Trademark Reg­is­tra­tion

Trademark reg­is­tra­tion follows a very strict ap­pli­ca­tion process in the U.S., and is subject to clear legal guide­lines regarding trademark law and brand pro­tec­tion which define the re­quire­ments that must be fulfilled in order for a trademark ap­pli­ca­tion to be filed. The United States Patent and Trademark Office (USPTO) is the central authority re­spon­si­ble for trade­marks reg­is­tered in the United States. Trade­marks requiring pro­tec­tion in other countries must register with the au­thor­i­ties of each country in question, as U.S. trademark law does not extend to other nations. This article will list the steps for trademark reg­is­tra­tion, as well as the costs for brand ap­pli­ca­tion in the U.S.

U.S. trademark law has clearly defined what qualifies a product or service to be reg­is­tered as a trademark. Before con­sid­er­ing a trademark ap­pli­ca­tion, it is important to check that the object of the desired trademark fulfills the criteria of a protected trademark under the USPTO, as well as to determine whether it is in conflict with pre-existing brands – that is, brands which have already been reg­is­tered with the USPTO by a com­peti­tor.

What can be protected as a trademark?

Trade­marks are covered by the Lanham Trademark Act of 1946 and are defined in 15 U.S. Code §1127 as:

  “Any word, name, symbol, or device, or any com­bi­na­tion thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register es­tab­lished by this chapter,

to identify and dis­tin­guish his or her goods, including a unique product, from those man­u­fac­tured or sold by others and to indicate the source of the goods, even if that source is unknown.”

The Lanham Act also allows for the reg­is­tra­tion and pro­tec­tion of the following marks:

• Service mark: Marks following the same guide­lines as a trademark but pro­tect­ing an in­di­vid­ual’s services as opposed to goods or products

• Cer­ti­fi­ca­tion mark: Marks used to verify that a good or service was provided by members of a par­tic­u­lar union or or­ga­ni­za­tion

• Col­lec­tive mark: Trade­marks or service marks used to indicate mem­ber­ship in a union, as­so­ci­a­tion, or other or­ga­ni­za­tion

Trademark clas­si­fi­ca­tion is used to further determine the level of pro­tec­tion that a mark will receive. Trade­marks are clas­si­fied under the following four terms, listed in order of most to least pro­tec­tion:

• Fanciful: The strongest mark, fanciful trade­marks include terms which are created specif­i­cal­ly for trade­mark­ing purposes. A fanciful mark has no other meaning outside of the product or service that it describes, and the word used in the mark (e.g. Skittles) was not a real word prior to as­so­ci­a­tion. Words used in fanciful marks must bear no re­sem­blance to real words.

• Arbitrary: Common words or symbols with no relation to the product or service which take on a new meaning as a result of as­so­ci­a­tion are included under arbitrary marks. Examples of arbitrary trade­marks include brands such as Apple and Amazon.

• Sug­ges­tive: Trade­marks which describe a product or service in­di­rect­ly can be con­sid­ered sug­ges­tive marks. These can include product names such as Band-Aid or Google, but do not include any direct de­scrip­tions. Sug­ges­tive marks are the second weakest trademark.

• De­scrip­tive: The weakest mark, de­scrip­tive trade­marks require proof of a secondary meaning in order to be valid. The mark (e.g. American Airlines) must be shown to achieve a higher meaning through its use before being con­sid­ered for trademark reg­is­tra­tion.

Items not allowed to be trade­marked include content which is scan­dalous, immoral, deceptive, or dis­parag­ing, flags or emblems of other countries, the name, likeness, or signature of a person (without that person’s consent), any mark which resembles another trade or service mark, surnames, or any term deemed to be generic.

Trademark clas­si­fi­ca­tion also requires ap­pli­cants to declare a “basis” for filing, which can be for either ‘use in commerce’ or ‘intent to use.’ Marks which have already been com­mer­cial­ly used will fall under the first category, and all other marks that have not yet been used but will be used in the future are part of the ‘intent to use’ category.

The steps for trademark ap­pli­ca­tion and upkeep/renewal vary depending on trademark clas­si­fi­ca­tion and use. The process of verifying trademark reg­is­tra­tion goes as follows: Ap­pli­ca­tion, USPTO review, mark pub­li­ca­tion, reg­is­tra­tion cer­ti­fi­ca­tion, and reg­is­tra­tion renewal.

