Federal trademark registration provides more protection

Businesses can obtain a federal trademark registration which offers more protection.

Deborah Greaves, Partner at Withers Bergman LLP, said the registration provides protection throughout the 50 states in the United States (US).

She said applications are filed with the US Patent and Trademark Office (USPTO).

Greaves said a federal-registered trademark has broader enforcement capabilities as it may be recorded with US Customs and border patrol.

“Criminal enforcement may be achieved through both state and federal law enforcement agencies,” she said in a virtual briefing, adding that businesses do not get enforcement through any of the federal authority with state registration.

Greaves said state trademark registration is not valid outside of the state.

She added there are two filing basis –intent to use and use based.

“The mark must be used in commerce on all of the goods in the application before the trademark registration will be issued,” she said.

Greaves further said the first renewal is at the five-year anniversary and thereafter, each renewal is at the 10-year anniversary of the registration.

“Each renewal, including five-year and 10-year, must be supported by submission of a specimen showing ongoing use of the mark in commerce. The USPTO conducts random use based audits,” she added.

In general, Greaves said marks may be registered in either as a standard character mark or a design or logo mark.

“The US is the first to use jurisdiction and recognizes common law rights. The US recognizes the Nice Classification system of defining acceptable goods and services and the classifications thereof,” she said.

Close Menu