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Basics of U.S. Federal Trademark Registration

Basics of U.S. Federal Trademark Registration

A trademark is a word, phrase, symbol or design, or combination of these that identifies and distinguishes the source of the goods or services from others. The selection of a good trademark can create wide consumer recognition of a product’s source and quality, which inevitably should increase a company’s reputation in the marketplace. With so much time and money invested in promoting a trademark, it is crucial that an owner protects its trademark, and one way of protecting a trademark is to obtain a federal registration. Before choosing a trademark or filing for a federal registration, there are a few things people should know about the process.

Are Trademark Searches Worth the Time and Trouble?

Applicants are not required to conduct searches for conflicting marks before filing a trademark application, but it is strongly recommended that a trademark search be done for a few reasons. First, if a clear conflict exists, trademark filing fees and attorney fees will not be wasted on filing an application which will obviously get refused due to a clear conflict.

Second, a trademark search will also help protect the company’s investment in labeling, packaging and branding a product. Many times a company will think of a trademark to identify its goods and services, and once it chooses a suitable trademark, it will begin the production and marketing phases of the brand product. After investing thousands and even millions of dollars on advertising, marketing, labeling and packaging, the company may then find out that the mark it has chosen is in conflict with an existing trademark. The likely scenarios resulting from this are to litigate the issue in court, to abandon use of the chosen trademark, or to negotiate some type of agreement not anticipated earlier which may significantly limit rights in the mark.

Lastly, although a trademark search cannot guarantee that a mark will be granted federal registration or that no lawsuits will be filed against the applicant, it does decrease the risk that the mark will be denied registration due to a conflict (based on a likelihood of confusion standard) with an existing trademark registration or that another trademark owner will oppose the registration. Thus, trademark searches help form educated decisions which can save tremendous time and money in the long run. Searches should be considered as investments and as insurance affording some sense of security. For more information on "Picking a Trademark", click here, and "Free Internet Trademark Searches, Learn How", click here, or please see the August 2001 Weaver & Amin e-Newsletter.

The Importance of Federal Registration

A federal registration is not necessary to establish trademark rights, but it does provide the trademark owner with certain benefits that non-registered mark owners do not have. For example, federally registered trademark owners are presumed to be the owner of the trademark on the specified goods and services listed on the registration, and they are, therefore, entitled to exclusive use of the mark throughout the United States. Federal registration is prima facie evidence of ownership of the mark and serves as constructive notice throughout the United States. In addition, federal registration gives the owner of the mark jurisdiction in U.S. federal courts in the event that a dispute arises regarding the federally registered mark. Trademarks that are not federally registered will typically have rights only in their limited areas of use and absent statutory requirements, the owner of the trademark may not avail themselves to the federal courts. Another benefit is that trademark owners in court proceedings tend to have a greater advantage than trademark owners without any federal registrations. The federal registration shows greater legitimacy in the rights of the trademark owner. Federal trademarks can also obtain Section 15 incontestability rights after 5 years of registration which significantly increases the strength of the trademark and reduces the number of defenses an infringer has to attack or weaken a federally registered trademark.

In addition to the above-mentioned benefits, federally registered trademarks can be protected forever. Unlike other types of intellectual property, such as copyrights or patents, federal trademarks can last indefinitely. The only requirement is that the owner continuously uses the trademark to identify its goods and services. A federal trademark registration is valid for 10 years. As long as the owner continues using the trademark, the registration can be renewed every 10 years, but the section 9 renewal application cannot be filed until at least six (6) months before the expiration of the registration.

One important thing to remember, though, is that although a registration is valid for 10 years, the trademark owner must file a Section 8 affidavit between the fifth and sixth year after the date of the initial registration. The Section 8 affidavit must include the following in order to keep the initial registration valid:

  1. A statement that the owner is still using the mark on or in connection with the goods and services listed on the registration.

  2. A specimen showing how the mark is currently being used with the goods or services (tags, labels, packaging); and

  3. The required filing fee.

It is important that the registrant remember to file the Section 8 affidavit because the PTO will not give any advance notice of the upcoming deadline. If the registrant fails or forgets to file this affidavit, the PTO will cancel the registration.

Who Can File Applications and What Type of Application Should Be Filed

Anyone living in the United States can file a federal trademark application, but certain guidelines must be followed. For example, the application must be filed on behalf of the owner of the trademark, which is usually an individual, a corporation, or some other business entity. The owner may submit its own application, or an attorney can submit the application as the owner’s representative.

Foreign applicants have a few more requirements to follow. Applicants not living in the United States must inform the PTO in writing of a domestic representative who resides in the U.S. and who is authorized to receive notices regarding the mark’s registration. This written notice must include the domestic representative’s name and address. Without a domestic representative, foreign applicants will not be able to file for a U.S. trademark registration.

Once a representative has been chosen, the next step is to determine which type of trademark application to file. There are essentially three different ways to file an application:

1. If a trademark is already used in commerce, the applicant may file a use-based application;

2. If a trademark is not currently used in commerce but the applicant has a bona fide intention to use the mark in commerce, then the applicant may file an intent-to-use application. If this type of application is filed, an applicant will have to later submit an amendment to allege use or a statement of use before the PTO will ultimately register the mark because only marks used in commerce are entitled to federal registration; or

3. Under certain international agreements, foreign applicants may file in the U.S. based on a foreign application or registration.

It is important to note that after a trademark is federally registered, the trademark can only be protected in the U.S. and its territories. If a trademark owner would like to obtain protection in other countries, the owner must follow the procedures in the countries in which it chooses to use the mark to obtain protection in those countries.

Final Comments on Trademarks and the Registration Process

Whether choosing to file for registration or after obtaining a registration, it is crucial to inform others that you are claiming rights in a trademark. The most common way to do this is to place the TM (trademark) or SM (service mark) designations next to the trademark or service mark. These designations can be used prior to obtaining a registration and regardless of whether you are trying to obtain a registration. After the mark has obtained federal registration, the symbol ® should be placed next to the trademark. Please note that this symbol can only be used if the trademark is federally registered with the PTO. State registered marks are not allowed to use this symbol. It should also be noted that if a trademark owner chooses to file for a registration, the mark in the drawing that must be submitted should not include the TM or SM designation because it is not considered part of the trademark.

For specific registration requirements and sample forms, please contact our firm or visit the Patent & Trademark office web site at and see the Trademark Electronic Application System (TEAS).

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