Trademarks protect your brand identity.
- Who can get a trademark?
Only the owner of the trademark can file an application for registration. Owners can be an individual, corporation, partnership, LLC, or any other type of legal entity.
- What are the requirements to register my trademark with the U.S. Patent and Trademark Office (“USPTO”)?
To register your mark, it must:
- Be distinctive;
- Not legally conflict with any existing pending or registered marks;
- Be in actual use;
- Be used in interstate commerce, e.g. the sale of goods across state lines; and
- Not be scandalous, immoral or deceptive.
- Why should I register my trademark?
A trademark identifies and distinguishes your products or services from those sold by competitors. It allows consumers to recognize your product or service in the marketplace and associate it with a reputable source. Effective trademarks prevent consumers from being confused about what they are buying. They also build goodwill and value for you and your brand.
- What is a trademark?
A trademark is any word, name, symbol or device adopted by a manufacturer or merchant to identify its goods and distinguish them from those manufactured or sold by others.
- What is a servicemark?
A service mark is defined as any word, name, or symbol adopted by a service provider or merchant to identify its services and distinguish them from those provided by others. The term trademark is also commonly used to refer to service marks.
- What do trademarks protect?
- McDonald’s golden arches
- Apple’s silver apple with a bite taken from the left side
- Nike’s swoosh
- Nike’s “Just Do It”
- The iPhone and iPad boxes
- Product Shape
- The Coca-Cola bottle
- Décor or the layout of a store
- The layout of the Apple store
- The design of the McDonald’s restaurant
- Tiffany & Co.’s blue
- Owen-Corning’s pink for its fiberglass insulation
- The Intel jingle
- Internet domain names
- Do I have to register my trademark?
No. You do not need to register your trademark to use it. However, registering your trademark offers several advantages including:
- Constructive notice to the public of your ownership of the mark;
- Your trademark becomes incontestable after five years of continuous use;
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods and services listed in the registration;
- The ability to bring an action involving the mark in federal court;
- The use of the U.S registration as a basis to obtain registrations in foreign countries;
- The ability to prevent cybersquatters from using an identical or confusingly similar domain name; and
- The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
- How long does it take to get a trademark?
The typical rule of thumb is 12 – 24 months.
- How long does a registered trademark last?
A registered trademark has an initial term of 10 years. However, a trademark can be renewed for an unlimited number of consecutive 10-year periods, so long as the owner is still using the mark in interstate commerce. Thus, trademarks can essentially last forever.
- Where can I use my trademark?
Trademarks are only valid in the country that granted the trademark. This means a federal U.S. trademark is only valid in the U.S.. If you are filing for state trademark protection, a state trademark is only valid in the state in which it is registered. Your trademark attorney can help you decide which countries or states you should file for trademark protection in.
- What is a state trademark?
All 50 states have laws that allow for a trademark registration system, as well as laws that govern trademark disputes. A state registration system is useful when you are using your mark in only one state, and therefore, do not qualify for a federal trademark registration.A state trademark affords you very limited benefits only in the state where it is registered. The main benefit is that a registration shows when the applicant first claimed rights in the mark. Ask your trademark attorney if a state trademark might be the right option for your mark.
The Trademark Process:
How do I get a trademark?
The Federal Registration Process
A. Choosing a Mark
B. Trademark Search
C. Registering your Trademark
a. File a trademark application based on actual use
b. File a trademark application based on your Intent to use the mark in the future
E. Final Rejection, Allowance, or Abandonedment
F. Notice of Publication
A. Choosing a Mark
When choosing your trademark, you should choose one that is easy to pronounce, memorable, and legally available.
What makes the best trademarks?
- Short, made-up words (Xerox, Kodak, Pepsi);
- Distinctive Names (A Pea in the Pod, Trader Joe’s); or
- Marks that use arbitrary terms (Apple computers).
Names you should avoid include:
- Personal names;
- Marks using a geographic location;
- Names that resemble well-known marks;
- Words that describe your goods or services or generic terms; and
- Names that are immoral, deceptive or scandalous.
B. Trademark Search
What is a trademark search?
