Overview of USPTO Trademark Applications
Types Of USPTO Trademark Applications
The United States Patent and Trademark Office (USPTO) offers several types of trademark applications to protect a brand’s unique logos, names, and symbols. The following list identifies the main types of federal trademark applications:
Additionally, for all types of trademarks and service marks, there are two types of trademark applications based on usage:
The USPTO also provides international application processes through the Madrid Protocol for businesses that wish to protect their trademarks in multiple countries.
Trademark/Service Mark Application For The Principal Register
The Trademark/Service Mark Application for the Principal Register is the most common type of trademark application filed with the USPTO. This type of trademark application is utilized for trademarks and service marks that are either currently in use or will be used in the future.
The purpose of this application is to place the trademark on the Principal Register, which offers the highest level of protection. Once a trademark is registered on the Principal Register, the trademark owner is presumed to be the exclusive owner of the trademark, and they have the exclusive right to use the trademark nationwide on or in connection with the goods or services listed in the registration.
This type of application requires that the trademark is distinctive, meaning it’s capable of identifying the source of a particular good or service. Trademarks that are merely descriptive may not be eligible for the Principal Register unless they’ve acquired secondary meaning.
Furthermore, there are two subcategories of this trademark application based on the usage of the trademark. The first is the “Use in Commerce” trademark application, which is used when the trademark is already being used in commerce on or in connection with all the goods/services listed in the application. The second is the “Intent to Use” (ITU) trademark application, which is used when the trademark is not yet in use, but the applicant has a bona fide intention to use the trademark in commerce on or in connection with all the goods/services listed in the application in the near future.
In essence, the Trademark/Service Mark Application for the Principal Register is a crucial tool for businesses seeking the most robust form of trademark protection available in the United States.
What Is the Principal Register?
The Principal Register is the primary and most desirable system of trademark registration under the USPTO. When a trademark is placed on the Principal Register, it means the trademark is distinctive and capable of identifying the source of a particular good or service.
Registering a trademark on the Principal Register provides the registrant with several benefits. First, it grants a legal presumption of the registrant’s ownership of the trademark and their exclusive right to use the trademark nationwide on or in connection with the goods or services listed in the registration. This is particularly valuable in legal disputes because the burden of proof lies on the party challenging the registration.
Second, registration on the Principal Register allows the registrant to use the federal registration symbol “®”, signifying to the public and competitors that the trademark is registered and protected at the federal level.
Third, a trademark registered on the Principal Register can become “incontestable” after five years of continuous use from the date of registration, assuming certain conditions are met. An incontestable status can provide a strong defense against legal challenges to the validity of the trademark.
Finally, registration on the Principal Register can serve as a basis for registering the trademark in foreign countries, and can be filed with U.S. Customs Service to prevent the importation of infringing foreign goods.
In contrast to the Principal Register, the USPTO also maintains the Supplemental Register, typically for marks that are not yet eligible for the Principal Register because they are merely descriptive or haven’t acquired secondary meaning. While the Supplemental Register offers some protections, they are not as extensive as those offered by the Principal Register.
In essence, the Principal Register is a powerful tool for businesses and individuals seeking to protect and enforce their trademark rights.
Trademark/Service Mark Application For The Supplemental Register
The Trademark/Service Mark Application for the Supplemental Register is a type of application filed with the USPTO. This trademark application is typically used for trademarks that are not yet eligible for registration on the Principal Register, often because they are considered merely descriptive of the goods or services they represent and haven’t yet acquired secondary meaning in the eyes of the consuming public.
Secondary meaning refers to a scenario where a trademark has become distinct through its continued use over time. In other words, even though the trademark is descriptive, consumers now recognize it as identifying a source of a product or service. If a trademark has not yet achieved this level of consumer recognition, it might not be eligible for the Principal Register, but could still be registered on the Supplemental Register.
While registration on the Supplemental Register does not confer as many benefits as registration on the Principal Register, it still provides some important advantages. For example, it allows the registrant to use the federal registration symbol “®”. It also provides the ability to bring a suit for infringement in federal court.
