Paul Horton: How to Register a Trademark with the USPTO

A registered trademark allows you to promote your brand and image with confidence, protected by force of federal law. The following information is intended to help you learn how to register a trademark. As you are probably aware, you can do these things on your own, but it is strongly reccomended that you speak with an intellectual property lawyer so things are done correctly that don’t cost you and your business thousands, if not millions of dollars in lost revenue due to infringements.

Qualifications for Trademark Protection

In order to register a trademark and receive federal protection through the U.S. Patent and Trademark Office (USPTO), a mark must be used in “interstate commerce.” In other words, the mark must be for a product or service that either does business in more than one state or affects commerce in more than one state. An example of a trademark affecting commerce in more than one state would be a gas station or motel that is located in one state only but services customers from other states. Offering services or products on the Internet also qualifies as affecting interstate commerce, as people in other states and countries can purchase the goods.

Affecting interstate commerce is the first requirement for federal registration. Trademark law’s primary objective is to prevent consumer confusion, so in addition to being used in commerce a trademark cannot be the same as, or too similar to, another trademark for a similar service or product. You should do a search for existing trademarks on the USPTO site as well as searching for the same or similar trademarks through other resources.

Additionally, your trademark cannot be prohibited (more below), generic (e.g., a “Bed” brand of beds would be considered generic because it describes the product itself rather than who manufactures it), or too descriptive (a step above generic, but still not distinctive enough to qualify for protection.)

Trademarks Not Currently Used for Interstate Commerce

You may still apply for federal registration if you have a bona fide intent to use the trademark in interstate commerce, even if you are not currently doing so. The mark must still meet the same requirements as any other submission, but you will need to file an intent to use (ITU) application, along with an additional fee, when submitting to the USPTO (see below for application process). The ITU gives you an 18 month window (extendable to 24 months) to begin using the trademark in commerce.

Marks Not Eligible for Trademark Protection

The USPTO will refuse registration for trademarks which:

Contain the U.S. flag
Contain the name, likeness or signature of living persons, unless they give consent (this protection is extended to deceased Presidents, whose widows must give consent)
Contain government insignias
May disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols
Are too similar to existing trademarks registered with the USPTO
Comprise immoral, deceptive, or scandalous matter (as a practical matter, the USPTO rarely refuses registration on these grounds, but you should be aware that courts have upheld their power to do so)

The Trademark Application Process

As a trademark lawyer in Utah, I think that the application for federal protection is fairly straightforward, though it can take anywhere from a year to several years to be processed (depending on the type of trademark and how much research the USPTO will be required to do).

First, you should confirm, to the best of your knowledge, that your trademark will not be rejected by the USPTO for the reasons outlined above.

To file your application, you may do so on the internet or by mail. For the internet application, go to the USPTO website and use the Trademark Electronic Application System (TEAS) or TEAS PLUS. TEAS costs $325 and has less onerous requirements. TEAS PLUS costs $275 and requires the applicant to submit more detailed information cheaper method for those trademark owners who have more complete information and examples of the trademark’s use. Applications by mail are also accepted and cost $375.

The “minimum requirements” to submit via TEAS are: 1) the name of the applicant; 2) a name and address for correspondence; 3) a clear drawing of the mark (can be by hand); 4) a listing of the goods and/or services on which the mark will be used; 5) a filing fee for at least one class of goods or services (there is assistance regarding this on the USPTO site).

Obviously, the more detailed your application, the better. Other elements such as a description of the mark, samples of how the mark is or will be used, etc., may be included, but if you meet the “minimum requirements” your application can at least be processed (though likely delayed until you submit more information) and not returned as “informal”.

Mandatory Steps After Filing Your Trademark Application

Depending on the thoroughness of your application, you will have to wait several months for a response. The application is reviewed by attorneys in the Trademark Office and they will communicate with you regarding your application. Once you receive a filing receipt containing the serial number of your application, you can check on the status of your application on the USPTO site or by phone at 800-786-9199.

Assuming your trademark passes each phase of scrutiny, the USPTO will publish your trademark as a candidate for registration. This gives existing trademark owners (most likely ones in your class of service or goods, or anyone with a similar mark) the chance to object to the registration. If no one objects, you should receive a response from the USPTO within a year. If another trademark owner does object, the USTPO will schedule a hearing to hear the dispute.

Once you receive a notice that your trademark is federally registered, you will have to file an “Affidavit of Use” (simply a statement with evidence that the trademark is being used in commerce) between the fifth and sixth year after registration. You will also have to file another Affidavit of Use every 10 years before the renewal period expires (between years nine and 10, 19 and 20, etc.).

Some Advantages of Getting Your Trademark Registered

Federal protection is not required and many businesses do not take advantage of federal registration. If your trademark is used in commerce, and you aren’t infringing upon another trademark by doing so, the mark enjoys common law trademark protection. However, there are several distinct advantages to federally registering your trademark.

Advantages of federal registration include:

Nationwide trademark protection (even if your mark is not in use nationwide)
Use of the ® symbol to put people on notice and denote a certain level of quality
Help of U.S. Customs to prevent potential infringing products from entering the United States
Constructive notice of ownership of the mark (this means that by virtue of registration, anyone who uses the mark after you is expected to know that it is your trademark, they will be labeled “willful” infringers if they misuse it, and you will be able to collect damages and attorney’s fees)
After five years, if no one contests your right to the mark, you can file for incontestable status, meaning that no one can ever contest your right to using the mark.

Constructive notice is a major advantage when your business expands and a defense against the expansion of another party’s similar trademark. If your use date (the date noted by the USPTO as the date you began using your mark in commerce) pre-dates another party’s use date in another geographic area, your federal registration trumps their common law rights and they must discontinue its use. Alternatively, if the other party’s use pre-dates your use date, the other party will be frozen to their territory and you will have the rest of the country by way of your federal registration.

For example, if your federally registered trademark is dated 2008 and you do business in New York, and another party begins using the trademark in Arizona in 2009, they must cease using the trademark and depending on the circumstances will be liable for damages and your attorney’s fees. If the dates of the above example were reversed, then the other party may continue using the trademark, but their use would be frozen to their current territory. You would be granted use in every other part of the country.

Utah State Protection for Trademarks

Each state offers differing levels of trademark protection for businesses which operate in their state. If your trademark only operates in one state, it’s a good idea to register with that state. If there is any impact on interstate commerce as outlined above, however, it’s a better idea to seek federal protection. State registration doesn’t offer the same protection as federal registration, and if you register with the USPTO, you don’t need to register with the state because federal protection encompasses all state protections.

Free Consultation with a Trademark Lawyer

If you are here, you probably have a trademark issue you need help with, call Ascent Law for your free intellectual property law consultation (801) 676-5506. We want to help you.