Trademark Registration: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
The main purpose of federal trademark registration is to offer as much protection for slogans, logos, and brand names from infringement.11 min read
2. Why Is Trademark Registration Important?
3. Reasons to Consider Not Using Trademark Registration
4. Reasons to Consider Using Trademark Registration
5. Should You Register a Business Name With Your State?
6. Frequently Asked Questions
7. How to File for Trademark Registration
8. How to Start the Process
9. Registering a Trademark
10. Registering a Trademark Overseas
11. Get Help With Trademark Registration
What Is Trademark Registration?
Federal trademark registration establishes a business's or person's ownership of a trademark. The main purpose of federal trademark registration is to offer as much protection as possible for slogans, logos, and brand names from infringement. The process of trademark registration takes at least six months, but can last longer.
A trademark is any mark that one uses or intends to use to distinguish the goods of a manufacturer from that of another manufacturer. Another term for trademark is a brand name.
Trademarks are an important business tool because they give a company the ability to establish a product's reputation. Trademarks can include the following:
If a mark tells a consumer that a product comes from a certain company, the mark is considered a trademark.
A service mark is nearly identical to a trademark. However, the main difference is that a service mark distinguishes the services of a manufacturer instead of products. A service mark can consist of names, words, symbols, and logos. Trademarks usually appear on the packaging of the product or the product itself. On the other hand, a service mark will appear on advertising for the company's services. In popular usage, trademark usually refers to both service marks and trademarks.
Why Is Trademark Registration Important?
You should have your trademark registered as soon as possible with the United States Patent and Trademark Office (USPTO).
Federal trademark registration will help you if you face legal challenges. If you register your trademark, you will need to do a comprehensive search to make sure you're not infringing on the mark of another company. Otherwise, you could face major legal risks.
Reasons to Consider Not Using Trademark Registration
The USPTO will not register all trademarks. You should not consider trademark registration if your mark includes the following:
- The name of a living person who has not granted you consent
- The flag of the United States
- Local and federal government insignia
- The likeness or name of a U.S. president who has passed away, unless a widow has granted you consent
- Symbols or words that disrespect beliefs, national symbols, institutions, and people (both living and deceased)
The USPTO will refuse to register trademarks deemed as follows:
However, the USPTO has a fairly liberal view of what qualifies as "scandalous" or "immoral."
Also, the USPTO will not register a trademark used in only one state. A trademark needs to be used to offer goods or serves in more than one state for the trademark to be eligible for federal protection.
Reasons to Consider Using Trademark Registration
When you use a trademark to sell a product or service, you will start to develop common law rights to the trademark. Common law rights are those that originate from use of the trademark, but they are not rights protected by federal statutes.
The only exception to this rule is if the mark is similar to another registered mark. The common law rights you acquire for a trademark are limited to the area where you have used the mark. Those rights can also be limited to the zone of natural expansion, which includes the areas where you have demonstrated an interest in expanding your use.
If your products or services are available over the internet, national trademark rights apply. However, you should keep in mind that if your mark is similar to another registered mark, you won't be able to get rights to the mark. You could also be held liable for trademark dilution or infringement.
- If you want to get the rights to a trademark through common law rights, then you should do conduct research to ensure your trademark is not similar to existing trademarks. You don't want to connect your products and services to a mark that is confusingly similar to an existing trademark.
- You can also register the mark with your state or the USPTO. However, you don't need to take this action to file a lawsuit to protect your trademark against dilution or infringement.
In most cases, state registration will be cheaper and easier for you than federal trademark registration. However, federal trademark registration is not the best option if you have an online venture. An online venture, by definition, has a national and international scope.
If you register your trademark with the USPTO, you will assert your rights to use the mark. You will also receive more protections and procedural benefits in the event you must defend your rights.
Should You Register a Business Name With Your State?
If you are applying to form a corporation or an LLC, the office of the secretary of state will check to ensure the business name you proposed is not in use by another company within the state.
Different states have laws about how unique a business name must be from other existing business names. For example, some states will allow the business name "Bob's Flowers," even if the business name "Bobby's Florist" is already registered. On the other hand, some states will reject the business name and believe "Bob's Flowers" is deceptively similar.
