Anyone who makes legitimate use of a trademark can claim rights to the mark. If you
do not own a federal trademark registration, you may use the “SM” (service mark)
or “TM” (trademark) designation to place the public on notice that you are claiming
rights in your trademark. You may not use the ® symbol, however, until after the United
States Patent and Trademark Office (PTO) actually registers a trademark – not
before you file, or while your application is still pending. You may also use the ® only
in connection with the goods or services actually covered by a trademark registration.
The benefits of federal trademark registration include:
Presumption of validity of the registered trademark.
Constructive notice nationwide of the trademark owner’s claim.
Evidence of ownership of the trademark.
Jurisdiction of federal courts may be invoked.
Disgorgement of profits in some cases.
Treble damages for willful infringement.
Attorneys’ fees in “exceptional” cases.
Registration can be used as a basis for obtaining registration in foreign countries.
Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
So how do you get a trademark registration? Once a subject mark has been cleared for
use, either you or your trademark attorney need to file a trademark application
with the PTO. The PTO reviews trademark applications for federal registration
and determines whether an application qualifies for registration on the Principal or
Supplemental Registers. Although the PTO does not require that applicants hire a
trademark lawyer, the PTO holds all applicants to the same standard of compliance with
the PTO’s rules and requirements. Certain mistakes cannot be undone, even if you later
hire a trademark lawyer to assist you in responding to an Office Action.
Contact us to get started.
Attorney consultation requests can be submitted by filling this form. One of our trademark attorneys will respond to inquiries directly. You may also call us at (800) 865-2901.
“ The trademark attorneys at Lewis & Lin are responsive, easy to work with, and fair! ”
— Harvey Moscot (CEO), Moscot NYC