Trademark registration is the process of registering with the United States Patent and Trademark Office (USPTO) or state agency. When most people think of trademarks, they think of McDonald’s, Starbucks, and other brands.
Most people miss the fact that there are separate registrations for many of the many uses of the brand. Let’s take a look at Starbucks, for example. A quick search of the USPTO database for “Starbucks” produces hundreds of results; most of these are owned by the “Starbucks Corporation” that runs the coffee shops we all know.
So why does Starbucks have multiple registrations? Because each registration is protecting different things.
If we take the first registration as an example, we see that this registration lists only letters and does not show the actual logo of the mermaid we all know and associate with the brand. This registration is listed as a “Standard Character Mark”, which means that it is registered for plain text writing. So what they are registering here is the “Starbucks” word, not the logo.
Additionally, you can see it listed under “Goods and Services” to specify what the mark will be used for. These goods and services are indicated by the “International Classification” or IC number. See a complete list of Classifications here.
So, in theory, someone might be able to use the “Starbucks” to have an online course about stars in space and name it “Starbucks” and may not be infringing on the “Starbucks” name since it’s for different uses. Check with your attorney if you have any questions or doubts about using a mark in a specific way.
So what about logos? In this example, Starbucks registered the logo separately as it is a “Design Plus Words, Letter, and/or numbers” registration. A business may need various registrations to fully protect its brands as it is incredibly detailed.
Do I have to register?
In the United States, trademarks are not required to be registered. You obtain trademark rights by using the mark in commerce. However, registration is recommended to establish the record with the USPTO and make it easier to take legal action against infringing parties.
Selecting which classifications to register under
Trademark registrations require that you prove you have used the mark in commerce in connection with all the goods/services listed in the application sent to USPTO. Additionally, you will need to provide a sample of the use of the mark in commerce. These samples vary by product or service type. You may need to register under multiple classifications to cover the extent of your products or services.
When do I need an attorney?
Anyone registering a trademark should consult with an attorney. Using a service like GBS Group’s trademark registration filing service is not a substitute for the advice or services of an attorney. An attorney can help advise on your legal rights to use the mark, facilitate actions and other processes with the USPTO or other parties.
Trademark registration is the best way to protect your brand. Registration is the first step to protecting it. It is crucial that you register your name, logo, products, and service names to protect yourself from trademark infringement. In many cases, multiple registrations should be necessary.