Once your application for the LLC or corporation receives approval, your business name will receive protection within the state. No other business in your state will be able to form a corporation or an LLC with the same name. However, a business that is a partnership or sole proprietorship will be able to use the same name in the state. Such a business would need to change its name to register as a corporation or LLC.
- If you register the name of your business in one state, that registration will have no impact on what occurs in other states. For example, if you conduct your business in Florida, a business in New Jersey or New York will be able to use the same name. That business can form an LLC with the same name in other states.
- You may want to consider whether brand protection at the level of the state government is enough for your business type and model. For example, if you are planning on opening a local restaurant, you probably won't mind if another business has the same name in another state. A customer in your neighborhood won't reasonably confuse the two restaurants.
However, if you want to expand your business nationwide and sell your products and services throughout the country, you may want to protect your business name at the federal level with a trademark. Another reason you may want a trademark is if you're concerned that a partnership will use the name of your business.
Frequently Asked Questions
- How can a trademark be qualified for federal registration with the USPTO?
To start the trademark registration process with the USPTO, the owner of the trademark needs to make sure the mark gets used in interstate commerce. The mark needs to distinguish a product or service sold in multiple states, nations, or territories. The product or service can also impact commerce crossing state, national, and territorial lines. For example, a restaurant or hotel might have international customers.
To register a trademark, the owner must be able to answer the following questions with a "no" response:
- Is the trademark too generic?
- Is the trademark not distinctive enough to be qualified for protection?
- Is the trademark similar or the same as an existing registered mark that used on similar goods or services?
- Is the trademark a reserved or prohibited name?
- What happens after the USPTO deems a mark eligible for federal registration?
Once the USPTO has deemed that a trademark is eligible for federal registration, the USPTO will publish the trademark in its online publication, the Official Gazette.
The Gazette will state that the trademark is a good candidate for successful registration. This statement will offer any existing trademark owners with the opportunity to voice their objections to the mark's registration. If someone objects to the trademark's registration, a hearing will take place to handle the dispute. However, if no objections exist, the USPTO will connect with you within a year. From processing to completion, the trademark registration process could take up to a year. The length of time for processing will depend on the legal issues that arise and the basis for filing.
To maintain a trademark that has been federally registered, the owner of a trademark needs to complete a Statement of Continued Use after five years. After a decade from registration, the owner will need to file a renewal application every 10 years.
If a Statement of Incontestability gets filed, the owner will acquire more rights. You can file these documents online. The USPTO will not remind the owner of due dates for registration, and federal registration will end if the documents aren't filed in a timely manner.
- Why should you have a trademark on the Principal Register of the USPTO?
If a mark gets registered on the Principal Register, the trademark holder can receive the most important substantive rights associated with federal registration of the trademark.
The main advantage of having a mark placed on the Principal Register is that anyone who attempts to use the same or similar trademark may be known as a willful infringer. Such a person may be held liable for significant money damages.
On the other hand, registration of a mark on the Supplemental Register does not grant the same extent of rights and protections. For example, simply because a mark gets registered on the USPTO Supplemental Register does not mean the owner has exclusive rights to the trademark. Also, the owner of a mark registered on the Supplemental Register can't use customs services to prevent importation of possible products that could infringe on that trademark.
- How long does federal trademark registration last?
When a trademark gets registered on the Principal Register of the USPTO, the owner will receive a certificate. The certificate of registration will extend for 10 years. However, if the owner fails to file a Statement of Continued Use within six years after the registration date, the registration may lapse. The purpose of the Statement of Continued Use is to make sure that the mark remains in use in commerce.
The owner can renew the original registration indefinitely for more 10-year periods. The owner simply needs to file the renewal applications. If the owner fails to file the renewal application in time, this failue will not completely void the rights to the trademark. However, the owner won't be able to receive the benefits of federal trademark registration.
- Can a business register its trademark at the state level?
