The Dos and Don’ts of Trademark Registration in North Carolina

Trademark registration provides many benefits to business owners, including protection against registration and subsequent use of the same or similar marks by others, evidence as to the validity and exclusive ownership of the mark, and notice of ownership of the mark as of the registration date.  However, navigating the trademark registration rules and requirements in North Carolina can sometimes be difficult and complex, particularly for business owners who are unfamiliar with the process.  (Note: This post is focused on state trademark registration, not federal registration.)

First, it’s important to understand whether the mark you are seeking to register is considered a trademark or a service mark.  A trademark is a word, phrase, logo, or symbol used to identify or market a product. A service mark is a word, phrase, logo, or symbol that is used to identify or market a service.  Once you’ve determined whether your mark is considered a trademark or a service mark, keep the following basic rules in mind as you consider registration of your mark with the North Carolina Secretary of State:

Do: Search the Mark. Before submitting an application for registration, you should search the mark which you intend to register to determine whether anyone has a prior use or prior registration of the same or a substantially similar mark. If so, you should consult an attorney prior to registration of your mark to avoid potential infringement issues. At a minimum, the mark should be searched on the North Carolina Secretary of State’s website in both the trademark and corporations sections, the Wake County Register of Deeds Assumed Name database, the United States Patent and Trademark Office website, and generally on the internet using a search engine such as Google or Bing.

Do: Make Sure the Mark is Currently Being Used. The Secretary of State requires proof that the mark is actually being used in connection with the applicant’s goods or services prior to granting registration. Therefore, before submitting the application for registration, make sure the mark is actually being used in North Carolina.

Don’t: Try to Register More Than One Mark In The Same Application. Only one mark may be registered per application. Similarly, only one goods/services designation can be filed per application. Therefore, if registering more than one mark or for multiple classes of goods/services, remember to submit separate applications for each.

Don’t: Submit an Incomplete or Inaccurate Application. Fill out the Application for Trademark or Service Mark Registration/Renewal (available on the Secretary of State’s website) completely and correctly.

Do: Submit Three (3) Original Specimens of the Mark. Applicants are required to submit three (3) original, current (no more than six (6) months old) specimens of the mark as it is currently being used in North Carolina.

Don’t: Submit Photocopies as Specimens. Photocopies, drawings, blueprints, faxes, computer printouts or camera-ready layouts are not acceptable specimens and will be rejected by the Secretary of State.

Don’t: Forget to Include the Registration Fee. When submitting your application to the Secretary of State, don’t forget to include a check made payable to the North Carolina Secretary of State for the seventy-five dollar ($75.00) registration fee for each application being submitted.

Don’t: Forget to File the Affidavit of Use. Trademark and service mark registrations are effective for ten (10) years from the initial registration date, and may be renewed for subsequent ten (10) year terms so long as the mark continues to be used in North Carolina in connection with the goods or services listed on the Certificate of Registration for the mark. Importantly, however, between the fifth (5th) and sixth (6th) years following the initial registration date for each registration, another specimen must be submitted to the Trademark Section of the North Carolina Secretary of State’s Office that reflects current use of the mark, as well as a signed statement verifying the owner’s continued use of the mark, which statement is called an “Affidavit of Use.” The Affidavit of Use form is currently available in a downloadable format from the North Carolina Secretary of State’s website.

If you’d like to obtain more information relating to trademark registration in North Carolina or would like our assistance in completing a trademark registration application on your behalf or on behalf of your business, please don’t hesitate to contact one of our business or corporate attorneys by calling (919) 828-2501 or emailing kking@jordanprice.com.

 

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