Should You Register Your Trademark?

Clients often ask whether it is worth registering a trademark with the United States Patent and Trademark Office. The short answer is usually yes, if the brand is a real business asset and the budget can support it.

Registration is not required. Common-law rights arise from actual use of a mark in commerce. Generally, the first party to use a mark in commerce, or to file a valid intent-to-use application that later matures into use and registration, is in the stronger position. A federal registration on the Principal Register still adds rights that common-law use does not.

What federal registration adds

Constructive notice to the public of your claim of ownership
A legal presumption of ownership and of the exclusive right to use the mark nationwide on the goods and services listed in the registration
The ability to sue on the mark in federal court
A basis for seeking registration in other countries
The ability to record the registration with U.S. Customs and Border Protection to help stop infringing imports

If the mark is valuable enough to keep using, those advantages are usually worth obtaining.

What it costs

Registration is not free. Plan for search costs, USPTO fees, attorney time, and later maintenance.

Clearance search. Before you adopt or file a mark, a search helps identify earlier users and obvious conflicts. A limited attorney review of USPTO records is a starting point. A broader search covering federal, state, and common-law sources costs more and is often the better investment for a brand you intend to keep.

USPTO application fees. Under the current USPTO structure, the base electronic filing fee is $350 per class of goods or services. Additional USPTO fees can apply if the application is incomplete or uses a custom identification of goods or services instead of the Trademark ID Manual. Intent-to-use applications also require a later Statement of Use filing, currently $150 per class, and optional six-month extensions at $125 per class. Confirm current amounts on the USPTO fee schedule before filing.

Attorney fees. Most of the legal work is in choosing the mark and identification, preparing the application, and responding to office actions. Office actions are common. That is usually where attorney time concentrates.

Maintenance after registration. A federal registration does not last on its own. A Section 8 declaration of use is due between the fifth and sixth year after registration, currently $325 per class. Combined Section 8 and Section 9 filings are due between the ninth and tenth year, and every ten years after that, currently $650 per class. Optional Section 15 incontestability filings have a separate fee.

KLF Legal offers flat-fee trademark application packages so the initial filing cost is known up front.

So should you register?

If you can do it, do it. Trademark rights can last indefinitely if the mark stays in use and the registration is maintained. Saving the filing cost today can leave room for someone else to file first or to build conflicting rights. Registration also makes licensing cleaner.

Until you have a registration, you may still use TM for goods or SM for services to signal a claim of rights. Do not use ® until the mark is actually registered with the USPTO.