Registering a Federal Trademark: An Overview

Registering a Trademark with the USPTO

Trademarks, patents, copyrights, and business name registrations are all different types of vehicles you can use to protect your intellectual property. This article focuses on trademarks, and provides a brief overview of the process of registering a federal trademark with the United States Patent & Trademark Office (the “USPTO”).

A trademark is a word, symbol, slogan, phrase, or design, or a combination thereof, that identifies specific goods or services as being from a particular source. In other words, a trademark lets consumers know that the trademark owner is the source of the goods or services covered by the mark, making those goods or services distinguishable from those available from other sources, such as competitors.

One key benefit of a registered trademark is that you can exclusively own and use it forever as long as you maintain it by filing the requisite renewal documents, and pay the associated fees, with the USPTO in years five and ten of your ownership, and then every ten years thereafter.

Trademark registration is not mandatory. An individual can establish “common law” rights in a mark based solely on the use of the mark in commerce. However, a registered trademark provides certain key advantages over common law protections, including the legal presumption of ownership nationwide, and, in case of infringement, the right to pursue statutory penalties and attorneys’ fees. In nearly all cases, registering your mark is highly recommended.

Step 1: Conduct a Trademark Name Search

After you’ve come up with a mark you’d like to use, the first step in the registration process is to conduct a search of existing marks in the USPTO trademark database. A proper search will reveal whether anyone has already registered the same, or a similar mark. Note that even if another party has already registered the mark, your inquiry doesn’t end there. That’s because each registration is tied to one or more classes of goods or services that the owner has included in the registration.

For example, let’s say that you are developing a line of custom skateboards that you wish to brand under the name Barracuda. In searching the USPTO database, you will find that Barracuda is already registered to an auto body shop who uses the mark in connection with their car detailing services. In all likelihood, the body shop’s pre-existing registration and use will NOT preclude you from registering Barracuda for your custom skateboard line. This is because auto painting and detail services are covered under a different class of services than your skateboard. As long as they cover different goods or services, the same mark can generally, but not always, be registered and used simultaneously by different owners.

You will also want to check to see if your State offers trademark registrations at the state level, and if so, do a search there as well to make sure the mark is not already being used within your State. A general internet search for your mark is also a good idea to sniff out any use by someone who, for whatever reason, has made clear use of the mark but has never registered it.

Step 2: File the Application

Once you are satisfied that your mark will not appear to infringe on anyone else’s rights, the next step is to actually complete and file a trademark application with the USPTO. This step can be confusing for the uninitiated. Some of the information required in the application is fairly simple, such as:

• The address and name of the mark’s owner;
• Identification of the mark; and
• The name of the authorized representative with whom the USPTO may communicate about the application.

Other aspects of the application, such as identification of the class or classes of goods or services within which the owner wants to register, and the basis for the filing (such as actual use in commerce vs. the intent to use in commerce) are less straightforward, and should really be done with the assistance of an experienced trademark attorney.

Of course, the application also includes payment of the USPTO’s filing fees, which are not refundable under any circumstances.

Step 3: Respond to Office Actions and Oppositions

If there are any problems with the trademark application after it is assigned to a USPTO examining attorney, the applicant will receive what is known as an Office Action letter. The letter will explain the issue with the trademark application and give the individual a certain amount of time to respond. The individual must respond within the deadline, or the trademark application will be deemed abandoned.

The Office Action letter often flags one or more minor issues, which, once resolved, permit the application to move on to the fourth step in the application process, Publication. Of course, the Office Action can also flag much bigger problems, such as the examining attorney’s determination that there is likelihood of confusion between your mark and another registered mark or pending registration application. Such determination can serve as the basis to your application. If you’ve made it that far, you might want to consult an attorney at that point to see if there is any way to salvage your trademark application.

Step 4: Publication in the Trademark Official Gazette

Once your application makes it past the examining attorney’s review, it will be published in the online Trademark Official Gazette, which serves as a 30-day period of public notice to all the world of your pending trademark application. This gives any potentially interested party the opportunity to oppose your application if they have grounds to do so. For example, if someone wants to register the Barracuda mark after seeing your application, and they can demonstrate that they have been using the Barracuda name to sell skateboards for many years, their opposition to you mark may be successful, and the mark could be granted to them.

As with many aspects of the trademark registration process, if you find yourself fighting another party’s opposition to your mark, you may want to consult an attorney to challenge the opposition and increase your chances of securing the mark.

The good news is that once you get passed the 30-day publication period, in short order the USPTO will issue either a Trademark Registration Certificate (for marks applied for based on actual use in commerce) or a Notice of Allowance (for marks applied for based on “intent to use” in commerce). In the latter case, the trademark has been approved, but will only be registered after the owner files a Statement of Use with a specimen demonstrating the owner’s actual use of the mark in commerce.

Once the trademark registration is complete, the owner may use the trademark symbol, ®, in connection with their use of the mark.

Schedule an Initial Consultation with Our Intellectual Property Attorneys

Our Intellectual Property attorneys provide trademark, patent, copyright, and trade secret analysis, counseling, registration, and maintenance services to a broad spectrum of corporate and individual clients, helping them develop and protect their Intellectual Property portfolio from conception through registration and ongoing maintenance. They are also well-versed in successfully prosecuting and defending infringement claims on behalf of our clients in both Federal and State court.

If you have any questions about trademarks or our Intellectual Property practice, please contact Alan S. Golub, Esq., who heads up our Intellectual Property and Litigation departments.