The most important step you should take before using a mark for your business is to conduct a reasonably thorough search of the trademarks already in use, and determine whether your proposed mark would infringe any of those prior marks. Failure to take this step could lead to a lawsuit and relinquishment of all your profits, payment of the other party's attorneys fees, and complete loss of your trademark. The process of determining whether or not your proposed mark is going to infringe an existing mark is called clearing a mark for use. This should be done prior to using your mark, and again before registering your trademark if there is a delay between the initial clearance and the registration.

Clearing a mark for use can be expensive, and possibly time consuming, if it is done properly. Or, clearance can be done cheaply and quickly. Because the process is inevitably frustrating, many businesses are enticed by the cheaper trademark services that make the whole process sound less complicated than it really is. Sometimes it makes sense to do a cheaper level of searching, but you are almost always far better off paying for a job well done. However, no matter how thorough of a search you purchase, you are always incurring some amount of risk that another company, too small to be picked up on the search report, has been using the mark before you. Even if small, they will have a prior right that will inhibit or prevent your use.

Generally speaking, you are infringing another mark if your mark and the original user's mark are similar enough to confuse consumers into thinking the two of you are one and the same source. This can happen if you're selling goods or services that are sufficiently related, and if there is sufficient similarity between the marks in terms of looks, meaning or pronunciation. In reality, there are about 13 factors and hundreds of cases that determine whether your mark is potentially infringing. For this reason, it is wise to have an attorney review your search results to determine whether your proposed mark may infringe an existing mark.

Famous marks such as McDONALDS, DISNEY, NIKE and PLAYBOY often receive far broader protection than marks that are not famous. Whereas a mark is generally not infringing of another mark when used in unrelated industries, that is not the case when it comes to famous marks. Famous marks in many cases, but not all cases, will be able to stop all commercial uses of their mark, regardless of whether consumers are likely to be confused by the two uses of that mark. So far, court determinations of what constitutes the requisite level of fame has been very problematic and unpredictable. Because fame is inherently a subjective concept and based on one's experience, it is especially difficult to predict whether or not a mark will be considered famous.

Why Register
You don't need to register your trademark in order to receive protection or in order to stop others from using your mark. However, you receive many legal benefits when registering a trademark.  For example, federal registration gives you advantages in court, and stakes your claim to a trademark throughout the country, even if you are not actually using the mark in a particular region. Registering serves as a deterrent against having others adopt a similar trademark.  Also, federal registration can provide advantages to those seeking trademark protection internationally. 

Timeline for Registration
Registration takes about nine months to one year (best case scenario) before your registration will issue. However, you don't have to wait until then to begin using the mark. You can use the mark as soon as you've cleared it for use.

Registrations last for 10 years, as long as you keep using the mark in commerce.

State vs. Federal Registration
States typically provide cheaper and faster registrations than the federal government. However, state registrations don't enjoy nearly the same advantages as federal registrations. State registrations are generally used only by very small businesses with no plans for expansion.

There are many advantages to having an attorney prepare and file your application on your behalf. The primary reason is that an attorney is more likely to prepare a sound application with the broadest legal rights.  Unlike copyright applications in which the breadth of your legal is decided by the copyrighted work  itself, the wording on a trademark application can determine the breadth of your legal right.   

The Trademark Office has an interest in keeping applications very narrowly defined, restricting your trademark rights, while attorneys are trained to push the envelope in the wording of the application in order to maximize your trademark rights. Experienced attorneys also know how to avoid the myriad of fatal mistakes in the selection and preparation of specimens, and other application details.

Another good reason to hire an attorney to prepare your application is that only an attorney can give you legal advice when there are difficulties processing your application. If you haven't used an attorney for the registration, you will pay by the hour for this advise. Problems and rejections are very common.  If you want to determine how frequently such legal advise may be needed, you can scan the Trademark Office database and look at how many applications were rejected.

Beware of non-attorney services that prepare applications for registration. They may be appealing because they are cheap. However, you could probably do the same job on your own, and are likely to have the same success.

All too often businesses choose their trademarks for marketing reasons, and ignore the legal ramifications.  If you haven't already chosen your trademark, or even if you have, but are willing to change it, the sooner you consider the legal strength of your mark, the better off you'll be.

Not every mark can be protected in court or registered with the Trademark Office. Some marks are legally "stronger" than others. Marks receiving the most protection are called "fanciful" trademarks. They are words, or invented symbols, that have no other meaning except to serve as a trademark. Examples include KODAK, XEROX and REEBOK. Marks receiving the least protection are called "descriptive" marks. They describe the nature or qualities of the product being sold, for example RAPID PRINT, or QUIK STOP. These marks can sometimes be protected if they have acquired the requisite amount of market recognition through long-term and/or wide-spread use or advertising. The middle levels of protection between the strong protection given fanciful marks and the weak protection given descriptive marks include "suggestive" and "arbitrary" marks. These marks are protected immediately upon first use, regardless of how long or how broadly they have been used. Suggestive marks do not directly describe qualities of the underlying goods or services, but with a little imagination, one can make a connection. By contrast, arbitrary marks have no logical connection to the underlying goods or services whatsoever.

Your registration can be renewed in 10 year intervals. However, between the fifth and sixth years after your initial registration, you also need to file statements with the Trademark Office in order to keep your mark in force.

All trademark owners have a duty to police and enforce their own trademarks. Failure to do so can result in abandonment of your rights in a mark. Watch services can be very helpful in this regard.

While it is okay to let others use your trademark, you must keep control over its use, and you are well advised to have an attorney draft a trademark licensing agreement in every such instance.

Only federally registered marks can use the ® symbol. All other marks can either use the ^tm or ^sm symbols. Use the ^tm for the sale of goods and ^sm for the sale of services. In so doing, you're staking your claim of right in the mark  Click here for more rules on using your mark.