Do I Need to Register My Trademark?

Written by Elannie Damianos and Caitlin Connolly

We strongly advocate protecting your intellectual property against infringement from competitors.  This should be a priority for all businesses, but it is particularly important to small businesses who may lack the legal and financial resources to pursue or indeed defend against infringement in the courts. Investing your time and the modest fees involved in the registration will protect your name, brand, logo, slogans, and other intellectual property from infringements and you from potentially expensive legal disputes. Failure to register your business name may mean you’re unaware of existing trademarks that you could be infringing on.

Rooney Nimmo can advise you on the best way to register your trademark to ensure your application is successful and offers you the protection that you need. Below we outline some of the things you should be thinking about and the steps to take.

What exactly is a trademark?

“The term trademark includes any word, name, symbol, or device, or any combination thereof used by a person, or which a person has a bona fide intention to use in commerce…to identify and distinguish his or her goods… from those manufactured or sold by others and to indicate the source of the goods…” (15 U.S. Code § 1127).

As this definition suggests, in the US, trademark rights are considered to be created through the use of your mark in commerce, rather than registration.

Why should you register your Trademark?

Use-based trademark rights are generally limited to the geographic area in which the trademark has acquired consumer recognition and goodwill. This limited geographical scope may restrict your ability to adequately protect your brand on a national scale. In contrast, a federally registered trademark offers nation-wide protection and can significantly enhance your rights, with the following benefits flowing from registration:

Presumption of Ownership

Federal registration of a trademark creates the legal presumption that you are the owner of the mark and provides an advantage in court, allowing you to challenge any trademark infringement with the presumption of validity on your side and the burden of proof placed on your adversary.

Notice (Beware!)

Once your trademark is registered, it forms part of the United States Patent and Trademark Office’s (USPTO) database. This helps others who are considering registering a trademark to avoid infringing upon yours. Additionally, the USPTO will not allow registration of marks that are considered confusingly similar to your registered mark. A federal trademark registration also permits the use of ® with your mark – notifying others, including your competition, that your trademark is registered.

Benefits Further Afield

A federal trademark registration enables you to register your trademark with the US Customs and Borders Protection, which protects your trademark against the import of similarly branded, infringing foreign goods. Further afield, a federally registered US trademark can also aid international registrations, providing a basis for your registration abroad.

What do I need to do to Register?

As a starting point, you should consider the following points (all of which we can help you with):

  1. The trademark you want to register;
  2. The goods and/or services in connection with which you want to register your mark; and
  3. Whether your filing will be based on actual use or an intention to use the trademark in the future.

The next step is then to run a trademark clearance search, which we offer for a flat fee of $950. This helps you to avoid trying to register a trademark which is likely to cause confusion with another, already registered mark, which in turn makes it likely to be rejected by the USPTO.

Once this search is cleared, we can draft your trademark application and submit it to the USPTO.

We generally receive a response from an examining attorney within 3 months.

Step 1: What should I register?

How to choose between registering a “wordmark” and a “design mark”
Type of MarkWord MarkDesign Mark
Features of the markThis kind of mark consists of words, letters or numbers.This kind of mark consists of distinctive designs, logos or graphics, alone or with wording. The style of lettering or color may also be protected.
Protection offeredProtection of the wording itself, without limiting the mark to a specific font, style, size, or color.Protection is limited by the graphical or stylistic elements of the mark, such as a specific font, style, size or color.
Advantages/ Disadvantages of registering in the category
  • Offers the broadest protection. Once registered, the holder may change its logo without applying for a new mark.
  • Use (by infringers and therefore protection) is not limited by font, size or color. The phrase is covered when combined with graphics or logos.
  • Protects the distinctive stylization of your mark that may be a valuable part of your branding.
  • Registration requires an applicant/holder to use the exact same design over the course of the next several years in order to maintain and renew the mark’s registration.
  • Changing the design may warrant the filing of a new trademark application.

Step 2: What goods or services do I use my mark in connection with?

When filing your trademark application, you must list the goods or services for which you want to register your mark. In doing so, it is necessary to describe concisely the goods or services in which the mark is used in connection with. The USPTO will not accept vague or overly broad terms.

Our team will work with you to accurately detail the goods and services in connection with which your mark is used, in order to ensure your brand obtains the necessary trademark protection.

Step 3: Actual use or intention to use?

There are two options when filing a trademark application:

  1. A use-in-commerce application: you must be using the mark in commerce on all the goods or services listed in connection with the mark.
  2. An intent-to-use application: you must have a good faith intention to use the mark in connection with the goods or services detailed in your application.

If you have not yet used your mark but intend to use it in the future, it is possible to register your mark on an intent-to-use basis. You then have up to 36 months to file a Statement of Use for the mark in connection with the listed goods or services with the USPTO.

We recommend that you keep records of the use of your mark in commerce. Examples may include your mark displayed on the company website, brochures, business signs, stationery or invoices, in connection with the goods or services you offer. This is useful evidence when filing your trademark application.

If you need assistance with filing a trademark registration, we’re here to help.  Drop us a line here if you have any questions or would like to schedule an appointment.


These materials are for informational purposes only. Nothing herein is intended nor should be regarded as legal advice. The distribution of this article to any person does not establish an attorney-client relationship with our firm. Rooney Nimmo assumes no liability in connection with the use of this publication. This bulletin is considered attorney advertising under the applicable rules of New York State. Rooney Nimmo UK is regulated by the Law Society of Scotland and Rooney Nimmo US by the New York Rules of Professional Conduct. All Attorneys and Solicitors listed in this firm stipulate their jurisdictional limitations. Rooney Nimmo in the U.S. is a law firm registered as a New York State Professional Corporation.

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