When starting a business, the first concern any businessperson should ideally have is its security. Safeguarding your business is imperative as the market is rife with infringers who are waiting for a chance to hijack any and every new idea coming up in the market. Specifically, if we talk about Chicago, then as a businessperson you are aware of how tough the competition is in this city. In this regard, your mark is your most valuable asset, and likewise, requires an equal level of protection from the law.  Hence, the ideal way to go about this is to obtain trademark registration for your brand. 

The procedure for registering a trademark is complex and has to be carefully navigated in order to avoid all such hassles that could result in delaying, or worse, cancelling the application. This blog will cover all the areas which are crucial to understanding in order to have a smooth trademark registration journey. 

What is a Trademark?

If you are in your introductory stage of learning about intellectual property law, then you first need to know what a trademark is. A trademark is any symbol, logo, word, or phrase present in the brand’s name. It is a way to distinguish one brand from another. In other words, your brand’s logo and its name would form part of the trademark. 

In the U.S., the trademark is registered with the United States Patent and Trademark Office (USPTO) where, after successful registration, you acquire exclusive rights to your brand’s name. By registering your trademark with the USPTO, you get exclusive rights to your brand’s identity and no other individual in the marketplace can replicate your unique style or profit off of your reputation. Trademark is an excellent tool to reinforce your ownership over your brand through legal channels and tackle infringement. When you register your mark, not only can you seek damages for any harm or loss caused to your brand but also deter others from even getting the idea of infringing upon your rights.  

Trademark Registration in Chicago

You can either apply for state or federal trademark registration, or you can opt for both. 

State Trademark Registration

This pertains to registering your mark with the state trademark office. In Chicago, business owners can acquire trademark protection by registering under the Illinois Trademark Registration and Protection Act. Registering with the state is beneficial as the trademark gets enhanced protections from the state the business operates in. 

Federal Trademark Registration

This pertains to registering with the USPTO. A federally registered trademark provides you with the benefit of operating your business in all 50 states with a single registration. However, you have to keep in view that the process of this type of registration is relatively time-consuming as compared to that of the state.

Steps to Register a Trademark

Whether it be state or federal registration, the basic process for both is almost the same. The registration process is a culmination of multiple steps. It is imperative that all of them are completed and in the same order as listed in order to acquire the desired results in a streamlined manner. 

Step 1: Choosing a Trademark

The first step in a trademark registration process is to choose a mark for your brand. Keep in mind that you not only have to protect your brand from infringement but also avoid doing the same with others. Therefore, you have to conduct a thorough exercise in determining a unique mark for your brand representation. 

In this regard, you have to first see if your mark is ‘registrable’. This can be judged by seeing if your mark fulfils these two requirements: 

1.  You use the trademark in commerce. Marks having personal usage, and not commercial, are not eligible for registration. 
2. The applied mark is distinctive and unique. In other words, it is able to distinguish your goods or services in the market from others, and the consumers associate that mark with your products/services whenever they look at it. 

The second aspect is to see if your chosen mark has the capability of being a strong trademark i.e., the business will not face difficulty in protecting it. This can be ascertained by seeing if the format of the mark (e.g., symbols, words, logos, phrases used in the mark) is acceptable within the trademark law, the products or services that the mark will be representing, and if the mark is available for usage. The ideal way to gain clarity on these aspects is by conducting a comprehensive trademark search on the USPTO’s Trademark Electronic Search System (TESS). The TESS program is a free-of-charge service which applicants use to conduct trademark surveys of the marks registered or applied with the USPTO from across the entire country. 

Step 2: Identifying the Filing Basis for your Application

After selecting your mark, the next step is to choose the filing basis for your application. You have to choose from one of the following two bases when preparing your trademark application: 

1.  Use in commerce: As evident from the name, this is for the marks which have already been used for business purposes. This filing basis is available only if the mark can show ‘prior usage’.
2. Intent to use: If you haven’t begun using the mark for your business, then this should be your go-to category. This is for the mark which hasn’t been used in commerce but the applicant intends to use it in future. 

Having decided this, you are now ready to file your application. Keep in view that filing an application does not imply that the mark will be registered. If your registration is unsuccessful, then you will have to restart the process – which means preparing a fresh application along with a new filing fee. 

Step 3: Evaluation of the Application

This is the third phase of the registration process. In this step, your application will be examined by an examining attorney who will provide a final review of your application. If the examining attorney finds any issues in the application or needs clarification on any matter, they issue an office action.  

After the examining period, if you have successfully responded to the office action and the examiner is satisfied, then your mark will be published in the Official Gazette. Subsequently, in the event of no opposition, the mark will be registered and you will receive a certificate of registration. 

Conclusion

Trademark registration is a daunting process, especially when you have to choose between the options of state and federal forms of registration. The good part is that you can leave all the trademark matters to a trustworthy and experienced trademark lawyer who will take care of the registration process from scratch and even monitor it after the registration is completed. 

You don’t have to go far. Book a free consultation today with Drishti Law to learn how our experienced principal attorney can help you with your concerns about registering your brand in accordance with Chicago’s trademark law.