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Trademarks are logos, phrases, words, marks, designs, and other things that are placed on products, websites, advertising, etc., that identify a commercial source for goods or services. Current marketing lingo speaks in terms of “branding,” and, in essence, branding is all about trademarking. In turn, trademarking begins with getting the trademark registered either at the federal level or at the state level. Federal trademark registration is handled by the U.S. Trademark Office, which is part of the U.S. Patent and Trademark Office. State-level trademark registrations are most often handled by the relevant Secretary of State Business Services Division.
There are several broad legal requirements for registering a federal trademark. Similar legal requirements are necessary for registering a state-level trademark. For federal trademarks, the legal requirements are:
Use in interstate commerce — the key legal requirement of trademark registration is USE; failure to use a trademark will — eventually — make the trademark invalid and void the registration; use in interstate commerce — cross-state boundaries — is necessary for federal registration; use in intra-state commerce — within a state’s boundaries — is necessary for state-level registration.
Consistent use in commerce — trademarks are static in the sense that they cannot change (other than size); any significant change (like changing a color) makes the mark a DIFFERENT trademark, which requires a second registration.
Use with a lawful business — trademarks must be used with lawful goods or services; thus, no trademark can be registered associated with a business involved in illegal criminal activity; this issue has been important in the last few decades with respect to cannabis-related businesses since cannabis remains illegal under federal law but has been decriminalized by many states.
Must be unique — to be registered, a trademark must be unique; that is, a newly proposed trademark cannot be the same as or confusingly similar to a trademark already in use.
Must be associated with specified classes of products and/or services — there are about 45 main classes of goods and services and thousands of subcategories; registered trademarks must be associated — linked — to the proper subclass or multiple subclasses.
Must not violate statutory restrictions — U.S. trademark laws prohibit registration of certain categories of trademarks, including ones that are deceptive (such as claiming a false geographical origin for a product/service), use a person’s likeness without permission, use a national or state flag, etc.
Must function as a trademark — this generally means that a proposed trademark is inherently distinctive or has obtained secondary meaning so that consumers associate the trademark with the products and/or services.
Fees must be paid — various fees must be paid when applying for registration.
Registration status must be renewed — once registered, the registration status must be maintained and occasionally renewed; for federal trademarks, status must be renewed at about the five-year mark and then renewed every ten years thereafter; fees are required and various paperwork must be filed including an affidavit confirming continued use of the trademark in interstate commerce and relevant specimens of use must be provided
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
Filing a federal trademark application is the beginning of a process, not the end. After submission through the USPTO’s TEAS system, the application is assigned to an Examining Attorney at the Trademark Office. The Examining Attorney reviews the application for compliance with all legal requirements — distinctiveness, proper identification of goods and services, specimen of use adequacy, and conflicts with existing registrations — and typically issues an initial action within three to four months of filing. If the Examining Attorney identifies any substantive problems, they issue an Office Action, which is a written communication identifying the issues and giving the applicant three months to respond.
The most common grounds for Office Actions include: the mark is merely descriptive and the applicant has not provided evidence of acquired distinctiveness; the mark is confusingly similar to an existing registered mark; the identification of goods or services is too vague or broad; or the specimen of use is inadequate. Each of these issues can typically be resolved through a well-drafted response, but the response must be substantive and persuasive — a form response will not resolve a substantive objection. If the Examining Attorney is not persuaded by the response, a second Office Action is issued, and ultimately the applicant may need to appeal to the Trademark Trial and Appeal Board.
A significant percentage of trademark applications are rejected on grounds that the proposed mark is “merely descriptive” of the goods or services it identifies. Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1), bars registration of marks that “merely describe” a feature, quality, characteristic, or function of the associated goods or services. A business name like COLD AND CREAMY for ice cream, or FAST DELIVERY for a courier service, would be rejected as merely descriptive.
A descriptive mark can still be registered on the Principal Register if the applicant proves “acquired distinctiveness” — also called “secondary meaning” — meaning that through long and exclusive use in commerce, the mark has come to be associated in the minds of consumers specifically with the applicant’s products or services. Evidence of acquired distinctiveness includes: five or more years of substantially exclusive and continuous use; sales volume and advertising expenditure data; customer declarations or survey evidence; and media coverage in which the mark is treated as identifying the applicant’s specific brand rather than describing a product category generally.
Alternatively, a descriptive mark that has not yet acquired distinctiveness can be filed on the Supplemental Register — a less powerful form of registration that provides some legal benefits (most notably the ability to use the ® symbol and to assert the registration in opposition and cancellation proceedings) but does not create the same strong presumptions of validity and nationwide priority as a Principal Register registration. Supplemental Register marks can be moved to the Principal Register once acquired distinctiveness has been established through continued use.
The most common substantive ground for refusing registration is that the proposed mark is likely to be confused with a mark that is already registered. The Examining Attorney searches the USPTO’s database and applies a multi-factor analysis derived from In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) — the “DuPont factors” — to determine whether confusion is likely. The most important DuPont factors are the similarity of the marks in appearance, sound, and meaning; and the relatedness of the goods or services with which each mark is used.
A mark does not need to be identical to an existing registration to be refused on confusion grounds — it only needs to be “likely to cause confusion, mistake, or deception” among relevant consumers. Courts and the USPTO apply this test broadly, and applicants are sometimes surprised to receive a refusal based on a prior mark that they did not consider similar. Conducting a comprehensive trademark search — beyond just the USPTO database, including state registrations, common law uses, domain names, and trade publications — before investing in brand development is essential to avoiding this problem.
Federal trademark applicants must select a filing basis: use in commerce (Section 1(a)) or intent to use (Section 1(b)). A use-in-commerce application requires that the mark is currently being used in interstate commerce at the time of filing, and the applicant must provide a specimen showing actual use. An intent-to-use application requires only that the applicant has a bona fide intent to use the mark in commerce — not current use — and allows the applicant to secure a filing date (and thus priority) before commercial launch.
The strategic choice between these filing bases depends on timing. If a business has already launched and is using the mark in commerce, a use-in-commerce application is appropriate and straightforward. If a business is in development and wants to secure priority before a competitor can register the same or similar mark, an intent-to-use application provides that protection. The key constraint on intent-to-use applications is that the applicant must file a Statement of Use — demonstrating actual use in commerce — within the time period allowed by the USPTO (initially six months after approval, extendable to three years total). If use does not begin within that window, the application goes abandoned.
For businesses that sell in international markets, federal U.S. trademark registration is only the first step. Trademark rights are territorial — a U.S. registration provides no protection in Canada, Mexico, the EU, or any other jurisdiction. Businesses that need international protection have two primary options: individual country-by-country applications, or the Madrid Protocol system, which allows a single application to be used to designate protection in over 130 member countries. The Madrid Protocol application is filed through the USPTO and administered by the World Intellectual Property Organization (WIPO). It is generally more cost-effective than filing separately in multiple countries, but it has the disadvantage that if the base U.S. application is refused or invalidated within five years of the international registration date, all designations under the international registration are also affected.
Federal trademark registration is one of the most valuable and cost-effective legal protections available to a business — but only if the application is filed correctly and the registration is maintained. An improperly filed application can result in a loss of priority, a rejection that could have been avoided, or a registration in the wrong class that leaves key business activities unprotected. Contact the trademark attorneys at Revision Legal through the form on this page or call (855) 473-8474.
Registering a trademark is one of the smartest investments you can make as a business owner. A trademark protects your brand, gives you exclusive rights to use your mark in commerce, and provides significant legal advantages — including a presumption of ownership and the ability to bring infringement claims in federal court. But many business […]
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