Co-Author: Amy E. Allison, Esq.
Last month we looked at what constituted a trademark and how to search to see if there were any pre-existing marks that were similar. This month we address how to register a mark and therefore protect your rights in it.
A state trademark is one that is used within the confines of the state and optionally registered on the state’s trademark list. A federal trademark is one that is used across state, territorial or international borders, or that affects commerce across such borders. The term “federal trademark” is also generally taken to mean that the trademark has been federally registered, as opposed to a common law trademark.
If you are only going to use your mark in Colorado, you will only need to register your mark in Colorado. In fact, federal registration will not be permitted due to the fact that your mark does not affect trade “across state, territorial or international borders.” If you do in fact use your mark in interstate or international commerce, you should consider registering your mark with the United States Patent and Trademark Office in order to adequately protect your mark. State Registration. All states maintain separate trademark registers. The main function of these is to provide notice to would-be later users that the mark is already in use. Unlike federal trademark registration, placement of a mark on most state registers confers few benefits other than an indication of when trademark rights in the mark were first claimed by the registrant. In Colorado, trademark registration is done through the Secretary of State’s office. Please note that simply registering your business with the Secretary of State does not equal trademark registration. A separate form is used and a separate register is kept. Assuming there are no trademarks previously registered, registration is effective within two to three weeks of filing unless expedited filing is requested.
Federal Registration. A real estate entrepreneur may register a trademark which is already in use, or register a trademark that the entrepreneur intends to use in the future. Registration begins with the filing of the application along with the appropriate filing fee based on the type of application and a specimen of the mark. The typical time it takes to get a trademark registered is between twelve and eighteen months, assuming no objections to the application are filed and that the Patent and Trademark Office approves the mark. However, any trademark search conducted after the filing of an application will disclose that the application is pending, and would-be users of the mark are thereby put on notice that the applicant is already claiming ownership.
The registration of a domain name does not assure trademark protection. For example, you might be able to successfully register the domain name “XYZ Real Estate.com.,” only to find out that your competitor is operating under the name “XYZ.com” and that that competitor has a prior common law or registered trademark “XYZ Real Estate.”
Amy E. Allison is no longer with the law firm of Frascona, Joiner, Goodman and Greenstein, P.C.
A version of this article appeared in the Colorado REALTOR® News, the monthly publication of the Colorado Association of REALTORS®.