Ap­pli­ca­tion

All ap­pli­ca­tions must be sent through the Trademark Elec­tron­ic Ap­pli­ca­tion System (TEAS) and have as­so­ci­at­ed non-re­fund­able fees. The three cost options and their related re­quire­ments are outlined by the USPTO. Ap­pli­ca­tions can also be filed by mail, although the as­so­ci­at­ed fees are much higher. Following initial ap­pli­ca­tion, it’s important to monitor the ap­pli­ca­tion’s status through the Trademark Status and Document Retrieval (TSDR) system to avoid missing any deadlines. It is important to note that payment of ap­pli­ca­tion fees does not guarantee reg­is­tra­tion, and that rejected ap­pli­ca­tions will not have their fees refunded.

USPTO review

Ap­pli­ca­tions received by the USPTO will then be sent to an examining attorney to verify that they have met all of the minimum filing re­quire­ments and paid the ap­pro­pri­ate ap­pli­ca­tion fees. This process may take several months, as a complete review includes a full ex­am­i­na­tion as well as ver­i­fi­ca­tion that there are no con­flict­ing marks already reg­is­tered. In case of ap­pli­ca­tion rejection, the examining attorney will issue a letter (Office action) ex­plain­ing the reasons for refusal or any problems with the ap­pli­ca­tion. It is then up to the applicant to respond to the Office action in a timely fashion. Ap­pli­ca­tions left unan­swered six months after the mailing date of the Office action are declared abandoned.

Mark pub­li­ca­tion

Ap­pli­ca­tions which have passed the examining attorney will be published in the USPTO’s weekly pub­li­ca­tion, the “Official Gazette.” Notice and date of pub­li­ca­tion will be sent to the applicant, and potential opponents of the reg­is­tra­tion have thirty days to file their com­plaints. If op­po­si­tions are filed, they are dealt with by the Trademark Trial and Appeal Board (TTAB) in a manner similar to a federal pro­ceed­ing, but monitored by the USPTO.

Reg­is­tra­tion cer­ti­fi­ca­tion

Marks which have passed in­spec­tion by the USPTO examining attorney and received no op­po­si­tion (or un­suc­cess­ful op­po­si­tion) following pub­li­ca­tion, will be issued a cer­tifi­cate of reg­is­tra­tion. Marks for use in commerce, foreign reg­is­tra­tions, or the extension of pro­tec­tion of an in­ter­na­tion­al reg­is­tra­tion will have their cer­ti­fi­ca­tions issued im­me­di­ate­ly. Marks based on intent to use will have to prove use of the mark or request an extension following the receipt of a notice of allowance. Notice of allowance is issued by the USPTO around eight weeks after initial pub­li­ca­tion of a mark. Ap­pli­cants then have six months to either submit a statement of use (SOU), proving that they have used the mark in commerce, or to request a six month extension in order to file. More than one extension can be requested, but the process is limited, and ap­pli­cants must be careful to file on time to avoid their ap­pli­ca­tion being abandoned. Ap­pli­ca­tions can also be issued a final refusal by the examining attorney if all issues are not resolved. Ap­pli­ca­tions which have been abandoned or issued final refusals can either petition or appeal to the TTAB. Approval of the SOU is the final step in the ap­pli­ca­tion process, and ap­pli­ca­tions which receive approval will be issued a reg­is­tra­tion within two months.

Reg­is­tra­tion renewal

Reg­is­tra­tions which have received a cer­tifi­cate and filed the ap­pro­pri­ate main­te­nance documents are up for renewal every ten years and can be renewed in­def­i­nite­ly. Trademark law requires protected trade­marks to remain in use; marks that have not been used for three years lose their legal pro­tec­tion.

Trade­marks which have received federal reg­is­tra­tion now exercise the sole right to use content contained within that trademark. En­force­ment of trademark reg­is­tra­tion is the re­spon­si­bil­i­ty of the trademark holder, however. While the USPTO will not issue new federal reg­is­tra­tions to in­fring­ing marks, they will also not monitor possible in­fringe­ments. Violation of a trademark right can be brought to legal action by the trademark holder, and in­fringe­ment will be de­ter­mined by the courts. Trademark holders also reserve the right to sell their brands or grant rights to third parties.