A trademark search is a hunt for any registered or unregistered trademarks or service marks that are:
- the same or similar to your mark;
- being used anywhere in the country; and
- being used on similar goods or services.
Before using your new trademark, you should have a trademark attorney conduct a trademark search to find any similar trademarks already in use. If you are not the first user of the trademark, you may have to change your mark. That is much easier and cost effective to do before you start using or attempt to register your trademark.
We recommend that you use an attorney who is experienced with conducting trademark searches. An attorney knows how to navigate the many databases used to search for trademarks making it more likely to find a conflict. An attorney also can best interpret the results, which are often confusing.
An attorney is looking for any similar marks that would cause customers to confuse your goods or services with a competitor’s goods or services. This is known as the “likelihood of customer confusion” standard. It is used to decide whether or not to register a trademark when multiple companies want to own the same or similar marks.
Can multiple companies own the same or similar marks?
Yes. Trademarks are specific to a particular good and/or service. Every type of good or service falls under one of 45 different classes of goods and services in the International Trademark Classification System. Trademarks are registered in specific classes and protection extends for goods or services in those classes only.
For example, if you were selling fine jewelry under the name LuvYaLots, you would register your trademark under Class 14, the class for jewelry. A toy manufacturer selling baby dolls may own a trademark registration for LuvYaLots under Class 28, the class for toys and sporting goods.
Could both businesses have a trademark registration for the same name?
Yes. If the USPTO determines that no customer confusion is likely, then they could issue LuvYaLots registrations to both companies.
How does the USPTO determine whether or not a customer would be confused?
Some factors to consider would be:
- The strength of the senior user’s mark (Is it well known or famous?);
- How similar are the marks in their sound, meaning and appearance?
- Are the marks associated with similar goods and services?
- Do the marks travel in the same channels of trade?
- Is there evidence of actual confusion?
- How sophisticated are the buyers?
Is the LuvYaLots doll “famous”? We do not know. The marks are the same, but jewelry and toys are not similar products. A person shopping for LuvYaLots jewelry probably would not think the toy company is now making fine jewelry and vice versa. This is the type of analysis your trademark attorney can assist you with.
Once the search results are reviewed, your attorney can give you an opinion on whether you should use your new mark and file for trademark protection, or not.
Where are trademark searches conducted?
- The federal trademark register
- Pending trademark applications
- State trademark registrations
- Industry and trade publications
- The Internet
C. Registering your Trademark
If you are ready to start the process of obtaining a U.S. trademark, you have two application options: the “actual use” application and the “intent-to-use” application.
a. File a trademark application based on actual use
Your attorney will ask for the following information to start the filing process:
- the date you first started using the mark anywhere;
- the date you first started using the mark in interstate commerce; and
- a specimen showing how the mark is actually being used.
Your attorney will help determine which classes of good and/or services your goods or service fall under. They will help you decide how many marks you may need to register. They will then prepare and submit the forms and specimens to the USPTO.
What can be used as a “specimen”?
Some examples of specimens for goods usually include labels, tags, containers, or packaging showing the mark. If the mark is directly imprinted on the good, you may submit an impression of the stamp or stencil on a piece of paper. In some cases, you may also submit a photograph of the mark. Some examples of specimens for services include a printout of your website, copies of advertising and marketing materials such as print advertisements, brochures, direct mail pieces, and even menus.
What constitutes “actual use”?
A trademark is deemed to be in use if it is being utilized in the marketplace to identify your goods or services. If you are selling goods, the mark should appear on a label or tag attached to the good. If you are providing services, the mark should appear in marketing materials advertising your services.
b. The intent-to-use application
If you have not started to use your mark, you can file an application based on the fact that you intend to use the mark within six months of the date the mark is approved for registration by the USPTO. By filing an intent-to-use application, the filing date serves as the date of first use once you actually use the mark and submit specimens of use to the USPTO. This first use date can be important if there is a conflict with another mark in the future.
Under this option, the application would follow the same examination process. However, before you can actually get a registration certificate, you will have to file an “Allegation of Use” any time prior to publication or any time after the USPTO issues a Notice of Allowance.
