Trademarks are logos, designs, marks, phrases, or words that are used for commercial products and services. The purpose of a trademark is to identify in the minds of consumers the commercial source for the associated goods and services. For example, the Ford and Mercedes logos are placed on their respective vehicles to identify that these particular vehicles are manufactured by Ford or Mercedes. In terms of registration, trademarks can be registered at the federal level and the state level. This article will discuss federal trademark registration. If you have questions about trademark registration, call Revision Legal at 231-714-0100 or 855-473-8474. We are a Trademark Registration Law Firm.

There are some basic rules for when a trademark can be registered. These include:

• The trademark must function as a trademark — that is, it must be associated with one or more types of products or services and must be “connected” in the minds of consumers to those goods and/or services
• The trademark cannot have prohibited elements — examples include the use of a state or national flag, the use of a common word or symbol, the use of the likeness of a person who has not given permission for the use of their likeness, etc.
• The trademark must be used in commerce continually — failure to continue using a trademark will cause the trademark and the registration to lapse
• The trademark cannot already be used in commerce and cannot be confusingly similar to one already in use
• The registration application must be completed in full and the fees paid

At the federal level, one can apply for two types of trademark registration — an application for a currently-being-used trademark and an application for an intent-to-use trademark. The application process is similar for both, but no registration will be issued for an intent-to-use application until the applicant actually begins using the trademark in commerce.

At the federal level, trademarks are registered with the US Patent & Trademark Office (“USPTO”). The USPTO maintains two registers for trademarks — the Principal Register and the Supplemental Register. The first is for trademarks that are actually functioning as trademarks. Generally, these are trademarks that have been long-established or new trademarks that are unique and distinctive. Distinctiveness is a key aspect of a trademark, and, generally speaking, distinctiveness is what makes the “connection” in the minds of consumers between the product/service and the commercial provider of the product/service.

The Supplemental Register is for new trademarks that have not yet become distinctive. Legally, this is called acquiring distinctiveness or secondary meaning. For example, certain trademarks begin as descriptive trademarks. A descriptive trademark is one that simply describes the product or service. Descriptive trademarks are not considered distinctive (at least when first used). For example, the trademark AMERICAN AIRLINES is not a distinctive trademark. It is a descriptive trademark since it merely describes the services and where the business is located. But, over time, a descriptive trademark can acquire distinctiveness and/or secondary meaning and begin to function as a trademark. This is why AMERICAN AIRLINES is a registered trademark on the Principal Register.

In general, the USPTO says that a descriptive trademark will become distinctive after two years of continual use in commerce. So, a descriptive trademark will be placed on the Supplemental Register for at least two years until the owner of the trademark can demonstrate that the trademark has acquired distinctiveness.

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 Trademark Application Process: Step by Step

Filing a trademark application with the USPTO involves more than filling out a form. The process begins well before the application is submitted. A comprehensive clearance search is essential — it examines the USPTO’s trademark database, common law uses, state registrations, and internet usage to identify any marks that are the same or confusingly similar to the one you want to register. A mark that is confusingly similar to an already-registered mark will be refused, and an application filed without a clearance search is a gamble that often leads to wasted filing fees and delayed protection.

After the search, the application itself must be filed electronically using the USPTO’s Trademark Electronic Application System (TEAS). The application requires: a clear representation of the mark, a list of the goods and/or services with which the mark will be used, the applicable trademark class (or classes), and a specimen showing the mark being used in commerce. The USPTO filing fee is currently $250 per class for TEAS Plus applications and $350 per class for TEAS Standard applications.

What Happens After You File

After submission, the application is assigned to a USPTO examining attorney who reviews it for compliance with formality requirements and for substantive issues like likelihood of confusion with existing marks. This initial examination typically takes several months. If the examiner finds a problem — a potential conflict, a deficiency in the specimen, an unclear description of goods and services — they will issue an Office Action requiring the applicant to respond within three months (as of December 2022, the response period was shortened from six months under the Trademark Modernization Act).

If the examining attorney approves the mark, it is published in the USPTO’s Official Gazette for a 30-day opposition period. Any party who believes they would be damaged by registration of the mark can file an opposition with the Trademark Trial and Appeal Board (TTAB). If no opposition is filed — or if an opposition is resolved in the applicant’s favor — the mark proceeds to registration, at which point the USPTO issues a registration certificate.

Maintaining Your Federal Trademark Registration

Obtaining registration is not a one-time event. Federal trademark registrations require ongoing maintenance filings to remain valid. Between the fifth and sixth year after registration, the owner must file a Declaration of Use (Section 8 affidavit) showing the mark is still in use in commerce. At the ten-year mark, the owner must file a combined Section 8 Declaration of Use and Section 9 Renewal Application. Failure to file these documents on time will result in cancellation of the registration.

Registration owners can also apply for “incontestable” status after five years of continuous use following registration by filing a Section 15 Declaration. Incontestability significantly strengthens the mark’s legal standing — it limits the grounds on which third parties can challenge the registration and makes it harder for others to claim the mark is merely descriptive or lacks distinctiveness.

Federal vs. State Trademark Registration

Federal registration with the USPTO provides nationwide protection and is the gold standard for most businesses. It creates a legal presumption that the registrant has the exclusive right to use the mark nationwide in connection with the registered goods and services, constructive notice to all potential users, and the right to use the ® symbol. It also enables recordation with U.S. Customs to block the importation of infringing goods.

State trademark registration, by contrast, only provides protection within that state’s borders. State registration can be useful for businesses that operate exclusively within a single state, but it provides no protection against a subsequent federal registrant who begins using a similar mark in other states and then expands. For any business with plans to grow, federal registration is the appropriate choice. An experienced trademark attorney can help you evaluate which type of registration — or both — makes sense for your business.