How To Register a Trademark With the USPTO FAQ
Every small business, entrepreneur, or startup should know the four types of intellectual property. The four types are trade secrets, copyrights, patents, and trademarks. A trademark protects brand names, logos, goods, or services and creates security in brand identity. The following information will help you learn how to register a trademark. The FindLaw Guide to Registering a Trademark also provides a concise process overview.
Q: What Is a Trademark?
A trademark is a type of intellectual property. A trademark is a unique:
Q: Why Should I Register My Trademark?
Registering your trademark with the United States Patent and Trademark Office (USPTO) provides several benefits. A registered trademark allows you to confidently promote your brand and image, protected by the force of federal law.
Q: What Are the Qualification Requirements for Trademark Protection?
1. Used in Interstate Commerce
Affecting interstate commerce is the first requirement for federal registration. To register a trademark and receive federal protection through the U.S. Patent and Trademark Office (USPTO), a trademark must be in "interstate commerce." In other words, the mark must be for a product or service that does business in more than one state or affects commerce in more than one state.
An example of a trademark affecting commerce in more than one state would be a hotel in one state servicing customers from other states. Offering goods and services on the Internet also qualifies as affecting interstate commerce. Shipping goods to another state also qualifies.
2. Is Not Likely To Confuse Consumers of an Existing Trademark
Trademark law's primary objective is to prevent consumer confusion. In addition, to use in commerce, a trademark cannot be the same or too similar to another trademark for a similar service or product. You should search for existing trademarks with the Trademark Electronic Search System (TESS) at uspto.gov.
The examining attorneys at the USPTO turn to the likelihood of confusion test in granting a trademark application. If your proposed mark is too close in name, spelling, or pronunciation to another mark in that same class of goods or services, then your mark may confuse consumers. The USPTO will not grant your application.
For example, "Dr. Pepper" has a trademark for its soda product. If you applied to sell soda under "Doctor Peper", your drink would confuse consumers. The USPTO would not grant it. However, if Dr. Taylor Grohl Pepper applied to trademark his eyeglass business "Dr. Pepper," then it would likely be granted. Why? It would not confuse a consumer looking for a soda.
3. Is Distinct and Not Merely Descriptive
Trademark distinctiveness and descriptiveness are essential factors when examining the strength and registrability of a trademark. A trademark should be distinct and not simply a description of the mark.
Distinctiveness is the ability of a trademark to set the goods or services it represents apart from others in the marketplace.
Descriptiveness is the term or phrase that describes a:
- Purpose of the goods or services
Descriptive marks lie on a spectrum of distinctiveness. They are categorized into two categories: trademarkable descriptive marks (fanciful, arbitrary) and generic marks not able to be registered without additional proof (suggestive, descriptive, and generic). For information on this spectrum, strong and weak trademark, and distinctiveness vs. descriptiveness, see Qualifying for Trademark Protection FAQ.
Trademarks Not Currently in Interstate Commerce
You may still apply for federal registration if you have a bona fide intent to use the trademark in interstate commerce. You can apply with this application even if you are not currently doing so. The mark must still meet the same requirements as any other submission.
You will need to file an Intent to Use (ITU) application with the USPTO. You must also pay an additional fee when submitting. The ITU application gives you six months to use the trademark in commerce. You can file up to five extensions for a total of 36 months to use the mark in commerce. Each extension costs you additional fees, so it is best to apply when you are almost ready to proceed. You can view common Intent to Use application FAQs at the United States Patent and Trademark Office website.
Marks Not Eligible for Trademark Protection
The USPTO will refuse registration for trademarks which:
- Contain the U.S. flag
- Contain the name, likeness, or signature of living persons unless they give consent. However, deceased presidents' widows must give consent to use a president
- Contain government insignias
- May disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols
- Are too similar to existing trademarks registered with the USPTO
- Comprise immoral, deceptive, or scandalous matters. As a practical matter, the USPTO rarely refuses registration on these grounds. You should be aware that courts have upheld their power to do so
Trademark Application Process
The application for federal protection is relatively straightforward. Yet, it can take anywhere from a year to several years for application processing. This timeline depends on the type of trademark and how much research the examiner must do.
Q: Are There Special Initiatives or Programs for Trademark Registration?
Trademark filers can complete the application online or through the mail. The USPTO offers initiatives such as the TEAS Standard application process, a streamlined and cost-effective way to file trademark applications online. The Trademark Electronic Application System (TEAS) or TEAS PLUS are the internet application systems.
The USPTO partners with the Small Business Administration (SBA) to give inventors and small businesses access to educational resources.
Q: What Are the Trademark Fees Involved?
