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.