What Are Trademark Requirements?

Trademark requirements include details such as contact information and product description information that you must provide when you apply for a trademark. The U.S. Patent and Trademark Office (USPTO) reviews trademark applications. This agency uses information you provide on a trademark application to decide whether to grant you a federally registered trademark for your invention or product.

To get a trademark, you need to meet the following six requirements:

  1. Provide your name and address as owner of the trademark.

  2. State the entity type (individual or corporation) and your national citizenship.

  3. Demonstrate actual use or a real intent to use the trademark in commerce.

  4. Give a detailed description of the product being trademarked.

  5. Submit a drawing or specimen of the trademark.

  6. Offer the date of the first use of the trademark.

You must properly complete the trademark application for your trademark to be approved. Registering a trademark also requires you to submit a fee to the USPTO per class of goods and services. The fees are as follows:

  • $225 for TEAS (Trademark Electronic Application System) Plus
  • $275 for TEAS Reduced Fee (TEAS RF)
  • $400 for TEAS Regular

Trademark

Trademark requirements can also refer to the conditions that are necessary for a product to receive a trademark.

To be eligible for a trademark, a mark must be:

  1. In use

  2. Distinctive

In Use vs. Intent To Use

A trademark application for a product that is already in use versus a product that you intend to use has slight differences.

  • In Use: A trademark application for a product in use means that the product has already been sold on the market. The application must indicate which products were sold with the trademark on them.
  • Intent To Use: If the trademark has not been used on a product or has not been sold, you should file an Intent to Use application. For Intent to Use, the applicant must make a good faith statement to use the trademark.

You must use your trademark by the sixth year of trademark registration. At that time, you must renew the trademark and provide proof that you have used it.

What Is a Trademark?

A trademark is a legal protection of intellectual property. You must submit an application and have your application approved before it receives protection.

Trademarks can be words, symbols, names, designs, or any combination of these elements. A trademark is a logo or emblem used to identify and distinguish a company or goods from others.

Trademarks can also be sounds, shapes, fragrances, and color.

What can be trademarked has changed in recent years. Any word, name, symbol, or device can now be trademarked. However, limitations still exist (see What Can't Be Trademarked section below).

Requirements to Receive a Trademark

You must meet two requirements before your mark can be eligible for a trademark.

  1. Be in use

  2. Be Distinctive

Use in Commerce

This requirement originates from constitutional law and the Lanham Act. The U.S. Constitution states that congress can regulate commerce, which includes trademarks.

The Lanham Act requires that a trademark be used in commerce or that good faith intent must exist to use the trademark in commerce.

Distinctive

A trademark distinguishes one company's goods from another. To be identifiable, a trademark needs to be unique.

You'll find four categories of distinctiveness:

  1. Arbitrary or fanciful

  2. Suggestive

  3. Descriptive

  4. Generic

  • Arbitrary, fanciful, or suggestive: If a mark is a part of one of these three categories, the mark is inherently distinctive. Whoever applies first or uses the mark first gets the trademark.
  • Descriptive: A descriptive mark can only be trademarked if it has taken on a second meaning. For name or geographic terms to be trademarked, they must fall into this category.
  • Generic: Marks that are generic are never trademarked. An item needs to be unique to receive a trademark. A mark can be considered generic at the time of application or it may become generic over time and through use.

What Can Be Trademarked?

As long as a symbol or mark fills the two requirements (be in use and be distinctive), the mark can be trademarked.

What Can't Be Trademarked?

The USPTO receives each mark contained in a trademark application. If the mark falls into any of the categories below, the mark will not receive a trademark.

The United States Patent and Trademark Office (USPTO) will not trademark:

  • A living person's name, unless that person has given consent

  • Confusingly similar marks

  • A government's flag or coat of arms

  • Local or federal government insignias

  • Name or image of deceased U.S. presidents, unless consents has been given by their widows

  • Descriptive or misdescriptive marks

    • Descriptive of goods

    • Descriptive of qualities or features of goods

    • Geographically descriptive

    • Descriptive of individuals' names or surnames

  • Symbols or words that disparage beliefs, institutions, national symbols, or living or deceased people

A trademark application can also be denied on the grounds that the mark is immoral, deceptive, or scandalous. This reasoning is rarely used for a denial. The USPTO takes a liberal view of what could be considered liberal or scandalous.

