Brand Registration

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Brand Registration

Brand registration, also known as trademark registration, is the first step in gaining full trademark rights.  While brand use in commerce may grant some common law trademark protection, brand registration with the U.S. Patent and Trademark Office will create presumptive nationwide trademark rights.  This can be important when actual use has not yet occurred in every single jurisdiction throughout the United States.

Brand Name Registration

Properties that distinguish a brand from its competitors – ranging from business names to sound marks – should be registered with the USPTO. Doing so creates a public record that your brand is protected, and it grants you exclusive rights over the items in question. This means third parties cannot utilize your brand in a way that would confuse customers or dilute your brand.

Submitting your company’s trademark to the USPTO does not, however, guarantee that you’ll be granted brand registration. There are a few qualifications your trademark must meet before the agency’s examining trademark attorney will even consider adding it to the Principal Register. To garner federal protection, these eligibility requirements must be met:

  • Use in commerce: Your brand must be used in interstate commerce. The internet and improved access to affordable shipping has made this requirement easier to meet over the years.
  • Serve to distinguish: The purpose of any brand is to distinguish its goods or services from those of competitors.

There are other hurdles that trademark owners must overcome for brand registration.  These are some of the most common hurdles experienced during USPTO brand registration:

  • Letter of Protest: Third parties can submit a Letter of Protest to the trademark office providing evidence of why your brand shouldn’t be registered. There is no government fee for doing so.
  • Notice of Opposition: Third parties who feel registration of your trademark will harm them in some way can submit a Trademark Opposition. This could result in a hearing before the Trademark Trial and Appeal Board (TTAB).
  • Petition to Cancel: Even after your brand identifier is registered, parties with standing can submit a Trademark Cancellation to cancel your rights. This is often the last alternative before trademark litigation.

While these issues can slow your path to registration, none of them are guaranteed to prevent the process. During opposition or cancellation proceedings – both heard by the Trademark Trial and Appeal Board – the burden of proving your that brand identifier shouldn’t be protected is on the complaining party.  A well-planned defense to these filings often results in the complainant settling or dismissing the case.

As your brand registration goes longer without being challenged, it becomes more difficult for third parties to do so. In fact, you can file a claim of trademark incontestability after five years of continuous use. This removes several of the potential grounds typically used to cancel a trademark’s protected status.

Trademark Search

Filing for brand registration is an essential step in protecting your company’s intellectual property.  Even before that step though you should do a trademark search.  A trademark search ensures that you are not wasting time or money on a brand that you cannot own.  For more information, please see our trademark search page.

Common Law Trademarks

Many brand owners don’t seek trademark registration because they believe commercial use alone provides protection. While this is technically true, identifiers listed on the Principal or Supplemental Registers have many additional safeguards.  A brand that is not on file with the USPTO, however, can still take advantage of common law trademark rights.

To qualify for these rights, a brand identifier must meet many of the same conditions as a federally registered brand. This means that it must be used in commerce, serve a distinguishing purpose, and not create a likelihood of confusion with other trademarks. If these requirements are met, the identifier will grant several benefits to the brand owner.

Claiming common law trademark rights in this manner creates the following advantages:

  • Allows the brand to establish some recognition among consumers.
  • A date of first use is established.
  • Competitors are deterred from using confusingly similar brands.
  • Can establish grounds for trademark registration with the USPTO.
  • Can show continuous use when in the event of a dispute.

Similar to their federally registered counterparts, common law trademarks face certain limitations. The fair use doctrine, for example, means third parties can utilize a brand for satire, commentary and other allowable uses. It may also be possible for companies in unrelated industries to use a similar brand due to differences in trademark classes.

Benefits of Brand Registration

Brand registration offers several benefits including the following:

  • Creates public notice of ownership over your trademark.
  • Establishes a nationwide presumption of ownership and validity.
  • Grants exclusive rights over use.
  • Can serve as a basis for registering international trademarks.
  • Serves as basis for claim of incontestability.

These are just a few of the most important benefits of brand registration. While the process can be drawn out if third parties oppose your application – the potential for which is minimized through a trademark search – the value of registration far exceeds the initial investment. A registration can also benefit you when fighting instances of online infringement.

