DPP Home Business Trademark Yourself Part II

Tuesday, June 8, 2010

Trademark Yourself Part II

Picking up where our May/June article left off, DPP delves into acquiring, registering and protecting your business trademark


Once the examiner clears the application, there’s still one more critical step before the registration issues: publication. All trademarks approved for registration are published in the USPTO’s official publication, the Official Gazette. Once published—the phrase commonly used by the USPTO is “published for opposition”—other trademark owners and businesses have 30 days in which to seek to challenge your application. If there’s no challenge within 30 days, the registration for your trademark will issue, and you’ll receive the formal registration certificate from the USPTO.

The key pitfall associated with the process of obtaining a federal registration is the time it can take for the registration to issue. If everything goes smoothly, the entire process can take anywhere from eight to 12 months. The good news is that once your trademark is registered, the registration is good for 10 years and is renewable for successive terms. The time requirements for the preparation and filing of renewals and other related filings are trivial in comparison.

In order to keep the registration active after it issues, a trademark owner is required to periodically file certain documents and pay certain fees. Between the fifth and sixth years after the registration issues, trademark owners are required to file an affidavit confirming that the trademark owner is still using the trademark. The fee for filing the affidavit is currently $100 per class. If the trademark owner wants to renew the registration, the owner must file a renewal application together with the appropriate fee between the ninth and 10th year after the registration issues.

Postregistration Considerations
Once you obtain a trademark registration, you should use the registration symbol ® with your trademark. Doing so will help ensure that competing businesses have actual knowledge of your registration. However, you should also take care to use the trademark properly. This means only using the registration symbol when you use the trademark as an adjective, rather than as a noun.

It’s also important to police your trademark. In some respects, a trademark registration is effectively a “hunting license:” While the registration gives you a right to prevent others from using the same or confusingly similar trademark, you must still attempt to find the infringers, and once discovered, make the effort to prevent continuing infringement of your trademark rights. This may also involve turning instances of infringement over to your local trademark lawyer, who may be able to resolve the matter through a well-drafted letter or who may be left with no option but to pursue litigation in order to enforce your trademark rights.

An Ounce Of Prevention
Some photographers may ultimately decide that the cost of formalizing and enforcing trademark rights outweighs the benefits. Others will view enforcing trademark rights as a means of safeguarding the investment they have made in marketing and developing a reputation in the industry.

Even in difficult economic times, the costs involved in registering your trademark are relatively minor next to the time, effort and money that you’ll invest in marketing your business. Don’t wait until after a competitor has opened up shop around the corner to begin to protect the investment you’ve made in branding, advertising and marketing your business.

Samuel Lewis is a Board Certified Intellectual Property law specialist and partner at Feldman Gale, P.A. in Miami, Fla., and a professional photographer who has covered sporting events for a quarter century. He can be reached at This e-mail address is being protected from spambots. You need JavaScript enabled to view it or This e-mail address is being protected from spambots. You need JavaScript enabled to view it .

 

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