To receive a federal trademark for your product, you must selll your product in more than one state. If you sell your goods in only one state, those products can't receive federal trademark protection.

Why Are Trademark Requirements Important?

Trademark requirements are important to maintain trademark quality. Trademarks are important for fair trade and commerce. Diminishing trademark quality diminishes the quality of commerce.

When the trademark quality is upheld, so is trade quality. Trademarks also offer their holders many other benefits.

Trademarks Provide Protection

A trademark provides protection against unwanted use. A trademark is not necessary for federal protection, but it has benefits.

Trademark registration states nationwide ownership. This ownership makes it easier to avoid infringement. A registered trademark can also achieve incontestable status after five years of continuous use. Incontestable status eliminates risk of infringement claims.

Unregistered trademarks may receive protection at the state level, but protection varies from state to state. Trademarks get protected to ensure fair commerce and trade competition.

Trademarks Offer Identification

Trademarks are unique so that goods or companies can be identified. A trademark defines a company and protects consumers from being misled to work with irreputable companies.

Trademarks also help consumers identify a source. This identification allows consumers to make value judgement about products before they purchase them.

Benefits of Trademarks

You receive many benefits from registering your trademarks with the USPTO.

Federal Protection

A trademark offers a range and benefit of nationwide protection. Whether the mark gets used in two states or all 50, a federal trademark gives the same amount of protection.

Common law trademarks or state level protection do not offer as much protection.

Other trademark benefits include:

  • Possibility to collect damages and lost profit for infringement

  • Possibility to recover attorney fees after infringement actions

  • Incontestable status after five years of use

  • The right to use the registered trademark symbol (®), which can deter people who want to infringe on your trademark

  • Increased visibility and ability to be discovered, which can prevent unintentional infringement

  • The right for a federal infringement lawsuit

  • The right to have customs block goods that infringe upon the trademark

  • Federal registration allows you to prove infringement

Trademark vs. Copyright

Copyrights and trademarks are both considered intellectual property. The largest distinction between trademarks and copyrights are the material that they protect. Copyrights and trademarks also offer different types of protection.

  • Copyright: Copyrights protect creative ideas and works from the moment of their creation. They are most often used by authors and artists. A copyright becomes obsolete with age. After a certain time period, a copyrighted idea enters the public domain. Anything that is in the public domain is free to use and has no protection.
  • Trademark: Trademarks are used for names, titles, short phrases, and symbols. You can use trademarks to identify a company or its goods. A trademark will grow stronger as it ages, gaining strength through its recognition. Unlike a copyright, you can use a trademark forever as long as you keep its registration renewed.

Types of Trademarks

Trademarks can be word marks, color marks, or shape marks.

  • Word Mark: This type of trademark can only include letters, words, and Latin characters. The characters are not stylized, and no design elements exist.
  • Design Mark: This trademark includes stylized wording or design.
  • Color Mark: This mark must prove distinctiveness. When submitting a color mark with your trademark application, you must name the color.
  • Shape Mark: This mark might refer to the shape, design, or configuration of a product or the product's packaging. When submitting a trademark application for a shape mark, you must provide a description and drawing that depicts a 3D view of the mark.
  • Sound Mark: You must provide a detailed description of the sound, including a transcription of any words or lyrics and an audio file, when submitting a trademark application for a sound mark.
  • Scent or Flavor Mark: You must submit a detailed description of the scent or flavor, which must be distinctive. A specimen of the scent or flavor should be submitted and must match the provided description.
  • Touch Mark: You must represent this type of mark graphically in a trademark application.
  • Motion Mark: You must describe a motion mark in detail and include a drawing. The drawing can depict one of the movements or five drawings depicting freeze frames of the movement.
  • Collective Membership Mark: A group or organization generally applies for a collective membership mark when one mark is used to identify a group as a collective.

Common Problems With Trademark Requirements

Principal or Supplemental Register

You'll find two registers for trademarks: the principal register and the supplemental register.

  • Principal Register: The principal register is the register that gets most associated with federal trademark protection. This method is the preferred method for federal trademark protection and offers more protection. Once a trademark becomes registered on the principal register, that trademark can't be used by others. If someone uses the mark, that person is considered a willful infringer. The principal register also gives an owner the right to request the denial of goods being imported that might infringe upon the trademark.
  • Supplemental Register: The supplemental register does not confer one's rights available through the principal or supplemental register.

