Register A Trademark: Identification
A word, phrase, symbol, or design may not be registered as a trademark on its own. The trademark you wish to register must be identified with an exact type of goods or services. However, you are permitted to register your trademark with more than one good or service, and it may also be identified with goods and services together. How do you figure out if what you are selling to customers is either a good or service or both? Basically, products are goods, while activities are considered services.
You should be specific regarding what goods or services are represented by your registered trademark. The “scope of use,” as it is called by the United States Patent and Trademark Office (USPTO), legally protects you from other people without permission who may intend to use the same or a similar trademark for your type of goods or services. Only apply for goods or services that you already use or intend to use. Otherwise, your application may be denied.
Fanciful, Arbitrary, or Suggestive Trademarks
The USPTO recommends that a trademark be “fanciful, arbitrary, or suggestive,” to ensure its overall strength. Having a strong trademark provides you with better protection. It also improves your ability to defend your trademark in a court of law, if necessary. A fanciful trademark refers to invented words, which only mean something because they are connected to goods or services. Arbitrary trademarks are existing words that are not already connected to goods or services associated with the meaning of those words. Suggestive trademarks refer to words that suggest some aspect of the goods or services without blatantly describing them.
The USPTO considers weak trademarks unacceptable, specifically those that are”descriptive and generic.” Weak trademarks are not federally registrable. They are also difficult to defend from a legal standpoint. Descriptive trademarks describe the goods or services in an obvious way that allows customers to literally understand the type of goods or services. Meanwhile, generic trademarks are commonly used terms for goods or services, which are also not registrable.
Benefits of Trademark Registration
What are the benefits of federally registering a trademark? Our previous article, Trademark Lawyer, covered this at length. Below is a brief list of benefits of trademark registration:
- The trademark will be listed in the USPTO database of registered and pending marks. As such, if someone conducts a search for similar marks, they will see yours and know it is unavailable. The database includes the trademark, goods and services, date of application, and/or date of registration.
- Legally serves as proof that you are the owner of the trademark. This is especially beneficial in federal court, as it serves as satisfactory evidence of ownership.
- Allows you to file for trademark protection in other countries.
- Gives you the power to file a lawsuit in federal court.
- With registration comes the permission to use the federal ® symbol, which proves your registration. This is a deterrent to anyone who intends to use the mark.
- Trademark registration means you may register with the US Customs and Border Protection. In doing so, you can prevent goods being imported with a mark that infringes on your ownership.
Common Law Rights: Register A Trademark
Applicants should familiarize themselves with “common law” rights. The USPTO database only includes federal registrations and applications. Other marks may exist that are not federally registered, which give their owners rights based on the “use of the trademark in commerce within a particular geographic area,” per the USPTO. If the common law usage of a particular mark precedes your registration, the common law rights of the owner may have more strength in a legal context. As a result, make sure to conduct a very thorough search. Research online, comb through trademark and business name databases, and check out the Trademark Electronic Search System (TESS). This will allow you to inform yourself about similar existing trademarks of the same type as your goods or services.
The researching and registration process is very nuanced and complicated. It may be in your best interest to use a trademark lawyer. Please read our Intellectual Property article to understand exactly the type of trademark services our firm offers!
Cost and Timeline of Trademark Registration
As we noted in our previous Intellectual Property article, the cost of applying for a trademark is $250 or $350 for each class of goods or services. There are 45 classes available for registration. Your goods or services might require registration in more than one class. The USPTO offers two trademark application filing options. TEAS (Trademark Electronic Application System) Plus, which is $250 per class, and TEAS Standard, which is $350 per class.
With TEAS Plus, you are required to choose classes for your goods or services that are pre-approved by the USPTO. TEAS Standard does not require selection from a pre-approved list, which makes it better for custom goods or services categories.
The process of registering a trademark varies between 9 and 15 months, but may extend past that time frame. If the USPTO examining attorney communicates at length with the applicant, that will draw out the application process. The examining attorney is the individual who approves or denies the application.