The trademark registration process has filing fees. Filing fee costs depend on two factors: (1) the number of classifications for your goods and services, and (2) the method you use to apply. Filing fees can change, so make sure you check before submitting your application.
Q: What Are the Types of Trademark Application Methods?
- Application filings by mail cost $750 per classification of goods or services.
- TEAS PLUS costs $250 and requires the applicant to submit more detailed information. This method is cheaper for trademark owners. It provides more complete information and examples of the trademark's use.
- TEAS costs $350 and has fewer onerous requirements.
The "minimum requirements" to submit via TEAS are:
- Name of the applicant
- Name and address
- Clear drawing of the mark (can be by hand)
- Listing of the goods and/or services on which the mark will be used
- Filing fee for at least one class of goods or services
The more detailed your application, the better. Other elements, such as a description of the mark or samples of how the mark is or will be used, may be included. Still, if you meet the "minimum requirements," your application can at least be processed. It will likely be delayed until you submit more information and not returned as "informal." Visit the USPTO's Trademark Electronic Application System for more information on TEAS and TEAS PLUS.
After Filing Your Application
Depending on the thoroughness of your application, you will have to wait months, sometimes close to a year, for a response. The USPTO website shows what time frame of applications they are processing in real-time. U.S. licensed attorneys in the Trademark Office review the application. These attorneys are examining attorneys. They will communicate with you about your application.
Q: Where Do You Go To Check the Status of Your Application?
A: Once you receive a filing receipt containing the serial number of your application, you can check on the status of your application on the USPTO site or by phone at 800-786-9199. You can check the status of trademark applications and registrations on the Trademark Status Document Retrieval (TSDR) database. TSDR is an online database maintained by the USPTO.
Q: Does Anyone Get a Chance to Object to My Trademark?
If your trademark passes each phase of scrutiny, the USPTO will publish your trademark as a candidate for registration. This gives existing trademark owners the chance to object to the registration. If no one objects, you should receive a response from the USPTO within a year. If another trademark owner does object, the USTPO will schedule a hearing to hear the dispute.
Q: What Is an Affidavit of Use?
Once you receive a notice that your trademark is registered, you must file an "Affidavit of Use." An affidavit of use is a statement with evidence that the trademark is being used in commerce. This must be completed between the fifth and sixth year after registration. You must also file another Affidavit of Use every ten years before the renewal period expires (between years nine and 10, 19 and 20, etc.).
Q: What Is the Trademark Trial and Appeal Board (TTAB)?
The Trademark Trial and Appeal Board is an administrative tribunal within the USPTO. An examining attorney at the USPTO reviews the trademark application to ensure it meets the trademark basics for legal requirements. If there any issues in the application, the examining attorney will issue an office action. If a dispute arises during the trademark application process or after registering the trademark, it will be resolved through the TTAB.
Q: What Are the Advantages of Federal Trademark Registration?
Business owners receive exclusive rights from having trademark protection. Federal protection is not required, and many businesses do not use federal registration. If your trademark is used in commerce, and you aren't infringing upon another trademark, the mark benefits from common law trademark protection.
But, there are several distinct advantages to federally registering your trademark. Advantages of federal registration include:
- Nationwide trademark protection (even if your mark is not in use nationwide)
- Use of the ® symbol to put people on notice and denote a certain level of quality
- The help of U.S. Customs to prevent potential infringing products from entering the United States
- Constructive notice of ownership of the mark. This means that under registration, anyone who uses the mark after you is expected to know that it is your trademark. They will be labeled "willful" infringers if they misuse it, and you will be able to collect damages and attorney's fees
- After five years, if no one contests your right to the mark, you can file for incontestable status. This means that no one can ever contest your right to use the mark
Constructive notice is a valuable advantage for your business as it protects you from others using a similar trademark as your business expands. If you started using your mark in commerce before another party in a different area, your federal registration overrides their common law rights, and they must stop using it. On the other hand, if the other party used the mark before you, they will be limited to their territory, and your federal registration covers the rest of the country.
State-Level Protection for Trademarks
Each state offers differing levels of trademark protection for businesses that operate in their state. Registering with that state is a good idea if your trademark only operates in one state. But, if there is any impact on interstate commerce as outlined above, it's better to seek federal protection. State registration doesn't offer the same protection as federal registration. If you register with the USPTO, you don't need to register with the state. This is because federal protection encompasses all state protections.
Get Legal Help From a Trademark Attorney
Find a trademark law attorney near you if you want to trademark your business name or service mark. See FindLaw's Trademarks section for more articles and resources about trademark rights.
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Contact a qualified business attorney to help you identify how to best protect your business' intellectual property.