The supplemental and principal register offer different rights to trademark owners. The principal register offers more rights than the supplemental register. If your trademark is registered on the principal register, you receive exclusive rights to the use of your trademark. You can also have customs halt the import of goods that infringe upon your trademark. These protections are not offered if your trademark is registered on the supplemental register.

Confusing Legal Jargon

When you want to use a trademark that you don't own, the proper use can be confusing. The legal terms used to describe appropriate use can sometimes be difficult to understand.

For example, consider the following description information for FICO:

  • "Always use the proper trademark symbol (TM, SM, or ®) immediately following at least the first reference to the trademark on any page.
  • "The exception to the above rule is when the 'FICO' name is used as our company name, as opposed to an identifier of one of our products or services. In this case, you should not use the ® symbol."

If you have any concern about whether you're using a trademark improperly, consider consulting with an intellectual property lawyer.

Trademark Infringement Test

Before using a trademark or applying for a trademark, consider taking the trademark infringement test.

The trademark infringement test identifies improper use of trademarks. This test seeks to identify if a mark is confusingly similar to another mark. If so, it's likely an example of trademark infringement.

If the marks would confuse consumers, preventing them from differentiating your product from other products, you could be penalized for trademark infringement. The courts consider the following factors when identifying trademark infringement:

  • Conflicting mark similarity

  • Company proximity and relation

  • Strength of the older mark

  • Channels used for marketing

  • Level of care given by consumers when selecting goods

  • Intent of selection of junior mark

  • Evidence of consumer confusion

  • Likelihood of product expansion

The test for trademark infringement can be subjective. Some factors are given more consideration than others, and their use will vary depending on the case. The court may also consider factors not listed here.

Dilution of a Trademark

If a trademark is diluted, the mark has lost its distinctiveness from unauthorized use. The owner of a trademark has the right to stop others from using the mark to prevent trademark dilution.

In a case of trademark dilution, proving likelihood of confusion nor competition is required. Trademark dilution permits limited use of the mark in situations involving parodies and satires.

Correct Usage of Spoken Trademarks

Improper use of a trademarked term can cause dilution and make the trademark generic.

Consider the following examples of trademarked brand names:

  • Aspirin
  • Elevator
  • Kleenex
  • Xerox
  • Ray-Bans

People use these terms in conversation to describe generic objects, but these terms are also brand names. Some are still recognizable brand names, while others have gained acceptance as generic terms for an object.

Proper trademark use is important to distinguish among products and services. In writing, a trademarked word should also be identified with a certain characteristic, such as italics or quotation marks.

Trademark Registration

Before a trademark is fully registered, the mark gets published in the Official Gazette, a publication of the USPTO. The publication gives existing trademark owners the right to object to the new trademark as being too similar to existing designs. If an objection arises, a court hearing can resolve the matter.

Processing for a trademark application may take a year or more. The more legal issues that arise, the longer the application will take to process.

No Notification

The USPTO doesn't notify trademark holders when paperwork for renewal of the trademark must be filed. If the paperwork is not filed on time, the trademark is lost. In order to maintain the trademark, a statement of use and a renewal application must be filed on time.

Frequently Asked Questions

  • What is a trademark?

A trademark is a legal registration of a mark that provides protection for unauthorized use of that mark. A trademark distinguishes a company and its good or services from competing companies.

  • What documents or materials do you need to apply for a trademark?

To receive trademark approval, the mark must be distinctive and in use.

  • What is trademark infringement?

Trademark infringement is improper use of a trademark or a mark that is similar enough to a trademark.

  • What is trademark dilution?

If a mark becomes part of common speech, the term becomes generic.

Steps to File

You can file a trademark application online through the USPTO's website, uspto.gov. If you don't want to file online, you can mail a hard-copy application. Along with the application, you'll be charged a certain fee. The application should follow the guidelines below:

  • Describe the trademark

  • State first use

  • Choose which classification the trademark should receive its registration

  • Provide a drawing of the mark

  • Give samples for how the trademark is used or will be used

Understand Trademark Requirements With UpCounsel

When applying for a trademark, you must meet many trademark requirements. If you've considered applying for a trademark for one or more products, consider posting your legal need to consult with one of UpCounsel's trademark or intellectual property lawyers for advice. 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, Stripe, and Twilio.