Trademark Registration
The trademark application process begins with search and clearance. Before filing applications, prudent businesses search existing trademark registrations and applications to ensure proposed marks aren't already registered or pending for similar goods or services. Finding conflicting marks early prevents wasting money filing applications that will be rejected due to prior rights. Trademark searches involve checking the Trademark Registry database, but thorough searches also check unregistered marks in actual use since use can establish common law trademark rights even without registration. Many businesses skip proper searches and discover conflicts only after filing applications or even after investing in branding. This creates expensive problems that proper upfront searches would have prevented.
Trademark applications must specify the mark being registered and the goods or services with which it will be used. Marks can be words, logos, combination marks, three-dimensional shapes, sounds, or other distinctive identifiers. The application must classify goods or services under one of forty-five international classes. Selecting appropriate classes is critical because protection is limited to the classes registered. If a business registers in wrong classes, competitors can use similar marks for goods or services not covered by the registration. The application includes specimen usage showing how the mark is or will be used. Filing strategy requires careful consideration of what mark variation to register, what classes to cover, and whether to file word mark, device mark, or both for maximum protection.
Examination by the Trademark Office identifies objections to registration. Examiners check whether marks meet distinctiveness requirements, whether they conflict with prior marks, whether they're descriptive or generic, and whether they violate other registration grounds. Common objections include that the mark is descriptive of goods or services, that it's phonetically or visually similar to existing marks, or that it lacks distinctive character. Applicants receive examination reports stating objections. They must respond addressing each objection through legal arguments or evidence that the mark deserves registration despite objections. If responses don't satisfy the examiner, applications proceed to hearings where arguments are made before hearing officers who decide whether to accept or reject applications.
Publication in the Trademark Journal occurs after examination is cleared. Published applications are open to opposition by anyone who believes the mark shouldn't be registered. Opposition grounds include that the mark conflicts with opponent's prior rights, that it's descriptive or generic, or that registration would be contrary to law. Opponents have four months from publication to file opposition. If opposition is filed, the applicant must respond defending the application. Opposition proceedings involve written submissions and potentially hearings before deciding whether the application should proceed to registration. Many applications face opposition from competitors who view new marks as threats to their own marks. Successfully defending against opposition requires demonstrating why the marks can coexist or why opposition grounds don't apply.
Registration certificate issues if no opposition is filed or if opposition is defeated. Registration is initially valid for ten years from application date and can be renewed indefinitely for successive ten-year periods. Renewal requires filing renewal applications and paying renewal fees before expiry. Failure to renew results in registration lapsing, potentially allowing others to register the mark. Many businesses lose trademark protection simply because they forgot to renew registrations. Maintaining trademark portfolios requires systems for tracking renewal dates and ensuring timely renewal across all registrations. This becomes complex for businesses with multiple marks in multiple classes requiring separate renewal for each registration.
Use requirements affect trademark protection in important ways. While applications can be filed based on proposed use, registrations can be challenged for non-use if the mark hasn't been used for continuous periods. If a mark isn't used for five years after registration, it becomes vulnerable to removal for non-use. This prevents trademark registries from filling with unused marks that block others from registration. Businesses must actually use registered marks in commerce and maintain evidence of use. If a registered mark becomes subject to non-use proceedings, proving use through invoices, advertisements, and other documentation becomes critical to defending the registration.
Enforcement of trademark rights involves action against infringers using identical or similar marks. Trademark owners can send cease and desist letters demanding infringers stop using conflicting marks. If informal resolution fails, infringement suits can be filed seeking injunctions, damages, and account of profits. Trademark infringement requires showing likelihood of confusion—that consumers might mistake the infringer's goods or services for those of the trademark owner. The strength of the mark, similarity of marks, similarity of goods or services, channels of trade, and actual confusion evidence all affect infringement analysis. Strong enforcement against even small infringers is necessary because allowing minor infringement creates precedent that weakens trademark rights over time.
Trademark strategy for businesses involves decisions about what marks to protect, where to file, and how much to invest in enforcement. Core brand names and logos warrant registration in all relevant classes and markets. Secondary marks might receive more limited protection. International businesses must file in key markets where they operate or face competition. Filing everywhere is expensive so strategic choices must be made about geographic protection. Enforcement strategy requires deciding which infringements pose real threats versus which can be ignored. Spending heavily on enforcement against minor infringers who pose no real competitive threat wastes resources that could protect against serious threats. Effective trademark strategy aligns IP spending with business priorities.
Common mistakes in trademark registration include filing too late after already investing in branding, inadequate searching resulting in conflicting applications, wrong class selection limiting protection, poor response to examination objections leading to rejection, and failure to renew registrations causing loss of rights. Each of these mistakes is avoidable through proper legal advice and systematic portfolio management. But businesses often treat trademark registration as administrative formality rather than strategic activity. They file applications themselves or through inexperienced agents, cut corners on searches and responses, and neglect portfolio maintenance. These penny-wise decisions lead to pound-foolish outcomes when trademark problems emerge.
What makes trademark registration valuable is that it provides legal foundation for brand protection. A business might build a successful brand through years of marketing investment and customer service. Without trademark registration, competitors can adopt similar branding and free-ride on the established reputation. With registration, the business has clear legal rights to exclude others from confusingly similar marks. The registration process might seem bureaucratic and time-consuming. But the alternative—building a brand without legal protection—creates vulnerability to competitors who can undermine brand investments through imitation. Trademark registration isn't just about obtaining certificates. It's about securing long-term competitive advantage by protecting brand identity that distinguishes the business in the marketplace.
