In your trademark registration journey, you will come across statements with no semblance to reality. Clients often become victims of misconceptions which in turn make the trademark journey a complication for them.
This article will explore and bust the top 10 myths about trademark registration and make the journey easier for you.
Top 10 Myths About Trademark Registration
1. Acquiring trademark registration for a word means that you completely own that word now
The United States Patent and Trademark Office (USPTO) trademark application requires you to specify the goods or services you wish to sell through that trademark. This section must not be underestimated as it determines your brand’s protection level. There are 45 international classes divided amongst goods and services and every class has separate protection for the marks. This means you can’t own a word entirely just because you have registered it as a trademark. An individual or brand with the same word in their mark but in a different category from yours can equally acquire protection for their trademark.
2. One-time registration is a lifetime registration
While a trademark may not have an expiry date, the same is not true for your registration. The USPTO rules require a periodic renewal of the mark to maintain a strong trademark.
When filing for renewals, you have to show a ‘continued use’ of the mark in your goods or services. Businesses tend to forget these renewal dates – as these dates don’t come frequently – and as a result, the registration expires due to non-renewal. This is something which you have to avoid at all costs because expired registration means restarting the entire registration process from scratch and also losing the leverage of having the original priority filing date.
3. Generic words cannot be trademarked
This one is true, however for a specific scenario. Trademarks do get rejected by the USPTO if they are “merely descriptive” of the product or service being represented. However, if your mark is completely unrelated to the product of your brand, then it can be a very strong trademark.
An example of this is the mark “Apple”. If the said mark is being used to represent a brand of apples, then such a mark would be a mere description of the product it is representing. However, if a smartphone and tech company adopts it, then it can serve as a really strong trademark solely because it has no relation with the product of that brand.
4. A USPTO registration also equates to international protection
Another widely misconceived notion regarding trademarks is that if the mark is registered in the U.S., then such a registration would also suffice for international protection. In other words, trademark owners do not have to separately register their mark internationally. The concept is not a myth but is also detrimental to trademark owners. Trademark rights, just like other types of law, are restricted by jurisdiction, i.e. every jurisdiction requires separate registration in accordance with their rules.
A U.S. registration is only enforceable in the U.S. It cannot be enforced elsewhere.
If you wish to acquire international protection, then there are a number of ways to do that, such as the Madrid Protocol. If you wish to learn more about the Madrid Protocol, you can check out this blog.
5. You receive the intellectual property rights only if your trademark is registered, and not through the usage.
It is expected to believe that your rights only exist if they have been prescribed on paper i.e., only officially registered marks can have IP rights. The reality is the opposite. Your mark will not receive the due protection and rights in the U.S. if there is no ‘use in commerce’ of that mark.
However, there can be a situation where you haven’t started using the mark yet. Then would this myth become true in that situation? Fortunately, no. Instead of waiting to use the mark, you can right away file for an intent-to-use trademark application with the USPTO. This type of application indicates that you don’t currently have usage of the mark but you will use it in future.
6. Submitting my application means that I can immediately start using the ® symbol with my logo
This is another of the most common myths regarding trademarks. There are a number of symbols which can be used to indicate the protected status of your trademark, but you cannot use the ® symbol if you haven’t received the mark’s registration yet.
If you wish to use a symbol with your mark right after the application submission, you can opt for the ™ or ℠ symbols (your choice depends on whether your brand is a product brand or service brand).
7. Trademark and Copyright are interchangeable forms of IP protection.
The answer to this statement is an outright ‘No’. Trademark and copyright are completely different areas of IP. A trademark is a logo, symbol or word which represents a brand in the marketplace. Copyright, on the other hand, protects a person’s ‘creative work’. Furthermore, trademarks are solely concerned with distinguishing the brand in the marketplace and preventing confusion among consumers. On the contrary, copyright is meant to protect an individual’s original creative work and prevent its stealing in the market.
8. Trademark registration guarantees absolute protection from infringement.
Registration does not mean your mark is completely protected. Once the registration is completed, your mark will be continuously challenged in the initial five years. Furthermore, the USPTO cannot enforce your trademark rights. You will have to constantly monitor your mark for infringement and if it does occur, you will have to take action against it at your discretion.
9. I should file my application when I start using the mark.
As stated before, a trademark can be successfully registered if its usage in commercial ventures can be shown. However, even if you don’t have use of the said mark yet, you can opt for the intent-to-use route for the application. In this way, you will kickstart your trademark journey and acquire the priority filing date.
10. My business is on a small scale presently so I don’t need to register its trademark yet.
Wrong. It’s recommended by trademark attorneys to register your mark as soon as possible. Unless your budget doesn’t allow you to start the registration process yet, it’s better to be done with the process at the beginning when you don’t have many competitors. Keep in mind that the registration process is considerably time-consuming – and there is always a chance of failure right towards the last stages of the process. Hence, it is a wise decision to get your mark registered in the beginning and before your business expands.
Final Word
After reading the blog, if you realize that you also have succumbed to believing any of these myths and you have made a mistake in your trademark registration journey, you don’t need to worry. Book a free consultation today with Drishti Law to learn how our experienced principal attorney not only has the expertise to start a registration process but also remedies any mishaps that lead to a prolonged or failed procedure.
Sahil Malhotra
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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