By Richard Stim, Attorney
You can file your trademark application online at the U.S. Patent and Trademark Office (USPTO) website by using either: (1) the Trademark Electronic Application System (TEAS) at a cost of $325 per trademark class (2018 figure); or (2) an abbreviated application system known as TEAS PLUS at a cost of $275 per class (2018 figure). (You can also mail in a paper application form at a cost of $375 per class.)
For most trademark applicants, registration is a relatively straightforward process. When completing the application, you need to:
In addition, your application must be accompanied by:
For more information on filing a trademark application on your own, see Nolo's Trademark Books.
Note that not every trademark you might desire will be approved. The USPTO will not register any marks that contain:
Nor will the USPTO register marks that are judged immoral, deceptive, or scandalous. As a general rule, however, the USPTO takes a liberal view of the terms "immoral" and "scandalous" and will rarely refuse to register a mark on those grounds. However, curse words or racial slurs are likely to be rejected in many cases, or at least met with a challenge.
In addition, the USPTO will not register marks that are used in only one state; a trademark must be used to offer good or services for sale in more than one state to qualify for federal trademark protection.
The USPTO publishes the trademark in the Official Gazette (an online publication of the USPTO). The Gazette states that the trademark is a candidate for registration; this provides existing trademark owners with an opportunity to object to the registration.
If someone objects, the USPTO will schedule a hearing to resolve the dispute. If no one objects, you should receive a response from the USPTO within a year. The total time for an application to be processed may range from a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. (If another business challenges your application, for example, this will greatly extend the timeline).
In order to maintain the status of a federally registered trademark, the owner must file a statement of continued use and later, a renewal application. The owner acquires additional rights if a statement of incontestability is filed. All of these documents can be filed online. The USPTO does not notify the trademark owner when these statements are due, and if these documents are not timely filed, the federal registration is canceled.
First, there are two registers maintained by the USPTO: the Principal Register and the Supplemental Register. Registration of a mark on the Principal Register conveys the important substantive rights that most people associate with federal registration and, as a result, it is the preferred method of federal trademark protection.
Probably the most important benefit of placing a mark on the Principal Register is that anybody who later initiates use of the same or a confusingly similar trademark may be presumed by the courts to be a "willful infringer" and therefore liable for large money damages.
Registration on the Supplemental Register does not convey the bundle of rights and protections granted on the Principal Register. For example, registration on the Supplemental Register is not evidence of the owner's exclusive right to use the mark in connection with the goods or services, and the owner of a mark on the Supplemental Register cannot utilize the power of the U.S. Customs and Border Patrol agency to stop importation of infringing goods.
Once a trademark or service mark is placed on the U.S. Patent and Trademark Office's (USPTO's) Principal Register, the owner receives a certificate of registration good for an initial term of ten years. The registration may lapse before the ten-year period expires, however, unless the owner files a statement within six years of the registration date (called a Section 8 Affidavit) stating that the mark is still in use in commerce.
The original registration may be renewed indefinitely for additional ten-year periods if the owner files the required renewal applications (called a Section 9 Affidavit) with the USPTO. Failure to renew a registration does not void all rights to the mark, but if the owner fails to re-register, the special benefits of federal registration will be lost.
Yes, if the trademark is used only within one state (and thus doesn't qualify for federal registration), state registration is a good idea. State registration, however, does not offer the same level of protection provided by federal law.
The main benefit of state registration is that it notifies anyone who checks the state's list that the mark is owned by the registrant. This fact will lead most would-be users of the same trademark to choose another one rather than risk a legal dispute with the registered mark's owner.
If the mark is also federally registered, a would-be user of the same trademark is presumed to know the trademark is federally registered, and state registration isn't necessary.
For extensive information on trademarks, see Trademark: Legal Care for Your Business & Product Name, by Stephen Fishman (Nolo), which provides the most current information on domain names, changes to trademark statutes and case law, and the latest registration processes.
To register a trademark with the USPTO, the trademark's owner first must use it in "interstate commerce." This means the mark must be used on a product or service that crosses state, national, or territorial lines, or that affects commerce crossing such lines, for example, an Internet business or a restaurant or motel that caters to interstate or international customers.
The trademark owner must also be able to answer "no" to all of the following questions: