How Long Does a Trademark Last: Everything You Need to Know
How long does a trademark last is a common question for those interested in filing a trademark application. 8 min read
2. Here are some tips for completing your trademark registration:
3. What types of trademarks are ineligible for federal registration?
4. If the USPTO decides that a mark is eligible for federal registration, what happens next?
5. What are the benefits of having a trademark on the USPTO's Principal Register?
6. There are three main signifiers of the federal trademark: circle-R, TM, and SM.
7. How long does federal trademark registration last?
8. Can a business register its trademark at the state level?
9. How does a trademark qualify for federal registration?
10. Trademark FAQ
How Long Does a Trademark Last?
How long does a trademark last is a common question for those interested in filing a trademark application. People interested in registering a trademark can file an application with the US Patent and Trademark Office (USPTO). You can register online on the USPTO website by using the Trademark Electronic Application system (TEAS) or TEAS Plus. TEAS cost $325 per class and TEAS Plus cost $275 per class. You also have the option of mailing an application for $375 per class.
Here are some tips for completing your trademark registration:
- Define your trademark
- Specify the time period that you started using the trademark
- State the products and services the trademark will represent
The USPTO has over 40 classifications for goods and services. Their website can help you determine what classification is right for your product.
- You will also need an image or graphic of your trademark
- You will also need to explain how your trademark will be used
- Registration Fee
What types of trademarks are ineligible for federal registration?
The USPTO will not register every trademark that gets submitted. There is a list of marks that are ineligible for Federal registration. They are:
- The United States Flag
- Government insignia
- Name of likeness of a dead US president
- Symbols or phrases that disrespect living or deceased people or property
- Symbols that are immoral or scandalous
- Trademarks that can only be in one state
If the USPTO decides that a mark is eligible for federal registration, what happens next?
The USPTO will publish the trademark in their online publication, the official Gazette, to notify the public that this trademark is in the early stages of registration. People are given the opportunity to object to the trademark. Objectors are given the chance to state their case at a hearing commissioned by the USPTO. If no one objects, then the USPTO will issue further documentation to you.
Trademark registration is not a quick process. It can take several years for a symbol to be trademarked. This is largely due to the legal issues surrounding trademarks. The USPTO will have to examine the application.
To prevent the cancellation of your registration, you must file a statement of continued use with the USPTO. The statement prevents others from taking your trademark and attempting to register it themselves. You should also file a statement on incontestability to gain further protections. Once these have been filed, you should also submit a renewal of the original application.
The good thing about the USPTO website is that they have all of the necessary forms available online. However, it is not their job to remind you to file. You must be attentive and make sure all the proper documents are filed.
What are the benefits of having a trademark on the USPTO's Principal Register?
The Principal Register offers rights and protections to trademark owners that they can’t find anywhere else. The Principal register prevents other people from using or producing the trademark. It imposes legal implications on will infringers and they may have to compensate the owners. Principal registry offers Federal protections.
The supplemental register is not as inclusive and doesn’t offer the same rights as the Principal register.
- Lets the public know that someone owns the trademark
- Gives the registrant exclusive rights to use the trademark nationwide
- Gives the registrant legal ownership of the trademark which helps in the court of law
- Gives the registrant the authority to initiate legal action regarding the trademark
- Allows the registrant to petition for trademark registration in foreign countries
- Enables the registrant to file a petition with US customs to prevent the importation of foreign goods with the registrant’s trademark
There are three main signifiers of the federal trademark: circle-R, TM, and SM.
Circle-r provides proof of Federal registration. Only goods and services listed on the USPTO’s Principal register can apply the circle-R symbol. The TM and SM symbols are used to inform the public of a trademarked sign. These symbols can be used whether you have or haven’t filed a claim with the USPTO.
How long does federal trademark registration last?
The USPTO grants principal register members a certificate that protects their trademark rights for ten years. The renewal application grants registrants an additional decade of protection. If a trademark owner doesn’t re-register their trademark they lose the protections of the Principal register.
Trademarks registered before November 16, 1989 had a 20-year grace period. All trademarks registered after this date have a 10-year grace period. A trademark can be renewed an unlimited number of times.
Can a business register its trademark at the state level?
Businesses are given the right to register trademarks at the state level if the trademark is only used in that state. However, state registration does not offer the level of protection a federal trademark does.
State registration does offer registrants legal protection against infringers. The state provides a record of trademark registrants that is available to the public. There are legal implications for people who attempt to infringe on the registrant’s trademark rights.
Registrants that apply to the Principal Registry do not have to apply for registration at the state-level. The law also assumes that the public knows the trademark is federally registered.
How does a trademark qualify for federal registration?
The major difference between federal and state trademark registration is usage. If the trademark is used in interstate commerce (nationally, internationally) then it must be federally registered. If the trademark is only used in one state and the owner only does business in this state, then the trademark can be registered at the state level.
The term interstate commerce is far-reaching. If you own an online business or a hotel that services clients from out-of-state then you engage in interstate commerce. Therefore, your trademark must be registered with the federal government.
On your registration application, you will be asked the following questions:
- Does your trademark bare any resemblance to a trademark currently in use?
- Is the trademark on the list of ineligible trademarks?
- Is the definition of the trademark too broad for proper classification?
- Can I assign trademark ownership to another person or business?
The USPTO does allow trademark owners to transfer the rights of trademark ownership to another party. The transfer is called an assignment. An assignment is a written contract between the trademark owner and the other party. Assignments must be registered with the USPTO for a fee.
Trademark owners can also file assignments for more than one party.
- What is a trademark specimen?
Trademark owners must provide a specimen, i.e. an example, of their trademark and how it’s being used in public. The USPTO does not consider a picture of the trademark an adequate example of its usage. Trademark owners must provide labels, instruction manuals, containers, etc. as specimen. These items are accepted for the trademarkers of physical products.
Trademarkers that provide a service must use brochures, flyers, etc. to show examples of trademark usage. A business card may be considered a specimen under certain circumstances. The business card must include the trademark image and the services provided by the trademark owner.
- What is the Section 15 Trademark Declaration of Incontestability?
Section 15, the Trademark Declaration of Incontestability, grants trademark owners full protection under Federal law. The USPTO has to approve your application for incontestability but once they do, you are protected from lawsuits initiated by outside parties contesting your usage of the trademark.
All trademark owners cannot file a declaration of incontestability. It is reserved for trademark owners that have used their trademark for five consecutive years and have registered it with the Principal Register.
Unlike other trademark protections, a declaration of incontestability only has to be filed one time. The declaration proves that your trademark has a specific meaning, bears no resemblance to a past or present trademark, and is nonfunctional.
- What is the deadline for filing my Declaration of Continued Use?
The USPTO accepts trademark declarations of continued use during the five to six years after the trademark was initially registered. There is a six-month grace period during the six year which allows owners to submit a declaration at an additional charge.
Trademark owners must file during the initial deadline or grace period to protect their trademarks. If not, the USPTO will abandon the trademark.
- When I file my Trademark Renewal, do I have to file my Section 8 Declaration of Continued Use form separately?
The Section 8 continued use form and the Section 9 form are automatically filed to together by the USPTO.
- Will the examining attorney search for conflicting trademarks?
The USPTO examining attorney will research all trademarks past and present as well as trademark applications to see if there are conflicts surrounding the trademark. The USPTO will not research your trademark for conflicts until a registration is filed.
It’s the examining attorney’s job to find any conflicts of interest between your registration and a current trademark. If your trademark bears a striking resemblance to another and both companies provide the same good/service, the trademark is confusion. Attorneys review trademark classifications and reject conflicting trademarks citing “likelihood for confusion.”
Please note that trademarks do not have to be identical to each other to be rejected. They just have to bear enough of a resemblance to another trademark that would be deemed confusing to the consumer.
USPTO attorneys will also evaluate your trademark against pending trademark applications. If an attorney contends that your trademark conflicts with a trademark currently pending registration, your application can be suspended. They will likely suspend the application if the other trademark owner attempted to register their trademark first.
Now, this applicant can get their trademark registration denied and attorneys will decide if you can proceed with your application. However, if their trademark gets approved, your application will be denied.
- What are "common law" trademark rights?
Common law trademark rights grant protections to owners that haven’t filed a trademark registration with the USPTO. Although Federal registration is encouraged, it isn’t required.
If someone has been using a trademark while conducting commerce, they have rights regarding said trademark. Another person that attempts to use the same trademark may face repercussions.
- How do I contest someone else using or attempting to register a trademark similar to mine?
A trademark attorney can help you research trademark law and initiate legal action against another trademark registrant/owner.
- What are the differences between my business filings and my trademark rights?
Business permits do not extend any rights over trademarks or trademark ownership. The only way a business is afforded trademark rights is if it files an application with the USPTO and registers the trademark to the Principal Register.
The USPTO does not check to see if another business has filed a trademark claim similar to your own until the examination proceedings conducted by the USPTO attorney.
- Do I have to be a U.S. citizen to obtain a federal trademark registration?
Federal trademark registration is available to citizens and non-citizens of the United States. The USPTO asks that you include your citizenship status on the application. If you are a citizen of another country, that information should be included in your application. Dual citizens can decide which country they want to use on their application.
The information gets printed in the Official Gazette, the USPTO online newspaper, and the Certificate of Registration.
- How long does it take for a trademark to be registered?
There is no specific timeframe for trademark registration. It all depends on the outside factors influencing the registration process.
The USPTO will send a response to registrants within three months of filing. This response does not confirm or deny the trademark, it just lets registrants know that the process has begun. Generally, it takes a year for the trademark registration process to complete.
The biggest issue during the registration process is the examination. If the trademark owner has problems proving the trademark doesn’t compete with another trademark, then that will hold up the process. The Trademark Applications and Retrieval database provides information about current trademark applications.
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