This document is provided for informational purposes only. The contents of this document do not constitute legal advice.
What is a trademark?
A word, symbol or design, or a combination used to distinguish a product or service of one person or entity from those of others in the marketplace, and which identifies the source for buyers, e.g., MICHELIN® for tires.
Who can apply?
Companies, individuals, partnerships, associations
Why register a trademark?
Registration of a trademark is evidence of ownership in the U.S. and puts competitors on notice of your prior rights. Registration puts the burden on any challenger to prove its rights.
Registration is not required but is advisable:
- Third parties can search the U.S. Patent and Trademark Office (USPTO) register to avoid a conflict with your mark.
- The USPTO may refuse to register a “confusingly similar mark”.
- Federally registered trademark is enforceable anywhere in the U.S. A trademark registered in one state (but not federally registered) is enforceable only in that state.
- U.S. registered trademark is basis for claiming priority in foreign countries.
- U.S. trademark registration lasts 10 years and can be renewed for an unlimited number of 10-year terms. It is very difficult to contest a registered trademark after 5 years.
- Trademark registration supports the registration and protection of a similar domain name.
- Trademark registration increases the value of the mark as an intellectual property asset.
What is the registration process?
Search the USPTO, commercial databases and Internet to identify prior trademarks, pending applications.
Prepare and file application on USPTO Trademark Electronic Application System (TEAS, TEAS Plus).
USPTO attorney examines application.
Trademark published in USPTO Official Gazette.
Opposition – third parties often argue pending trademark creates “likelihood of customer confusion”.
Registration – issuance of trademark registration certificate if no opposition or opposition overcome.
Post-registration issues; e.g., 5-6 affidavit of use; 10th year renewal; apply for International Registration via USPTO pursuant to Madrid Protocol.
Does a registered business, trade name, domain name have the same legal right as a registered trademark?
No. A registered trademark will usually – but not always – prevail over these if there is any confusion about similar goods or services. In certain circumstances a domain name owner, as a first user, may prevail.
Which trademark has priority if two marks are confusing?
In general, the trademark that was used first in the U.S. irrespective of whether the mark was registered in the USPTO.
What trademarks are not eligible for registration?
- Marks which may be confused with existing trademark.
- Names, surnames unless famous as a result of extensive use, e.g. FORD® for automobiles, KELLOGG® for cereals.
- Words which are merely descriptive or generic.
- Prohibited marks such as the symbol of a state, country, e.g., flag.
Why perform a search?
To determine if another business is already using a trademark that is identical or similar to the one you want to use to avoid litigation and potential damages.
Must a trademark be used before an application can be filed?
No, if you have a bona fide “intent to use” the mark in interstate commerce but have not yet begun to use the mark, you can file and “Intent to Use” Application.
How long is the registration process?
10-18 months from filing to registration if no USPTO objection or third-party opposition and the mark is being used. Assuming you eventually obtain registration, your protection begins from the date of filing, not the date of issue.
How long is a registration valid?
Trademark registration is valid for 10 years, and renewable indefinitely as long as the mark is in use. An Affidavit of Use must be filed between the 5th and 6th year, and before the end of every 10th year term after the date of registration.
Does a U.S. registration protect the mark outside of the U.S.?
No. However, if you are a qualified owner of a trademark application pending before the USPTO, or the owner of a trademark registration issued by the USPTO, you may seek registration in any countries that have joined the “Madrid Protocol” by filing a single application with the International Bureau of the World Intellectual Property Organization (WIPO) through the USPTO.
What information is required to file an application via USPTO online TEAS?
1 Applicant Information
Name, address, contact information of the actual owner of the mark
Facsimile of mark. Standard characters for a name, or phrase trademark; jpg file format only for logo; non-visual marks such as audio files are allowed (various file formats accepted)
3 Designate Class
The USPTO-defined class of goods or services under which the mark falls. Each class contains many different business types. You must find one that precisely defines your business.
4 Declaration of Use of Mark in U.S.
State whether you are currently using the mark in commerce or intend to use the mark at a later date, and whether it is a foreign mark.
5 Official Correspondent
Designate person with whom USPTO will correspond. If you have counsel he/she will be designated.
6 Non-U.S. Applicants
Applicants outside U.S may designate a U.S. representative as their official correspondent