If you register your trademark with the state, you only have rights in that state. On the other hand, federal trademark registration provides protection rights in the entire United States. The enforcement of your trademark, no matter if state or federal, is up to you. So, if there is an infringement, you are responsible to take legal action to remedy the issue. A federal trademark registration may be used as long as the trademark is used in commerce and supported with evidence. There are maintenance requirements, such as the filing of a maintenance document five years after the registration of a trademark.
Trademark Application Status
If you would like to view your application status, use the Trademark Status and Document Retrieval (TSDR) system. Visit the site, enter the serial number on your filing receipt, and check the status. You may also contact the Trademark Assistance Center at TrademarkAssistanceCenter@uspto.gov or 1-800-786-9199.
You will receive a serial number and an examining attorney after you submit your application. The USPTO examining attorney reviews your application by searching for any conflicts in the database, determining if the trademark has “any meaning in your particular industry,” goes over the identification of the goods or services, and assesses compliance with the filing basis requirements. The filing basis is the legal reason for your federal registration.
Filing Basis for Trademark Registration
The filing basis distinction is either “use in commerce” or “intent to use.” If you are filing on the basis of “use in commerce,” you must submit evidence in the form of a specimen that the trademark is being used. The date you first used the trademark, in commerce and anywhere, must also be provided. If you are filing on the basis of “intent to use,” you are claiming that you will use your trademark in commerce over the coming three to four years. You can apply for registration with “intent to use.”However, you must use the trademark in commerce in order to actually register the trademark.
The USPTO also requires that the applicant provide a “drawing.” This drawing conveys a visual of the trademark in “standard characters or special form.” The former is text only, while the latter has color, design, or a stylization. The drawing type impacts the level of protection you will obtain with registration. If your trademark is primarily related to wording, a standard character drawing will suffice. If your trademark is identifiable by way of stylization or design, special form may make more sense. Standard character trademark registration gives owners the largest amount of protection. For more information on drawings, visit the Drawing of Your Trademark page on the USPTO site.
USPTO Examining Attorneys
If there are no major concerns, the examining attorney will approve the publication of the trademark. If the trademark you submitted for registration is not registrable, the USPTO will send out an office action letter to offer an explanation of the refusal. You will then have an opportunity to fix the issues and respond back to the examining attorney, who may then approve the application.
If you fail to fix the issues with your trademark application, the USPTO will forward a final office action letter. Essentially, the final office action letter gives the reasons for the rejection of your application. After that, you can submit an appeal of that decision to the Trademark Trial and Appeal Board (TTAB).
The major reason the USPTO rejects applications is due to the fact that the trademark applied-for too closely resembles an existing registered trademark, which leads to a “likelihood of confusion.” Applicants can make many errors that lead to a rejection. The USPTO notes that non-fixable mistakes might lead applicants to start the process all over again. Be sure to correctly identify the trademark owner or the goods or services, and avoid using a trademark that is generic or a commonly used phrase.
The USPTO lists several fixable or possibly fixable mistakes, as well. These include that the trademark is descriptive, the trademark has someone else’s name or image in it without their permission, the trademark is only a last name, the specimen is insufficient, or the applicant attempted to expand the goods and/or services.
Stockman & Poropat, PLLC are THE Trademark Lawyers
Stockman & Poropat, PLLC can help you apply for a federal trademark registration. Our five step trademark application process is as follows:
- Our attorneys engage with you in a free initial consultation to understand your business needs.
- Our team launches a very thorough search of all non-registered, pending, and registered trademarks that are or may be similar to the mark you intend to register. This gives us a gauge of potential success.
- We meet with you to evaluate the results of our search report, identify possible concerns or conflicts, and create an actionable strategy.
- We draft and file the trademark registration application on your behalf.
- Our team closely watches the USPTO process, responds to any communications issued by the examining attorney, and develops further action plans if required.
Please visit our File My Trademark page if you are ready to proceed! As always, reach out to the team at Stockman & Poropat, PLLC today to speak with us regarding all matters related to intellectual property.
Up next we will be discussing Trademark Classes.
