Trademark Registration Overview

USPTO Trademark Registrations

Trademarks may be registered in the United States under federal and state law.  Federal trademark registration provides a number of significant advantages over state trademark registrations and unregistered common law trademarks.

The Lanham Act (or Trademark Act) is the primary federal trademark statute of law in the United States.  The Lanham Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.  Under the Lanham Act, “trademark” is defined as a designation used to identify and distinguish the source of products and/or services of a person or business.

Many people assume that registration is as simple as filling out a form. But it actually involves thorough examination of your application by a USPTO trademark examining attorney. If you are an entrepreneur, business owner, inventor or online seller seeking to register a federal trademark, the following discussion will provide some helpful information about federal trademark registrations.

It’s important to note that many people mistakenly assume they can only apply to register one trademark, but you can apply to register many different versions of the same trademark. It all depends on what your mark looks like, how you use it, and how many applications you want to submit. You can file as many trademark applications as you want, but remember that each version of the trademark requires a separate application. You can’t register different versions of the same trademark in one application. The following four types of trademarks are eligible for federal registration with the United States Patent & Trademark Office (USPTO): Trademarks, Service Marks, Collective Marks, and Certification Marks. Each of these four types of trademarks must meet the following criteria in order to qualify for registration with the USPTO:

  • A trademark to be registered with the USPTO must serve as a trademark to identify and distinguish the source of the products and/or services.
  • The federal trademark must have been lawfully used in commerce (meaning interstate trade in the US, between the US and a foreign country, and/or between a territory of the US, such as Guam, Puerto Rico, American Samoa, or the US Virgin Islands).
  • The federal trademark must have been affixed or attached to the products or displays associated with the products.
  • The federal trademark must have been actually used in the sale or advertising of the services.
  • The federal trademark applicant must present certain facts in a verified written application to the USPTO, along with the appropriate filing fee.

Benefits of Federal Trademark Registration

Registration of a federal trademark with the USPTO confers several legal benefits over state trademark registrations and unregistered common law trademarks. Among these benefits are:

  • Federal jurisdiction for trademark infringement without the necessity of any required amount in controversy;
  • In federal court, profits, damages and costs are recoverable and treble damages and attorney’s fees are available;
  • A federal trademark registration is actual evidence of the validity of the registered trademark, of the registration of the trademark, of the registrant’s ownership of the trademark, and of the registrant’s exclusive right to use the registered trademark;
  • A federal trademark registration may become “incontestable” as conclusive evidence of the registrant’s exclusive right to use the trademark, subject to certain statutory defenses;
  • A federal trademark registration provides the registrant with a constructive use date, nationwide in effects, as of the filing date of the application; and
  • A federal trademark registration may be used to stop the importation into the United States of articles bearing an infringing trademark.

Advantages of Federal Trademark Registration

Nationwide Priority

Nationwide priority is generally the most important advantage to seeking a federal trademark registration on the principal register.  Nationwide priority affords a registered trademark owner certain protections throughout the United States.  Without a federal trademark registration, a trademark owner may be limited to only being able to enforce its mark in a certain geographic area.

For example, if a business owner begins using a trademark in San Diego, California for “Inspired Apparel” in connection with clothing and a business owner in Rockaway Beach, New York subsequently uses a similar trademark for “Inspiration Sandals” in connection with footwear sold nationwide through various ecommerce platforms (Amazon, Walmart, Ebay, Etsy, etc…) and registers its trademark with the USPTO, the prior user, “Inspired Apparel,” may be prevented from expanding its branded clothing store to new jurisdictions and geographic areas.  The reason why the prior user would be prevented from expanding to new locations (or even selling nationwide through online platforms) is because the subsequent user now holds nationwide priority in the similar “Inspiration Sandals” trademark.  Thus, holding nationwide priority in a trademark is a valuable asset for any business owner launching a new product or service in the national marketplace.

Incontestability of a Trademark

A declaration of incontestability may be submitted by a federal trademark owner at any time beginning five years after the registration date.  A claim of incontestability is available when:

  • There has been no final decision adverse to the trademark owner’s claim of ownership or right to register the mark;
  • There is no such proceeding pending;
  • It is within one year of any five-year period of continuous and consecutive use subsequent to the date of registration; and
  • The trademark has not become generic.