Amazon Brand Registration

Trademark infringement and counterfeiting has become a growing problem on digital marketplaces. This is particularly the case with Amazon.  Infringers are able to profit from the online platform’s massive consumer reach by taking advantage of trusted brands’ reputations.  As such Amazon trademark infringement is a major issue.

Recognizing the growing problem, the marketplace chose to create an Amazon brand registration program. Companies that are granted access to the resource receive prioritized rights and the ability to use proprietary tools to fight infringement. The intellectual property tools provided by Amazon Brand Registry include the following:

  • Easier identification of potentially infringing listings.
  • Simplified infringement reporting tool with guided workflow.
  • Search capabilities which include Amazon Standard ID Numbers (ASINs) and keywords.
  • Report analysis that can improve predictive automation.
  • Priority over controlling product detail pages.

Amazon brand registration also offers benefits unrelated to intellectual property infringement. These include decreased ad approval times, improved conversion through optimized listings, and 24/7 support. The most significant advantages, however, are the automated tools. These allow Amazon to detect violations of your intellectual property including copyright and patent infringements.

Amazon claims that their Brand Registry protects over 200,000 brands. Not every company with a trademarkable property, however, is eligible to receive this heightened level of protection. The main requirement is that your identifier must be federally registered. This means filing through the USPTO. Once this is done, you will need to go through the following process:

    • Ensure all eligibility requirements are met before filing.
    • Have all trademark information (e.g. registration number) available.
    • Be prepared to provide documentation that you are the trademark owner.
    • Sign in using your Amazon account. Brands must be registered by an account holder.
    • Enroll your brand. The following will need to be provided:
      • Brand name representing trademark.
      • Trademark registration number.
      • Amazon product categories where your item may be listed.
      • Every country where your trademark is utilized (e.g. distribution, sales, etc.).

Once listed on the Brand Registry, intellectual property owners can also utilize Amazon Brand Gating. This gives them added control over their ASINs and product listings. Third-party sellers typically use the same ASIN as brand owners when listing their products, but the platform’s brand gating tools can prevent this.

Brand owners can only utilize this tool in relation to products that are listed as “New.” Third-party sellers still have the right to offer used items that they’ve previously purchased. For others to sell brand gated content as new, they must go through the following process with Amazon:

  • Show proof that products were purchased directly from manufacturer (e.g. invoices).
  • Provide evidence of written permission from the brand to sell the products.
  • Pay per-brand fees before listing products.

This tool can help ensure that only parties who are licensed to sell your product are able to do so. Attempting to abuse this tool (e.g. reporting listings with used items) can negatively affect your Amazon Brand Registration and can lead to an Amazon ban.  If you need an Amazon lawyer, please feel free to contact us.

California Brand Registration

If your brand only conducts business in California, registering your trademark within the state may be your only option. This situation is becoming rarer, however, considering how many brands send or receive out-of-state shipments in the normal process of their business.

There are over 90,000 applications for federal registration received from California businesses yearly. Those that are granted registration will enjoy several additional rights over brands filed only in the state. This always makes it advisable to seek federal protection – which will also cover California – rather than focusing on a single geographic area.

If you’re only conducting business in California, you’ll need to meet the following qualifications:

  • Commercial use must be occurring within California.
  • Must distinguish your brand from others and be distinctive.
  • Separate applications are required for trademarks and service marks.
  • A drawing of the brand identifier must be included.
  • Certified English translations must be included if there are foreign components.
  • Three evidentiary trademark specimens must be included.
  • Per-class filing fee of $70 is required.

You can file for California brand registration on the Secretary of State’s website. You can also use this page to conduct a statewide trademark search, but federal registrations will still supersede any state rights. This means owners should also utilize the federal Trademark Electronic Search System (TESS) to ensure no likelihood of confusion would exist.

Any rights granted from a California-based registration will only apply within California. A third party in Texas, for instance, could open a similar company using your brand with perhaps no ability to prevent it by you. If this situation were to occur after federal registration, you would have rights.

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If you are looking into brand registration and need assistance, please contact us today.

 

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