-party trademark rights in marketing materials and works of reference.

Unregistered Trademarks

To denote trademarks generally, the symbol the ™ (superscripted TM: trademark). The symbol indicates that the user at least considers the attached trademark to be a trademark but does not claim its registration status. The symbol is useful if you are interested in registering a mark, or if your application is already pending. The sign can also be used to help you gain distinctiveness for a mark that is not initially registered due to being too descriptive.

Service Marks

The ℠ symbol (superscripted SM: service mark) has the same meaning as the sign ™. However, it can be used for unregistered service marks. This is trademarks for services and not tangible goods.