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.
- Preparation for trademark registration
- Trademark searching
- Trademark registration acceptance
- Trademark law: Rights of successful registration
Preparation for trademark registration
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.
Prior to the application for registration of a trademark, a clearance search should be conducted using the USPTO database in order to determine whether any trademark rights have already been claimed in similar wording/design or used on related good/services.
Trademark searching can also help to reduce the likelihood of confusion for a prospective mark with existing marks. Likelihood of confusion is a common cause for trademark lawsuits, where the owner of one trademark alleges confusion about the origin, sponsorship, or approval of a product due to use of the trademark or a similar mark by someone else. In such cases, actual confusion does not have to be proven. Instead, courts consider the strength of the mark in question, as well as the similarity between the marks and the differences in the products or services offered. For example, similarity can be ruled out and the likelihood of confusion dismissed if the products or services are different enough from one another.
Trademark lawsuits also occur on the grounds of trademark dilution. Because trademark dilution lawsuits contend that another’s use of the mark or a similar mark blurs the distinction of or damages the existing mark, they depend largely on the fame of the existing mark. The Trademark Dilution Act of 1995 allows for:
- Fair use by a competitor in comparative ads
- Non-commercial use
- All forms of news reporting and commentary
Dilution law was further defined in 2006, and the burden of proof required was reduced from actual harm to likelihood of dilution. To reduce the risk of legal disputes, trademark research using the federal database comes highly recommended by the USPTO prior to trademark application. Hiring a trademark attorney is also something to consider to assist with the application process.
Trademark registration acceptance
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.
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.
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.
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.
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.
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.
Trademark law: Rights of successful registration
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.