What You Need to Know About Trademark Registration

You want to register a trademark, but you aren’t sure what to do next. Here’s information on how to obtain rights to a mark, what happens once your trademark application is approved, and how long trademark registrations last.

How do I obtain rights to a mark?

In most countries, filing an application for, and obtaining issuance of, a registration initially affords rights in a mark. In a few countries, like the US, rights may also be obtained simply by use. Usually, applications are examined and a registration is granted only if no conflicting mark is found, and the mark is capable of distinguishing the goods or services.

Remember that trademark practice can vary from country to country. For example, in some countries, registrations are issued irrespective of conflicting prior registrations and the courts are used to resolve any conflict. Also, in a number of countries, the examination of the application takes many months.

If the Trademark Office refuses my application, can I appeal it?

All refusals to register may be appealed. In the US, the appeal is first to the Trademark Trial and Appeal Board, an appellate board within the US Patent and Trademark Office (USPTO.) If necessary, a further appeal can be taken to the US federal courts. Most issues are resolved without appeal.

What happens after my application is approved and what rights do I then have?

In most countries, including the US, approved applications are published, giving interested parties the opportunity to oppose your registration within a prescribed time period. An opposer can challenge your application for a variety of reasons, including that it is too similar to an earlier used (registered or unregistered) mark of the opposer. However, only a small percentage of applications are opposed. As the owner of a registered mark, you have the right to exclude others from using either the registered mark or confusingly similar marks.

Typically, trademark disputes can be resolved amicably by the parties but, in some cases, a lawsuit is filed. In the U., enhanced damages and attorneys’ fees may be awarded by the court for infringing a mark. Since registrations are publicly available records, they provide formal notice of the owner’s rights in the mark. Because records are searchable, a third party can also determine the non-availability of the mark in that country. In the US, registration may be used to prevent importation of goods bearing the registered mark into the country.

How long do registrations remain in force?

Although the term of a registration varies from country to country, 10 years from the date of issuance of the registration is typical for major industrialized countries, including the US. An unlimited number of renewals are permitted. In some countries, additional filings are required to prove continued use. In the US, in addition to renewal filings, you must file a declaration attesting to use between the fifth and sixth year of registration.

When does protection begin?

Registration is often a prerequisite to any formal proceedings to enforce rights of a mark. In the US, the act of filing an application creates rights that later become effective on issuance of a registration.

In some countries, including the US, formal proceedings such as a lawsuit may be commenced without a registration. However, the US Customs Service will not seize infringing goods unless the mark is previously registered.

Learn more about our approach to trademark law and copyright infringement.