Knowing the Trademark Registration Process
An applicant for a USPTO Trademark Registration must comply with all substantive and procedural requirements of the U.S. Trademark Act and U.S. Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity is not represented by an attorney.
The best source of detailed information (over 1500 pages) on obtaining a trademark with the USPTO is the USPTO Trademark Manual of Examination Procedure (TMEP). A separate manual covers the Identification of Goods and Services-
Steps to a Strong Trademark
Short Summary of Steps Leading up to Filing for Registration & Steps After Filing for Registration
(linked to other pages with more details)
Before Filing for Registration After Filing for Registration
→Verify INHERENT STRENGTH or Verify the potential trademark is a Strong Trademark(TM) rather than a Weak mark. “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).
What is involved with verifying a trademark for inherent strength?
→Searching federal, state, and common law marks to see if the potential trademark or parts of the potential trademark are being used by third parties. One of the goals of a Strong Trademark Registration is to reserve the exclusive use of the potential trademark which means verifying that the potential trademark is not already used by prior users (registered or unregistered).
Note: The USPTO does NOT determine the right to use a mark, only the right to register a trademark. The USPTO and the TTAB have no authority to determine the right to use, or the broader questions of infringement or unfair competition (TBMP §102.01), but only the right to register on the federal registers. However, the right to use a mark may be challenged by a prior user under the Lanham Act in an opposition to registration, a cancellation proceeding or in federal court. See Trademark Right To Use-
→Analyzing where the potential mark falls on a distinctiveness continuum. Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on how the trademark is used) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive are registrable on the USPTO Trademark Principal Register. Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness with Secondary Meaning (must be proven with evidence and generally at least 5 years of use). Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register and receive no common law protection as trademarks.
→Verify the RIGHT TO USE the potential trademark-
→Verify the RIGHT TO REGISTER the potential trademark-
→Verify the mark FUNCTIONS AS A MARK (indicates origin and distinguishes such goods/services from those manufactured and sold by others) in applicable specimens of the mark-
→Verify the registration ID of Goods and Services is both the correct and maximum claim that are user can make, verify that the Goods and Services ID meets USPTO ID requirements before filing and verify that the specimen of use meets “USE IN COMMERCE” requirements before filing a basis (i.e. Was the use a bona fide sale or transportation in commerce which may lawfully be regulated by Congress?). See How Do I Know What Filing Basis to Use? for more information.
There are two basic possibilities: No Objections-
If an Office Action is made by the USPTO, Applicants (or their representatives) must address each issue raised by the examining attorney and responses to office actions must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned. No response is the leading cause of abandoned applications.
Marks that have been approved for the Principal Register are published in the Trademark Official Gazette. An OPPOSITION is a proceeding in which one party is seeking to prevent registration of another party's trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, he/she can file an opposition. For more information, see TTAB Facts and Questions.
(A CANCELLATION is a proceeding in which a party seeks to cancel an existing registration of a mark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel. For more information, see TTAB Facts and Questions.)
→ Certificate of Registration (for actual use) or Notice of Allowance (intended use). If there is no opposition, the trademark will register and the applicant will receive a Certificate of Registration. If the filing was for an Intent-
The ® symbol can only be used (for the U.S.) after a USPTO registration has been issued and only for the goods or services for which it was registered.
A trademark owner must maintain a trademark by continuing to use the trademark in commerce and by filing for Continued Use or Excusable Nonuse and Renewal at the appropriate times. Two years of nonuse may be evidence of abandonment.
Recommended: Five years of continuous use after registration may qualify a mark for Incontestability by the filing of a §15 Declaration. An "incontestable" registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions.
Recommended Additional Steps
The USPTO does not enforce rights to a trademark. It is up to the owner of a mark to monitor and protect their own rights through civil or criminal means. A trademark owner may seek remedies against infringers in U.S. District Court (registered trademarks) or in state courts (for registered or unregistered trademarks for state or common law infringement or unfair competition). Registered or registering trademarks that may harm a user’s prior right may be opposed or cancelled. See Published for Opposition and Opposition Steps/Cancellation Steps.
Trademarks may be protected from imported counterfeits by recordation with the U.S. Customs and Border Protection (CBP), through working with the FBI and reporting counterfeiting, and by seeking enforcement through the International Trade Commission (ITC). See Anti-
Domain name registrants and trademark owners that have distinctive names or famous names should monitor use of their names by others on the internet and in other commercial use for infringement, counterfeiting or piracy. Remedies and injunctions are available for those who have trademarks on the Principal Register of the USPTO against those who violate U.S. Trademark Law. State remedies may be available to those who have unregistered trademarks or domain names.
Trademark registrants of a mark registered in the USPTO whose rights have been civilly infringed may be entitled to injunctions (stop the use of the infringing name, goods or services), the plaintiff may also be entitled to recover defendant’s profits, any damages sustained by the plaintiff (up to 3 times damages under some circumstances), and the costs of the action. The court in exceptional cases may award reasonable attorney fees to the prevailing party.
Violation of the Anticybersquatting Consumer Protection Act (domain names) may lead to a court taking action against the domain name registrant with the following consequences: forfeiture, cancellation, or transfer of a domain name to the owner of the mark and other remedies including injunctive relief, recovery of defendant's profits, actual damages, and costs, and statutory damages (in cybersquatting cases), in an amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.
Remedies for trademark owners who have been infringed through domain name registrations and use are also available through Domain Name Dispute Resolution at the World Intellectual Property Organization and other organizations. See http://wipo.int/amc/en/domains/ for more information.
Only trademarks that have been registered on the USPTO Trademark Principal Register or copyrights registered through the Library of Congress can be recorded and protected through U.S. Customs and Border Protection and through the International Trade Commission.
Different CBP rules apply for different types of importations with protection available for:
Counterfeit Trademarks (19 CFR § 133.21)-
Copying or Simulating Trademarks or Trade Names (19 CFR § 133.22)-
Restricted Gray Mark Articles (19 CFR § 133.23)-
Infringing copies or phonorecords (19 CFR § 133.42)-
For more information from Not Just Patents, see our other sites: