There are several challenges to applying for a federal trademark. Learn the fundamentals of trademark registration.
Table of Contents
Questions
How do I go about registering a federal trademark?
Which trademarks are not eligible for federal registration?
What happens once the USPTO determines that a mark is qualified for federal registration?
What are the advantages of having a trademark registered on the USPTO’s Principal Register?
What is the duration of federal trademark registration?
Is it possible for a company to register its trademark at the state level?
How does a trademark become eligible for federal registration?
How do I go about registering a federal trademark?
You may register your trademark application online at the USPTO website using either: (1) the Trademark Electronic Application Method (TEAS) for $400 per trademark class (2019 figure); or (2) an abridged application system known as TEAS PLUS for $225 per class (2019 figure). A printed application form may also be sent in for $375 per class.
View the whole schedule of trademark costs here, and keep in mind that the exact rates do change yearly.
Registration is a reasonably simple procedure for the majority of trademark applicants. When filling out the application, you must:
Describe your trademark or service mark (often referred to as “marks”), state when it was first used (as in, the date you first used the mark to signify your company, products, or services in the marketplace), describe the products or services on which the mark will be used, and suggest the classification under which the mark should be registered (there 45 different trademark classes for goods and services; the online help provided by the USPTO can help you figure out which classification is right for your mark).
Furthermore, your application must be accompanied by:
a “drawing” of your signature (for word marks, simply type the word; for graphic marks, you can include a photo file of graphic images)
The enrollment cost (in 2019, $225 per class if using TEAS PLUS, or $400 per class if using TEAS) and examples of how your proposed mark is being utilized.
See Nolo’s book Trademark: Legal Care for Your Business and Product Name for further information on submitting a trademark application on your own.
Which trademarks are not eligible for federal registration?
Trademark applications are rigorously scrutinized by trademark examiners at the USPTO before they are awarded. Please keep in mind that not every trademark you apply for will be authorized. The USPTO will not register any marks that include the words:
The American flag, other federal and local governmental insignias (such as federal department seals), the name or likeness of a deceased U.S. President, unless his or her widow(er) has given consent, or words or symbols that disparage living or deceased persons, institutions, beliefs, or national symbols.
Previously, the USPTO refused to register trademarks that were immoral or scandalous. However, the Supreme Court ruled in 2019 that such restrictions are unconstitutional, so anticipate this to be less of a barrier than it was before.
What happens once the USPTO determines that a mark is qualified for federal registration?
The trademark is published in the Official Gazette by the USPTO (an online publication of the USPTO). The trademark is listed as a candidate for registration in the Gazette, giving current trademark owners the option to oppose to the registration.
If someone objections, the USPTO will hold a hearing to settle the disagreement. If no one objects, you should hear from the USPTO within a year. The entire time it takes to complete an application may vary from a year to several years, depending on the foundation for filing and the legal concerns that may develop during the application’s review. (If another firm disputes your application, for example, this can considerably increase the schedule).
To keep a federally registered trademark active, the owner must submit a declaration of ongoing use and, eventually, a renewal application. If a declaration of incontestability is submitted, the owner has extra rights. All of these papers may be submitted electronically. When these statements are due, the USPTO does not inform the trademark owner, and if they are not submitted on time, the federal registration is terminated.
What are the advantages of having a trademark registered on the USPTO’s Principal Register?
To begin, you should be aware that the USPTO keeps two registers: the Principal Register and the Supplemental Register. Because registration of a mark on the Principal Register confers the key substantive rights that most people identify with federal registration, it is the favored form of federal trademark protection.
The most essential advantage of registering a trademark in the Principal Register is that anybody who subsequently uses the same or a confusingly similar brand may be deemed by the courts to be a “willful infringer” and hence liable for hefty monetary damages.
Registration on the Supplemental Register does not give the same set of rights and protections as registration on the Principal Register. For example, registration on the Supplemental Register is not regarded proof of the owner’s exclusive right to use the mark in connection with the products or services, and the owner of a mark on the Supplemental Register cannot use the agency’s jurisdiction to halt the importation of infringing goods.
What is the duration of federal trademark registration?
When a trademark or service mark is registered on the Principal Register of the United States Patent and Trademark Office (USPTO), the owner obtains a certificate of registration valid for 10 years.
The registration may lapse before the ten-year term finishes, however, unless the owner submits a declaration (called a Section 8 Declaration) within six years of the registration date declaring that the mark is still in use in commerce.
If the owner submits the proper renewal applications (known as a Section 9 Declaration) with the USPTO, the initial registration may be extended forever for subsequent ten-year periods.
Failure to renew a registration does not result in the loss of all rights to the mark; nevertheless, if the owner fails to re-register, the particular advantages of federal registration are lost.
Is it possible for a company to register its trademark at the state level?
Yes, state registration is a smart idea if the trademark is solely used inside one state (and hence does not qualify for federal registration). State registration, on the other hand, does not give the same degree of protection as federal legislation.
The key advantage of state registration is that it informs everyone who examines the state’s registry that the registrant owns the mark. Most would-be users of the same brand will avoid a legal conflict with the registered mark’s owner as a result of this reality.
If the mark is also nationally registered, a prospective user is believed to be aware that the mark is federally registered, and state registration is not required.
How does a trademark become eligible for federal registration?
To register a trademark with the USPTO, the owner of the trademark must first utilize it in “interstate commerce.” This implies that the mark must be used on a product or service that spans state, national, or territorial boundaries, or on commerce that crosses such lines, such as an Internet company or a restaurant or hotel that serves interstate or international consumers.
In addition, the trademark owner must be able to respond “no” to the following questions:
Is the trademark same or similar to an existing mark used on comparable or related products or services in the same trademark class?
Is the trademark listed as forbidden or reserved?
Is the trademark general, that is, does it describe the product rather than its source (for example, “Computers” or “Fruit”)?
Is the trademark too descriptive (not unique enough) to qualify for protection (for example, “Women’s Dress Shop”)?