A trademark is something like words, phrases, logos, designs, marks, etc., that are placed on a product or used in advertising/marketing that identify your company as the commercial source of the goods or services. Trademarks are intangible property — that is, intellectual property. As property, trademarks are protected by statutory law and by Anglo-American common law. However, like other forms of property, trademarks are given and entitled to enhanced legal protections if the procedures are followed to register the trademarks.

In the United States, trademarks can be registered at the State level and at the federal level. In the U.S., registration of trademarks to provide enhanced legal protections began at the state level in the mid-1800s. Federal registration of trademarks did not truly begin until the early 1900s. In this century, most U.S. trademarks are registered at the federal level. However, some trademarks are still registered at the state level and, indeed, for some goods and services, like cannabis-related businesses, trademarks can only be registered at the state level. A trademark cannot be registered in association with an illegal product or service.

Trademarks used in international commerce at the global level are also protected by trademark law. However, there is no international body or organization that registers trademarks at the international level. Rather, trademarks used in international commerce must be registered in each country where the trademark is used. There are some international treaties that standardize and simplify cross-border registration of trademarks.

The enhanced legal protections provided by trademark registration include:

• Legal priority of use and ownership if your trademark is challenged by another company using the same or similar trademark
• The authorization to use the circle R symbol on your goods, packaging and marketing
• After five years (at the federal level), the trademark becomes “incontestable”
• Enhanced damages and statutory damages are available in trademark infringement litigation
• Easier proof of the elements of trademark infringement in trademark infringement litigation
• Additional causes of action become available for “famous” trademarks
• Registration provides per se proof of ownership of a trademark for various legal matters like contesting domain name ownership, issuing notices of infringement and online take-down demands, and obtaining action from the U.S. Border Control Services combating importation of counterfeit goods
• Nationwide constructive notice of your trademark (which often prevents an infringer from claiming an innocent or accidental infringement)

The process of obtaining a registered trademark involves completing and filing application forms and paying the designated governmental fees. At the federal level, trademarks are registered by the U.S. Patent and Trademark Office (“USPTO”). Generally, the first step is to conduct a trademark clearance search to ensure that your trademark satisfies the legal requirements and not already being used.

The next two steps involve a combination of using the trademark in interstate commerce and filing an application for registration with the USPTO. A trademark is not valid unless it is actually used in commerce; for federal trademark registration, commercial use must be in interstate commerce. If your company has already been using the trademark, then the USPTO application is for a traditional registration. The other option is to file an intent-to-use application for registration. If this is granted by the USPTO, then use of the new trademark must begin within a few months before the trademark will be deemed registered.

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.

The Registration Process: From Application to Certificate

The federal trademark registration process at the USPTO follows a defined sequence. After an application is filed under 15 U.S.C. § 1051, the USPTO assigns it a serial number and conducts an initial review for formalities. The application is then assigned to an examining attorney who reviews it for substantive compliance with the Lanham Act — including distinctiveness, likelihood of confusion with existing marks, and proper identification of goods and services.

If the examining attorney identifies problems, they issue an Office Action setting forth the grounds for refusal or requirements for amendment. The applicant has three months (extendable to six months upon payment of a fee) to respond. If the response overcomes the examining attorney’s objections, the application is approved for publication in the Official Gazette. After publication, there is a 30-day window during which any party who believes they would be damaged by the registration can file an opposition with the Trademark Trial and Appeal Board (TTAB).

If no opposition is filed — or any opposition is resolved in the applicant’s favor — the mark is registered and a Certificate of Registration is issued for use-based applications. The entire process typically takes 12–24 months from filing to registration, though contested applications take considerably longer.

The Principal Register vs. the Supplemental Register

Federal trademark registration can occur on either the Principal Register or the Supplemental Register. The Principal Register is the primary federal trademark register and provides the full suite of legal benefits — nationwide constructive notice, the presumption of validity and ownership, access to statutory damages and attorney fees in infringement litigation, and the path to incontestability after five years.

The Supplemental Register is available for marks that are not inherently distinctive — primarily descriptive marks — that have not yet acquired secondary meaning sufficient for the Principal Register. The Supplemental Register does not provide the constructive notice or presumption of validity benefits of the Principal Register. However, it does allow use of the registered trademark symbol and may be a step toward eventual Principal Register registration if the mark later acquires distinctiveness through use.

Using Your Registration: The Trademark Symbol and Its Legal Implications

Once a trademark is registered on the Principal Register, the owner is authorized — and should — use the registered trademark symbol in connection with the mark. Using this symbol on goods, packaging, and advertising serves as constructive notice of the registration. This notice has legal significance: a defendant in an infringement lawsuit cannot claim innocent infringement as a basis for reducing damages if the mark was properly marked. Conversely, using the registered trademark symbol on an unregistered mark constitutes fraud and can expose the user to legal liability.

For pending applications and unregistered marks, the TM symbol (for trademarks) and SM symbol (for service marks) can be used to signal trademark claim without implying federal registration. These symbols have no formal legal significance under the Lanham Act but serve as a public declaration of trademark rights and may deter potential infringers.

Whether you are considering filing your first trademark application or want to understand the implications of your existing registration, the trademark attorneys at Revision Legal are here to help. Contact us at 231-714-0100 or 855-473-8474.