If you are still not using your mark six months after issuance of a Notice of Allowance, you can apply for a 6-month extension of time. You can file up to five more extensions (for a total of 36 months) so long as you can explain the delay.
The trademark examination process works as follows:
- A trademark examiner searches USPTO records for prior trademarks similar to the application.
- Depending on the search results, the examiner issues an Office Action, a document that may reject the application by showing prior trademark registrations that are the same or similar to your mark, or by showing deficiencies in the application itself.
- The applicant’s attorney responds to the Office Action presenting arguments for allowance or amending the application in some way. During prosecution, every Office Action is subject to very stringent deadlines. Failure to meet the imposed deadlines will cost extra money and may result in the abandonment of the trademark application.
- Once an agreement is reached with the examiner, the trademark application is allowed and published for opposition in the Trademark Official Gazette.
- If the examiner and the applicant cannot come to an agreement, the examiner will issue a Final Rejection. The applicant then has the option of filing an appeal of the examiner’s decision.
E. Final Rejection
In the event you received a Final Rejection, you can:
- Appeal to the Trademark Trial and Appeal Board;
- File a Petition to the Commissioner;
- Request further reconsideration;
- Abandon or suspend the application; or
- Amend the application to seek registration on the Supplemental Register.
The Principal Register and the Supplemental Register
The USPTO keeps two lists of all registered trademarks: the Principal Register and the Supplemental Register. Being placed on the Principal Register is important. Placement on this list provides a trademark with the most legal protection.
For a mark to qualify for registration on the Principal Register, it must meet all of the requirements for registering a trademark with the USPTO, including:
- No legal conflicts with any existing registered marks;
- Actual use;
- Sales in interstate commerce; and
- Not being scandalous, immoral or deceptive.
The other list is the Supplemental Register, and is an option for less-distinctive marks that don’t qualify for placement on the Principal Register. Marks on this list have less protection under the law. They also do not help much in trademark disputes until they have acquired distinctiveness after five years’ use.
There are, however, some benefits to having your mark placed on the Supplemental Register.
- Your mark will show up in trademark searches, and that alone can prevent someone from using your mark.
- You are allowed to use the ® symbol to notify the public that the mark is registered.
- If you continue to use your mark continuously for five years, you may apply to have your mark placed on the Principal Register because your mark would have acquired distinctiveness through continued use over time.
F. Notice of Publication
Before a trademark is registered, the USPTO publishes the trademark application in the Trademark Official Gazette. The purpose of doing this is to give the public the opportunity to object or oppose the trademark. Usually a third party will oppose a mark if they believe the proposed registration legally conflicts with their trademark. This opposition period lasts 30 days.
If there is no opposition to the applicant’s mark, the USPTO will register the mark on the Principal Register.
A Few Important Things to Know About Trademarks
- Using the symbols TM, SM, or ® with my trademark. You can use TM on goods associated with your trademark and SM on services associated with your service mark any time you claim rights in your mark (i.e. before filing; while the application is pending.) You may only use the federal registration symbol ® after the USPTO actually registers the mark, and only on the goods or services connected with the registration.
- Continuous Use. Between the fifth and sixth year after your mark is registered, you must file a Section 8 Declaration and/or a Section 15 Declaration, a specimen of use, and pay a government fee to keep your registration in force. The Section 8 Declaration advises the USPTO that you are still using the mark. The Section 15 Declaration tells the USPTO that your mark has been in continuous use, and you are requesting “incontestability status” for your mark. Incontestability status makes it harder for someone to challenge the validity of your mark on the basis that it lacks distinctiveness. This is strong protection for your mark during an infringement lawsuit. If a Section 8 Declaration is not filed, your registration will be cancelled.
- Renewal Application. Between the ninth and tenth year after your mark is registered, you will need to file a Renewal Application, a specimen of use, and pay a renewal fee with the USPTO in order to keep your registration in force.
- Use it or lose it. In order to keep your trademark registration in force, you must also show that you are using the mark. A mark that has not been used for three years or more may be found to have been abandoned.