Federal Trademark Registrations (USPTO)
First and foremost, before moving forward to register a trademark with the United States Patent & Trademark Office (USPTO), it’s very important to perform a comprehensive state and federal trademark search to ensure that your desired trademark is available and isn’t already in use by another person or business. The trademark search will help prevent potential conflicts or legal issues down the road.
Once the comprehensive trademark search is completed and the results are carefully analyzed to determine whether the trademark is available for use, the next step is to file a federal trademark application using the USPTO’s Trademark Electronic Application System (TEAS). The trademark application should include relevant details such as the owner’s name, a clear depiction of the trademark, and a description of the goods or services that the trademark will represent. If available, it’s also advisable to provide a specimen indicating the trademark’s use in commerce. Please note, unlike state (Illinois) trademark registrations that require the applicant to show use of the trademark in intrastate commerce, a USPTO trademark applicant may apply for a trademark before the trademark is actually used in the marketplace (e.g., Intent to Use trademark application).
Once the trademark application is filed, the USPTO reviews it, a process that can take around eight (8) months due to the volume of trademark applications they receive. If there are any issues with the trademark application, the USPTO examining attorney assigned to review the trademark application will send an office action detailing the legal problems. If an office action is issued by the USPTO examining attorney, the trademark applicant will have three (3) months to respond to all legal problems.
If the examining attorney approves the trademark application, it then gets published in the Trademark Official Gazette (TOG), a weekly online publication. There is a 30-day window in which anyone who believes that the applied-for trademark could harm their business can file a formal opposition to the trademark application with the Trademark Trial and Appeal Board (TTAB). If there’s no opposition, or if any opposition is unsuccessful, the USPTO will proceed to register the trademark. On average, the trademark registration process will take between 10-14 months.
Upon successful registration, the USPTO will issue a certificate of registration. Note that to maintain your trademark, you’ll need to file specific maintenance documents with the USPTO at regular intervals, specifically between the 5th and 6th year, between the 9th and 10th year, and every 10 years thereafter.
Keep in mind that trademark law can be complex and these steps might involve legal nuances, so it’s recommended to engage our attorneys to handle your trademark registration from start to finish.
Benefits of Federal Trademark Registration
Federal trademark registration provides several significant advantages. To start, it grants the registrant the exclusive right to use the registered trademark nationwide in connection with the goods and services identified in the registration. This can be particularly important in today’s e-commerce marketplace, where a business’s reach can easily extend across state lines.
Another benefit is that federal registration serves as constructive notice to the public of the registrant’s claim of ownership of the trademark. This can help deter others from using similar trademarks and also means that a defendant in a trademark infringement case cannot claim innocent infringement as a defense.
Federal registration allows the registrant to bring a lawsuit concerning the trademark in federal court. In certain cases, the registrant can also recover profits, damages and costs of the infringement lawsuit, and in some situations, treble damages.
With a federally registered trademark, the registrant can use the United States federal registration as a basis to obtain trademark registration in foreign countries, which can be a significant advantage if the registrant has plans to sell products or offer services internationally.
After five years of continuous use, a federally registered trademark can become “incontestable,” which provides an even higher level of protection. An incontestable trademark is conclusive evidence of the registrant’s exclusive right to use the trademark, making it much more difficult for others to challenge the registrant’s trademark.
Lastly, federal registration allows the registrant to record the U.S. trademark registration with the U.S. Customs and Border Protection. This agency can then use the registration to prevent importation of infringing foreign goods.
In summary, while it’s possible to establish state or common law rights in a trademark based on legitimate use of the trademark, owning a federal trademark registration provides several benefits that enhance and strengthen those rights. It’s a valuable asset for any business that is serious about protecting its brand.
Different Types of USPTO Trademark Applications
There are several types of trademark applications that may be filed with the USPTO:
The first type is the “Use in Commerce” application, also known as a “1(a)” application. This is used when the trademark is already being used in interstate commerce at the time of filing. The trademark applicant must provide the date of first use of the mark anywhere and the date of first use in commerce.
The second type is an “Intent to Use” trademark application, or a “1(b)” application. This is used when the applicant has a bona fide intention to use the trademark in commerce, but has not done so yet. Once the USPTO issues a Notice of Allowance for the trademark, the applicant has six months to either use the trademark in commerce and submit a Statement of Use, or request a six-month extension.
There is also the “Foreign Application” or “44(d)” application. This is used when the trademark applicant has already filed a trademark application in a foreign country within the last six months and wants to register the same mark in the United States.
Next is the “Foreign Registration” or “44(e)” application. This is for trademark applicants who have already registered their trademark in their country of origin and wish to register the same trademark in the United States.
Lastly, there is the “Section 66(a)” application, which is based on an international registration under the Madrid Protocol. The Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application.
Each of these application types has its own requirements and benefits, and the best one to use will depend on the specifics of the situation. It’s always a good idea to consult with a trademark attorney or expert to ensure the correct application is used.
Defining the Goods and Services in the Federal Trademark Application
The USPTO requires that any trademark application precisely define the goods and/or services that the trademark will represent. This requirement is crucial because the scope of protection granted to a registered trademark is limited to the specific goods and services listed in the application.
In defining the goods and services, the applicant must use clear, concise, and descriptive terms. This often means using commonly understood language rather than industry jargon or overly broad or vague terminology. The language should be specific enough to identify the nature of the goods and services, but not so detailed as to limit the scope of protection unnecessarily.
Furthermore, each good or service must be classified under one of the 45 international classes used by the USPTO. These classes range from Class 1 (Chemicals) to Class 45 (Legal and Security Services), and the application fee is determined per class. That means if an applicant’s goods or services fall into more than one class, they will not only need to ensure the trademark is available to use in each class but also pay the USPTO filing fee for each class.
In addition, the trademark applicant must provide a filing basis for each good or service listed. For goods, this could mean providing evidence of use in commerce, such as a photo of the product with the trademark visible on the packaging. For services, a brochure or advertisement showing the trademark used in the sale or advertising of the services could suffice.
The USPTO’s examining attorney will review the identified goods and services for acceptability. If the description is too vague or broad, the examining attorney will issue an office action requiring further clarification.
The process of correctly identifying and classifying goods and services can be complex, and errors can lead to delays or even refusal of the trademark application. It’s therefore recommended to seek our assistance to handle your trademark registration matter.