A trademark is an adjective.  It is not a noun or a verb.  Why?  Because, a trademark’s purpose is to identify the source or origin of a product, NOT to identify the product itself.  You have gone to great lengths to find a mark that is not descriptive of your product, and we have discussed that generic marks can never be a trademark, so you do not now want to use your mark in such a way that you cause to become descriptive or generic.

This tends to be more a problem for the company coming out with a first-of-its-kind product.  Consumers are already unsure what the product is, and without careful marketing that new moving stairway becomes an “escalator” (originally a trademark of Otis Elevator Company); all coin operated laundries become “laundromats” (originally a trademark of Westinghouse); and all rolling toys on a string are now “yo-yos” (although still a trademark in Canada).

Newer situations that almost resulted in a successful brand name becoming the generic term for the product itself include “KLEENEX® brand tissues;” “Band-Aid® brand bandages” and “Rollerblade ® brand in-line skates.”  Yes, you want your brand to be successful; however, not to the point where it becomes synonymous with the product itself.

The mark has been chosen, the trademark search was clear, and it has been decided that the mark should be registered. The next step in the process is straightforward – file an intent to use (ITU) trademark application.

It is not necessary or recommended to wait until the mark has been used to file the application.    An application can be filed based on your bone fide intent to use the mark in the future.  The application will not register until after use begins. Once use begins, a separate statement is filed claiming this use. After the application is approved by the Examiner and has been published for opposition, a Notice of Allowance will issue.  The applicant then has 6 months to file either a statement of use, or to request a 6-month extension of time.  A total of 5 extensions of time can be requested – up to a total of 3 years after the date the Notice of Allowance issues. If use has not begun after the expiration of the 5^th extension of time, the application will abandon as a matter of law.

The benefit of filing an ITU application is that once use begins and the application is registered the owner can claim a constructive date of first use as of the filing date of the application.  This could add months or years to the start date of your rights. There are some additional costs and filing fees associated with the filing of the use statement and/or extensions of time to file the use statement; however these are offset by the right to claim an earlier starting point for your rights.

After choosing the mark itself, an important part of the registration process is crafting the identification of goods or services.  You want the identification to be both broad and specific.  If the mark will be used as an overall mark for your entire organization, the identification may be straightforward “hospitals and medical services.” If the mark will be used for a specialized service offering, it may be necessary to develop a more specific identification.

Once you have selected a trademark and it has been cleared for use, you should consider filing an application to register the mark with the United States Patent and Trademark Office (USPTO).  There are a few questions that might come to mind when this recommendation is made:

• Why should I register my trademark?
• When should I register a trademark?
• Which of my trademarks should I register?

These questions are addressed below.

Why should I register my trademark?

Trademark rights in the United States are, after all, based on use of the mark in commerce and not on registration.  A registration is not required to use a mark, obtain rights in a mark, or to sue for trademark infringement.  Why then would you spend valuable marketing dollars on obtaining and subsequently maintaining a Federal Trademark Registration?  There are a number of good reasons to proceed with a registration.

First, yes – you can obtain common law trademark rights in a mark simply through use.  However, your common law rights will be limited to the geographic location where you have had actual use. A trademark registration will automatically expand your rights geographically to include the entire United States, except for any areas where there is a prior user on the day the mark is registered.  What does that mean?