If a trademark is not used in more than one state, it does not qualify for federal registration. However, the trademark will likely qualify for state registration. In general, state registration doesn't offer the same level of protections as federal registration. The main advantage of state registration is that anyone who looks at a state's list will know that a person or business owns a certain trademark. To avoid a legal dispute, most people will choose another trademark.
How to File for Trademark Registration
The USPTO is responsible for reviewing trademark applications and determining if an application fulfills the requirements for federal trademark registration. If you use a mark legitimately, you can also establish common law rights in a mark. However, you'll receive many advantages of federal trademark registration of a mark on the Principal Registrar:
- Notice to the public that the person registering the trademark owns the mark
- The exclusive right to use the mark nationwide
- The right to bring action to federal court for any cases that concern the trademark
- The ability to use U.S. registration to register the trademark in foreign countries
- The ability to file with U.S. Customs and Border Protection to prevent products that may infringe on the trademark from being imported
Each time you claim the rights to a mark, you can using TM (trademark) or SM (service mark). These designations will signal to the public that you claim the trademark even if you haven't filed an application for registration with the USPTO. However, you can only use the federal registration symbol (®) once the USPTO registers the mark. You can't use this symbol while your application is pending. You can use the registration symbol only with the products and services associated with the mark listed on the trademark registration.
How to Start the Process
- Do you have a product that is eligible for a trademark?
Many applicants in the United States base their application for trademark registration on their current use of the mark or their intent to use the mark at some future point for commerce. With federal registration, commerce refers to any commerce that Congress has the legal power to regulate. Commerce between the United States and foreign countries and interstate commerce are examples of such commerce. "Use of commerce" means that the marks should be used in the ordinary course of commerce. A mark shouldn't be used in commerce for the purpose of reserving rights to the mark.
Acceptable use for eligibility is as follows:
- For products: The mark needs to appear on the packaging of the products, the displays for the products, or on the products themselves. The products must be transported or sold in commerce.
- For services: The mark needs to be used in advertising of the services or the display of the services. The services need to be used in connection with commerce.
If you have used the mark in commerce already, you can simply file your application based on this use. You will need a sworn statement for an application based on use. The sworn statement will be a declaration that the mark is in use. In the sworn statement, you will need to list the following:
- The date of the first time you used the mark
- The date of the first time the mark became used in commerce
You will find a sample declaration in the standard application form of the USPTO. The person or applicant authorized to sign on the applicant's behalf needs to sign the statement. A specimen in the application needs to shows use of the trademark in commerce.
- Do trademark research.
Your next step is to search the USPTO trademark database for similar or identical trademarks. You should do this research before you start your application because you don't want to file an application for a trademark that is already claimed. In addition to the USPTO database, you can find several databases available online for conducting trademark research.
Registering a Trademark
You can use an online trademark application service to file the trademark application online. You can also file the forms on your own or contact a trademark attorney for legal advice.
Registering a Trademark Overseas
Federal registration of a trademark will not be valid outside the United States. However, if you have successfully registered a trademark or your trademark application is pending with the USPTO, you can attempt to register your trademark with countries that are a part of the Madrid Protocol. This protocol is an international treaty that allows trademark owners to seek trademark registration in any participating countries by filing a single application, an international application.
You can complete the application through the USPTO with the International Bureau of the World Property Intellectual Organization.
You will find that registering a trademark for your company name will be fairly simple. You can file your application with the USPTO in less than two hours with or without the help of a lawyer on the USPTO website, uspto.gov.
- Before you complete the registration form online, you should conduct research to make sure that another company conducting commerce internationally has not registered a similar or identical mark for the same products or services that you offer. Otherwise, your registration will likely be rejected, and you will need to alter your trademark with the help of a lawyer to move forward with your application.
- Online registration usually costs $275 to $325. The cost depends on whether you enter your own text for the classes of products and services or you choose from the preset list of classes. Some of the information you will need to give are the design component of the trademark and the date of the first use of the mark in commerce. If you have an internet-based business, you should not register with a web extension such as .com or .net in the name. However, you can register the trademark both with and without the extension.
Get Help With Trademark Registration
If you need help with trademark registration, you can post your question or concern 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 such as Google, Menlo Ventures, and Airbnb.