Federal Trademark: Everything You Need to Know
A Federal trademark is a brand, whether it be a word, symbol, or name, used to identify a specific good or service.6 min read
2. Frequently Asked Questions
3. State Trademark vs. Federal Trademark: Which One is Right for Me?
Federal Trademark: What is it?
A Federal trademark is a brand, whether it be a word, symbol, or name, used to identify a specific good or service.
Frequently Asked Questions
It is important to protect your trademark by registering with the United States Patent and Trademark Office (USPTO). Below are some frequently asked questions with regard to federal trademark protection and application.
- What steps do I need to take to register my trademark for federal protection?
First, you’ll want to visit the USPTO website. You can either apply online or submit the application through the mail. In the application, be sure to include the following:
- Explain your trademark in detail.
- Indicate how it is being used.
- Indicate the date in which you first used your trademark.
- The service/good associated with it.
- The classification.
- A drawing of the name, i.e., if you are utilizing a specific brand name that is going to be drawn to look a certain way, you’ll want to send along a drawing specifically showcasing how it will look.
- Registration fee of $275 for TEAS PLUS or $325 for TEAS.
- How do I know if my trademark is eligible for federal protection?
The following marks cannot be registered:
- U.S. flag
- Federal/local government insignia
- Words/symbols that ridicule people, entities, religious beliefs, or national symbols
- Names of living persons unless they give consent
- Names of deceased persons unless the widow provides consent
- Immoral or scandalous marks
- Trademarks that are offered in only one state. You must offer the goods or services associated with the trademark in two or more states in order to seek federal protection.
- What happens after the USPTO determines that I am eligible?
- The USPTO will publish the trademark in what is called the Official Gazette, which is an online publication managed by the USPTO. The publication will indicate the mark is an applicate for federal trademark protection. This will provide any current trademark owners to protest the candidate’s mark. Should someone object, a hearing will be held to determine who resolve the issue.
- Generally, your application for federal protection will be complete within a one-year timeframe. However, note that the process could take up to many years, conditioned upon several factors, including the type of mark, the goods/services associated with it, and any other legal disputes that may occur during the application process.
- Why should I have my trademark put on the USPTO’s Principal Register and not the Supplemental Register?
First, it’s important to know that there are two registers, the Principal Register and the Supplemental Register. The register that provides the most benefit is the Principal Register. Some of the benefits of having your trademark on the Principal Register include:
- How long will my federal trademark protection last?
Immediately after a trademark is put on the USPTO’s Principal Register, a certificate is mailed to the owner; the certificate states that the trademark is good for a period of 10 years. The registration can be renewed for an indefinite period of time in 10-year increments. In order to renew, the owner of the trademark must file a renewal application with the USPTO. If one fails to renew, all special benefits will be lost.
- Should a company register a trademark for state level protection?
Anyone who engages in trademark infringement against your federally protected trademark will be liable for large compensatory damages.
The Supplemental Register fails to provide the same rights and protections that are granted by the Principal Register; therefore, you have the most protection with the Principal Register.
The simple answer here is yes. In the event that the trademark is only used in one state, then the trademark should, in fact, be registered within that state. However, note that protection at the state level is far less than at the federal level. Further, if someone registered at the federal level, registration is not required at the state level. A benefit to registering at the state level is that notification will be given to anyone who searches the state’s trademark list that the mark is already registered and owned by someone else.
- How does one know if a trademark qualifies for federal protection?
In order to be able to register your trademark with the USPTO, you must first ensure that the product or good is used in more than one state. Therefore, it must cross state lines. For instance, if you are selling your product or service online to the general public, it is likely that your customers will love in more than one state. Therefore, you fit the criteria.
In addition, the owner of the trademark must ascertain that:
- The trademark is not identical/similar in nature to an existing mark that may be used for a similar type of product or service being offered.
- The trademark must not be a prohibited/reserved name that is already taken and being used.
- The trademark must be generic, meaning that the mark itself describes the product being sold or service being offered.
- The trademark cannot be too detailed or not detailed enough.
State Trademark vs. Federal Trademark: Which One is Right for Me?
If you want to register your trademark for protection, you have the following two choices. You can either register your trademark for state protection or federal protection.
It is important to know the difference between a state and federal trademark, and the steps that must be taken to apply for both. While some information was previously noted on both types of protection, let’s learn a bit more about what each type of protection can do for you.
Some things to keep in mind regarding state trademark registration include:
- You must file your application through the state.
- Each state operates differently, and the fees and steps taken in one state may be wholly unique to that of another.
- You cannot apply for state protection unless and until you are actually using the mark.
- Once you begin using your mark, you already have general protection based on common laws associated with trademarks. State protection doesn’t add too much additional protection on top of that.
- Again, as previously mentioned, you want to be mindful of the fact that state trademark protection will protect your trademark only in that specific state.
- State trademark fees are inexpensive and can save you an average of $200 compared to registration for a federal trademark.
- State trademark protection doesn’t give you the right to use the symbol. You can only use either TM (for a trademark) or SM (for a service mark).
Some things to keep in mind for federal trademark registration include:
- You must file your application with the USPTO.
- You must include specific information relating to the trademark, when it was first used, proof that it is being used in more than one state, details of the trademark, and the product/good being sold.
- There is generally a filing fee of between $275 and $375 per class of goods/services.
- The process itself can take between one to several years, depending on the complexities of your application.
- You may need a qualified attorney to help you register a federal trademark. A lawyer can do the leg work for you, and make the process go as quickly and smoothly as possible. Be mindful that additional legal costs will apply.
- You will have the utmost legal protection of your trademark at the federal level, which will benefit you in the long run.
- Each trademark is registered for a period of 10 years, at which point the owner of the trademark can apply for renewal.
- You can use the ® symbol, which provides added protection.
- If someone else should use your trademark, you can file a trademark infringement case in federal court.
- You can register your federal trademark with the U.S Customers and Border Protection Service to prevent infringed products from being imported into the United States.
There are many requirements and steps to take when applying for federal trademark protection through USPTO. If you need help obtaining a federal trademark, or have questions, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.