Your trademark is a critical asset in your franchise system. You work hard to cultivate the brand associated with the trademark and you carefully monitor how your franchisees and competitors use your trademarks. Registering your trademark with the U.S. Patent and Trademark Office gives you additional legal protections for this valuable intellectual property.
What is a trademark?
A trademark is a word, symbol, design, or combination thereof that identifies and distinguishes your products and services from those of a different source. Trademarks help the public to pick goods and services from businesses that they trust and help you to build a recognizable brand. A trademark is intellectual property and has great value to your business.
What is Registration?
When you register a trademark, you are recording the details of the trademark, your ownership, and your use of the trademark with the U.S. Patent and Trademark Office (“USPTO”).*
Value to Your Franchise of Trademark of Registration
If you register your mark, the law will presume that the trademark is valid, that you own it, and that you have an exclusive right to use it. If certain conditions are met, your trademark can even become incontestable after five years of being registered. This means that your trademark can be challenged on very few grounds.
What’s particularly important for franchisors is that people and businesses in every state are deemed to have notice (even if they do not actually search the USPTO register) that you own and use the trademark. This means that you have preemptive, nationwide superior rights even if you are not using the trademark in every state. As you grow your franchise system beyond a state or region, these superior rights have great value because your date of use in that state is the date of registration, not the (possibly much later) date that you sell your first franchise in the state.
Additionally, federal registration means that you have a greater range of remedies available to you if someone infringes on your trademark. You could receive, among other things, an order mandating that the infringer stop using your trademark, the infringer’s profits from using your trademark, and/or the value of the damage done to you because of the infringement.
Finally, only a federal registered trademark can use the ® symbol, which is another way of giving notice to potential infringers of your rights to the mark.
- Process of Trademark Registration
First, you must determine if you will be filing a registration based on previous use of the trademark or intent to use a trademark. If you have not used the trademark before filing, you must intend to use the trademark in the ordinary course of business in good faith — meaning that you are not simply trying to reserve a right. Note that if you file with intent to use, the registration will not issue until the trademark has been used in connection with the goods and services.
Next, you will provide an example of the trademark being used in connection with the goods or services for which registration is sought. If you are filing under intent to use, you will need to provide an example later.
A USPTO examining attorney reviews the application, looking for any statutory grounds to deny the application, such as the likelihood that a consumer will be confused by your mark because it too closely resembles another registered trademark or that the trademark only describes the geographic location where the products are coming from. If the examining attorney has any objections to your application, you will receive an “Office Action.” In your response to the Office Action, you can rebut the examining attorney’s observations and argue why the registration should proceed.
Once the examining attorney has approved it, your application is published in the USPTO’s Official Gazette. The purpose of publication is to give other parties an opportunity to oppose the registration if they believe they would be damaged by the new registration. Opposing parties generally have thirty days to file an opposition. Oppositions can be resolved between the parties or they can proceed before the Trademark Trial and Appeal Board.
If there is no opposition, or if all opposition is resolved, the USPTO will issue a Certificate of Registration. Registrations are valid for ten years. At the fifth year, you will file an affidavit showing that the trademark is still being used. Registrations may be renewed for ten-year terms as long as the trademark is in use.
A knowledgeable trademark attorney can guide you through this process, respond to any Office Actions or oppositions, and monitor the status of the trademark registration and renewal applications. Manning, Fulton & Skinner has an experienced team of attorneys who can help you with each step of your trademark registration process and answer your questions about this valuable intellectual property.
* States also offer trademark registration. However, these registrations have limited value and will not be discussed in this post. Every reference to “registration” refers to federal registration under the Lanham Act.