One key point to note is that registration on the Supplemental Register does not grant a presumption of exclusive right to use the trademark or presumption of ownership. However, it can serve as a basis to apply for registration in some foreign countries and can be a step toward achieving registration on the Principal Register.
In conclusion, while the Supplemental Register does not offer the same level of protection as the Principal Register, it can be a useful tool for trademarks that are not yet distinctive enough to qualify for registration on the Principal Register.
What Is The Supplemental Register?
The Supplemental Register is an alternate system of trademark registration maintained by the USPTO. It is generally used for trademarks that do not qualify for registration on the Principal Register because they are not distinctive, often being merely descriptive of the goods or services they represent.
Such a trademark might be eligible for the Supplemental Register if it is capable of distinguishing the applicant’s goods or services. Over time, as the trademark is used and consumers begin to associate it with a particular source, it can acquire secondary meaning, at which point it might become eligible for registration on the Principal Register.
Although the Supplemental Register does not provide the same level of protection as the Principal Register, it does confer several benefits. For instance, a trademark registered on the Supplemental Register is entitled to use the federal registration symbol “®”. It also enables the registrant to bring an action concerning the mark in federal court.
However, a mark on the Supplemental Register does not enjoy the presumptions of validity, ownership, and exclusive right to use that come with registration on the Principal Register. A trademark on the Supplemental Register is also not incontestable, a status that marks on the Principal Register can achieve after five years of continuous use.
Despite these limitations, registration on the Supplemental Register can be a valuable tool, especially for marks that are not yet eligible for the Principal Register. It can also serve as a basis for registering the mark in certain foreign countries.
Certification Mark Application
A Certification Mark Application with the USPTO is a specific type of trademark application that is used for trademarks which certify the regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone else’s goods or services. It can also certify that the work or labor on the goods or services was performed by members of a union or other organization.
This type of trademark is unique because the owner of the certification mark does not use the trademark on their own goods or services. Instead, they permit producers who meet certain standards to use the trademark as a way to signify to consumers that their goods or services meet certain criteria. For example, a certification trademark might be used to indicate that a product is organic, or that it was made using certain labor practices.
The purpose of a certification mark is to provide a level of assurance to consumers about the quality or other characteristics of a product or service. Therefore, the owner of a certification mark has a duty to ensure that the standards associated with the certification mark are being upheld by those who use the trademark.
In sum, a Certification Mark Application with the USPTO is a tool for organizations that wish to establish and manage standards in a particular industry or for certain goods or services. It allows such organizations to create a trademark that signifies to consumers that the products or services associated with the trademark meet the standards established by the organization.
Collective Membership Mark Application
A Collective Membership Mark Application filed with the USPTO is used for trademarks that signify membership in a collective group or organization. This could be an association, union, fraternity, or other organized collective body. Unlike other types of trademarks, a collective membership mark does not relate to commercial goods or services. Rather, it serves to inform the public about a person’s membership in a particular organization.
For instance, the mark could be a logo, emblem, or name that members use to indicate their association with the group. The collective organization itself controls the use of the collective membership trademark, and it is the organization that applies for and holds the registration of the trademark.
The members of the collective organization use the trademark to identify their association with the group, but they do not own the trademark. Instead, the organization is the owner of the trademark and it governs the use of the trademark by its members.
In essence, a Collective Membership Mark Application with the USPTO is a way for collective organizations to protect the trademarks that their members use to indicate membership. It provides legal protection against unauthorized use of the trademark by entities outside the organization, ensuring that the trademark continues to represent membership in that specific collective body.
Concurrent Use Application
A Concurrent Use Application filed with the USPTO is a specific type of trademark application used in cases where a trademark is already in use by others in geographically distinct areas and the applicant wishes to register the trademark for use in a different area. This trademark application is based on the principle that, in certain situations, more than one person can own rights to the same trademark for use in different geographical locations.
The applicant in a concurrent use application must specify the geographical area in which they have been using the trademark, and must also identify the other parties who are using the trademark in different areas. This requires a good understanding of the existing usage of the trademark to avoid trademark infringement claims.
