It’s pretty common for clients to ask me about the US trademark application process and what they should expect once their application is filed. Needless to say, the road to registration can be very bumpy at times, more so for applicants who didn’t perform a trademark search or failed to seek an opinion from an experienced trademark attorney regarding the eligibility of their trademark for registration. If you’re thinking about navigating the trademark application process yourself, it’s even more important that you fully understand the entire process to maximize your chances of successful registration with the United States Patent and Trademark Office (USPTO).
What are the Benefits of Getting a Trademark Registration?
There are many benefits associated with getting a trademark registration for the names, logos, and taglines you use (or intend to use) in connection with the advertising and sale of your products or services. Personally, I like to think of a US trademark registration as an insurance policy. You purchase automobile insurance in case you’re involved in a car accident. You buy homeowners insurance in case your house goes up in flames. And you purchase health insurance in case you become seriously ill. Of course, you hope you never have to use your insurance policies, but you’re extremely glad you bought them if a tragedy or disaster does occur. Similarly, a trademark registration is like insurance on your trademark. It protects one of your most valuable business assets and assists you in recovering the monetary damages you’ll likely suffer as a result of an unexpected infringement or misappropriation by someone else.
What is a Surrender of a Trademark Registration?
A surrender of a trademark registration is a voluntary request that the United States Patent and Trademark Office (USPTO) cancel the registration. There are a handful of reasons why you might choose to voluntarily surrender your trademark registration. For example:
- You’re no longer using your trademark in commerce and have no plans to resume use
- A trademark cancellation or concurrent use proceeding was filed against your registration
- You entered into a settlement agreement with a third-party that requires surrender of your trademark registration
What is a Canceled Trademark Registration in the USPTO?
A canceled trademark registration in the United States Patent and Trademark Office (USPTO) is a trademark registration that’s no longer valid. Once a registration is canceled, it’s considered dead and cannot be used by the USPTO to refuse registration of a trademark filed by someone else. The owner of a canceled trademark registration loses all of the benefits of trademark registration, and it potentially creates a situation where someone else could register a confusingly similar trademark for identical or related products/services.
What is an Express Abandonment of a Trademark Application?
An express abandonment of a trademark application is essentially a voluntary request that the United States Patent and Trademark Office (USPTO) terminate the registration process. There are many reasons why you might choose to expressly abandon your trademark application. For example:
- You’re no longer using your trademark in commerce
- You no longer have an intention to use your trademark in commerce
- A trademark opposition or concurrent use proceeding was filed against your application
- You entered into a settlement agreement with a third-party that requires express abandonment of your application
- You’ve filed a trademark appeal but decide you don’t want to risk an adverse ruling