Incontestability protects a trademark owner from certain challenges to the validity of a trademark, notably challenges based on descriptiveness. Claiming incontestability is a tremendous benefit when putting potential infringers on notice through a cease and desist letter, or other demand letter, stating that the trademark registration is active, valid, in full force and effect, and incontestable.

Trademark Infringement in Federal Court and Damages

The district courts of the United States have proper jurisdiction to hear cases involving all federally registered trademarks. If a trademark owner does not hold a federal trademark registration, it is more difficult to get its case in front of the federal courts if trademark infringement is identified.  Further, federal trademark owners may have the ability to recover statutory trademark damages.  For example, it may be possible for a trademark owner to recover damages up to three times the amount of actual damages in a trademark infringement case.  Additionally, the trademark owner may recover attorneys’ fees to enforce the trademark infringement action in the federal courts.

Types of Federal Trademark Applications

A business or individual may file an application based on an “intent to use” the trademark in interstate commerce, or based on “actual use” in interstate commerce. An application based on actual use means that the trademark is currently being used in interstate commerce. An intent to use application must be based on a “bona fide” intention to use the trademark in commerce in the future. This allows a business or individual to establish some trademark rights before actual use of the trademark has begun.

The majority of entrepreneurs and business owners that contact our law firm for federal trademark registration services have not yet used the selected trademark in commerce.  This is generally due to two reasons:  First, the business or individual wanted to conduct a comprehensive trademark search and clearance to ensure the trademark selected was available for use.  Second, once the trademark was determined to be available for use, the business or individual needed time to research and develop the product and/or service before going public in marketplace. For those reasons, the following discussion provides a little more depth on intent to use trademark applications.

Intent to Use Application Process

Do you know you can apply to register your trademark with the USPTO, even if you’re not using it yet, but intend to do so? Federal law allows you to apply to register your trademark, even if you’re not yet using it at all or using it across state lines, as long as you intend to start using it within three to four years. In this situation, the appropriate USPTO trademark application to prepare is called an “Intent to Use” trademark application. Many businesses choose this option because it creates an early filing date, putting them in front of any competitors that may later file to register a confusingly similar mark.

As briefly noted above, the Lanham Act (Section 1(b)) permits a business or individual to file a federal trademark application if such business or individual has a bona fide intent to use the trademark on a product and/or services in the near future.  The federal trademark registration will not be granted, however, until the business or individual files a verified statement, together with evidence showing that the trademark is in use in commerce.  This is accomplished by filing a Statement of Use after the USPTO examining attorney issues a Notice of Allowance.  Once the Notice of Allowance is issued, the business or individual will have a maximum of 36 months from the date of the Notice of Allowance within which to file a Statement of Use.  A 6 month period from the date of the Notice of Allowance is available to all federal trademark applicants.  An additional 6 month period is only available upon request to the USPTO and payment of a fee together with a verified statement of continued bona fide intention to use the trademark in commerce.  Thereafter, four additional 6 month extensions may be obtained upon a sufficient showing of “good cause,” together with a fee and a verified statement of continued bona fide intention to use the trademark in commerce.

Important Note: Using the TM or SM symbol with the trademark for your product or service prior to the USPTO issuing an official trademark registration is an effective way to let consumers and competitors know you’re claiming exclusive rights in trademark. Although TM stands for “trademark” (promoting products) and SM stands for “service mark” (promoting services), many people simply use the TM symbol next to their mark regardless of whether the trademark is promoting products or services. Just remember you can only use the ® symbol after the USPTO officially issues your federal registration.

FIRST STAGE OF REVIEW

An intent to use trademark application proceeds in two stages.  First, if the USPTO trademark examining attorney determines that the application meets all formalities of registration, he or she will pass the trademark to be published in the Trademark Official Gazette.  Trademarks that are published in the Trademark Official Gazette put the world on notice of the applicant’s intent to claim exclusive rights in the trademark upon registration.  Once the trademark is published, any party who believes it will be damaged by the registration of the trademark will have 30 days to file a formal opposition to registration.  If the trademark is not opposed, the USPTO examining attorney will issue a Notice of Allowance, which will start the clock for the applicant to submit a Statement of Use as described above.