It’s important to note that the USPTO does not automatically grant concurrent use registrations. The applicant must prove that confusion, mistake, or deception is unlikely to result from the simultaneous use of the trademark. This generally involves legal proceedings, often before the Trademark Trial and Appeal Board (TTAB), and we suggest contacting our trademark attorneys for assistance.
The process for a concurrent use application can be complex and lengthy. However, if successful, the result can be a federal registration that provides trademark protection in the specified geographic area, even though other entities may have rights to use the trademark in different locations.
Use in Commerce Application – Section 1(a)
A Use in Commerce trademark application under Section 1(a) of the Trademark Act, is employed when a trademark or service mark is already being used in commerce, that is, in the ordinary course of trade, within the United States.
For a trademark to qualify for this type of application, it must be used in a bona fide, legitimate commercial setting. This means the trademark should not be used merely to reserve rights in the trademark, but rather should be actively used in the selling or advertising of goods or services. This use must also be sufficiently public to allow consumers to identify and distinguish the goods or services as being sourced from a particular company or individual.
In the trademark application, the applicant must provide the date of the first use of the trademark anywhere and the date of the first use of the trademark in commerce. Also, the applicant needs to include a specimen showing use of the trademark in commerce. This could be a label, tag, or container for the goods, or a display associated with the goods, or it could be a sign, a brochure about the services, a website screenshot, or an advertisement showing the trademark used in the sale or advertising of the services.
If successful, the Use in Commerce trademark application under Section 1(a) of the Trademark Act allows the applicant to register their trademark on the Principal Register, which confers the strongest level of trademark protection, including the presumption of the registrant’s ownership of the trademark and the exclusive right to use the trademark nationwide on or in connection with the goods or services listed in the registration.
Intent to Use (ITU) Application – Section 1(b)
An Intent to Use (ITU) application under Section 1(b) of the Trademark Act is a type of trademark application filed with the USPTO when an individual or entity intends to use a trademark or service trademark in commerce in the future, but has not yet done so. This type of application allows applicants to establish an earlier effective filing date for their trademark, thereby potentially gaining priority over later applicants.
In an ITU application, the applicant must have a bona fide intention to use the trademark in commerce on or in connection with the goods or services listed in the application. This means that the applicant must have a good faith or genuine intention to use the trademark for commercial purposes.
While filing an ITU application reserves the right to use the trademark, it does not grant a registration on its own. Once the USPTO approves the application, the applicant will receive a Notice of Allowance, after which they have six (6) months to either use the trademark in commerce and submit a Statement of Use, or request a six-month extension.
The Statement of Use must include a verified statement that the trademark is in use in commerce, along with the date of first use of the trademark anywhere and the date of first use of the trademark in commerce. It must also include one specimen for each class showing use of the trademark in commerce.
If the applicant can demonstrate that the trademark is now in use in commerce, the USPTO will then register the trademark. This process allows the applicant to secure potential rights to a trademark before it is actually being used, which can be an important strategy in the development of new products or services.
Are You Looking For Trademark Assistance?
Protecting your brand is crucial in today’s competitive business environment. Your trademarks are more than just symbols or words; they represent your reputation, your quality, and your commitment to your customers. Ensuring these trademarks are secure and effectively managed is a complex process that requires specialized legal expertise.
Our team of experienced attorneys understands the intricacies of trademark law and is equipped to guide you through every step of the trademark process. From assessing the registrability of a trademark, filing an application with the USPTO, to enforcing your rights against infringers, we are prepared to provide comprehensive legal support tailored to your business needs.
But our services don’t stop at securing your trademarks. We believe in a proactive approach to intellectual property management. We offer ongoing monitoring services to help safeguard your brand from potential infringements and keep you informed of relevant developments in the marketplace.
Whether you’re a start-up looking to establish your first trademark or an established business dealing with complex trademark matters, our attorneys are committed to protecting your brand and supporting your business growth.
We encourage you to reach out to us today. Let’s discuss how we can help secure your business’s most valuable asset – your brand. Your trademark matters to us because your business matters to us. Trust us with your trademark needs, and together, we can build a stronger brand for your business.