SECOND STAGE OF REVIEW

Second, when the applicant submits the Statement of Use to the USPTO, together with evidence showing the trademark in use in commerce, the examining attorney will review the statement and evidence submitted to ensure the trademark covers the products and/or services listed in the application.  Once the USPTO examining attorney approves the Statement of Use, the applications will then proceed to registration.  Generally it will take between 12-16 months to register an intent to use application; however, upon registration, the trademark will receive full trademark rights from the date of first use in commerce.

Defining the Products and Services in the Application

Whether submitting an “intent to use” or an “actual use” trademark application, it is critically important to select the appropriate international classification, or trademark class, and accurately describe the products and/or services. The identification of products and/or services should be brief, clear and concise.  It is prohibited (and may be considered fraudulent) to include in any product and/or service in the description that is not actually offered or sold in commerce.  For example, if a business sells only “socks” in class 25, you would not want to include t-shirts, pants, shorts, hoodies, jackets, headwear and footwear in the description.  The applicant should only identify the products and/or services by their common, ordinary name so that the average consumer would recognize what they are.

The identification of products and/or services is important since registration is evidence that the business or individual is using the trademark on the products and/or services specified in the registration.  The description of products and/or services must not be too vague.  Upon review of the federal trademark application, the USPTO examining attorney will demand specificity of the products and/or services in order to avoid issuing a registration that may cover products and/or services that are not actually being used in commerce.  In this scenario, a subsequent applicant may be erroneously denied registration because a registrant’s description is too broad.  It should be noted that an owner of a registered trademark is not necessarily limited to the products and/or services specified in the federal trademark registration, but extend to any products and/or services on which use of the trademark is likely to cause consumer confusion.

Broad versus Specific Descriptions

In drafting the identification of products and/or services, the trademark applicant needs to be careful between being too vague and being too specific.  Generally, it is usually appropriate for the applicant to use broad terminology rather than an overly detailed “laundry-list” of many specific products and/or services.  However, the trademark applicant should keep in mind that as long using broad terminology to identify the products and/or services with reasonable certainty, it will be reasonable from a commercial viewpoint to consider that the trademark has been used for all related products and/or services that fall in the designated group. Finally, as mentioned above, at some point prior to registration, the applicant (through its attorneys) must assert under oath that the trademark is in use on ALL of the products and/or services listed in the description.  If the statement that is submitted under oath is false, there may be fraud, resulting in cancellation of the entire registration for ALL the products and/or services listed.  Note also, the products and/or services identified in the trademark application must match the evidence submitted to the USPTO examining attorney via the Statement of Use.  If the evidence does not match the products and/or services, the USPTO examining attorney will issue an Office Action refusing to register the trademark.

Common Reasons Trademarks Are Refused Registration

Not every word, symbol, phrase or design can be federally registered as a trademark. When selecting a trademark, consider the following that cannot be registered as a trademark with the USPTO:

  • If an applied-for mark would create a likelihood of confusion with a pending or registered trademark.
  • If a trademark is deemed merely descriptive, or deceptively misdescriptive of the products and/or services.
  • If a trademark is immoral, deceptive, or scandalous.
  • If a trademark is disparaging.
  • If a trademark is primarily geographically descriptive or primarily geographically deceptively misdescriptive.
  • If a trademark is primarily merely a surname.
  • If an applied-for mark is merely a decorative feature of the products. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant’s products from those of others.
  • If a trademark falsely suggests connection with persons, institutions, beliefs or national symbols.
  • If a trademark comprises a flag, coat of arms, or insignia of the US, a state, a municipality or a foreign nation.

State Trademark Registrations

State trademark registrations can only protect your trademark in that state alone. Whereas, a federally registered trademark allows you the benefit of protecting your trademark nationwide. State trademark registration must also be based on “actual use” – states do not offer “intent to use” applications.  Thus, to enjoy the maximum protections under the law, the best option is to register your trademark with the United States Patent and Trademark Office.

Unregistered Common Law Trademarks

Common law trademarks are those that have not been registered under federal or state trademark law, but for whatever reason, the trademark owner decided not to officially prosecute and register its trademark. Despite the failure to register the trademark, under common law, a trademark owner may develop certain enforceable rights in a limited geographic area in which the trademark is used and/or advertised. However, because the trademark owner does not hold a federal or state trademark registration, the trademark is not entitled to the legal presumption of validity and enforceability enjoyed by registered trademark owners. As a result, common law trademarks are often very difficult to enforce.