Imagine that you have a trademark on the name of your business. The purpose of trademark law is to prevent consumer confusion, so as to ensure that consumers can recognize the true source of particular good or services. The trademark prevents, for example, a competing business from opening up across the street using the same name.
In the 21st century, the name of your website URL is just as important as the name on the front of your store. Fortunately, trademark protection also applies in the digital world. If another business attempts to register a domain name (that is, a Web address or URL) that is the same as your business name, you can seek relief in court to stop them.
Interestingly, you do not need a federally registered trademark to prevent a competing business from using your business name in its website address. So why bother registering it as a trademark with the U.S. Patent and Trademark Office (PTO) at all?
Federally registering your trademark makes it easier for you to enforce your rights as a trademark owner because you will automatically be presumed to own the mark. Anyone who uses it after your registration is presumed to know about it because the mark is publicly listed on the federal government's register of trademarks.
This makes it a bit easier to convince a judge that the later user is intentionally infringing on your mark. If you are able to prove the infringement was intentional, it can increase the likelihood that a court will award you money damages. The possibility of suing for enhanced damages will also make it easier to find a lawyer to take your case if someone infringes on your trademark.
Put simply, it makes sense in most cases to register your company's business name as a trademark, particularly if you intend to conduct business online or across multiple states.
Not all domain names can be registered as trademarks. The PTO is particular about what can be registered as a domain name.
For example, you will have a problem registering a generic name like "drugs.com" as a trademark. And you would face an uphill battle to register a domain name that you use solely as an address and not a signifier of services.
So the law firm of "Smith & Jones" would have a hard time registering "smith&jones.com" as a trademark. It would have to prove that the domain is being used for some other purpose than for people to find and contact the law firm. (Note that you can still use these domain names when you buy your website address; it's just that the domain names themselves cannot be registered with the PTO as independent trademarks.)
It is relatively easy to file your trademark application online at the PTO website. Often, you do not even need a lawyer, though it can be helpful to have a lawyer handle this paperwork.
The typical filing fee for a domain name mark is $325 per class (2018 figure) if you file electronically using the PTO’s Trademark Electronic Application System (TEAS ). It can cost more, however, if you will be offering a number of different services on your website.
To complete the registration process, you have to actually be using the domain name on a website. But you can start the process if you intend to use name soon (an intent-to-use application). When you do start using the name and complete the registration process, the application date will be treated as the date you first used the mark. This will give you a priority claim over later users.
When you file an intent-to-use application and then complete the process after you begin using the domain name, you pay an additional fee ($150 in 2018). Note that the precise fees may change from year to year.
The PTO may take a year or more to process your application before issuing a formal trademark. However, once you file it, your domain name will appear as a pending trademark in the PTO database. If you file a “use” application (one based on your actual use of the name), you will probably hear from the PTO in three to six months.
If there is a problem with your chosen name, such as a conflict with someone else's trademark, you will receive a letter from your trademark examiner explaining it. In many cases, you’ll be able to solve the problem with a phone call, although in more complex cases, you may need to retain a trademark lawyer to advocate on your behalf.
Within three months, you should receive a "Notice of Publication." The PTO will then publish your mark in its Official Gazette, thus allowing others to oppose your registration. Assuming there is no opposition, you will receive a Certificate of Registration or in the case of an intent-to-use mark that has not been placed in commerce, a "Notice of Allowance."
While all of this might sound like a speedy process, be aware that it can take a year or more to complete. The timing will depend partly on the complexity of your mark and whether it conflicts with another registered mark.
Later on, there will be some housekeeping needed to keep your registration in force. For example, between five and six years after registering your mark, you will need to inform to the PTO that you are still using it. You must renew your registration every ten years and between the fifth and sixth year following registration, you must file an affidavit declaring the continued use. This is known as a Section 8 declaration.
]]>The most common place to register your trademark is the Principal Register. As explained below, the Principal Register should always be your first choice.
But if your trademark doesn’t meet the requirements for the Principal Register, there's another, lesser-known register available: the Supplemental Register. It’s a secondary list—with a smaller but important set of protections—that the USPTO maintains for trademark owners.
A trademark is any word, phrase, design, or combination of these features that
To be registrable (or recognized by the USPTO), a trademark must be used in commerce.
“Use in commerce” means that the trademark is used in connection with goods that are sold or transported or services that are performed between:
(15 U.S.C. §1127 (2022).)
You can apply to register your mark with the USPTO either on the Principal or Supplemental Register. The Principal Register is the preferred register for trademark owners because it offers more benefits and protections.
Specifically, the Principal Register has the following benefits that the Supplemental Register doesn’t:
Even though it plays second fiddle, the Supplemental Register does have benefits. (It’s just that the Principal Register has more.) If you register your trademark on the Supplemental Register, you can enjoy:
But, to be fair, it’s often difficult to prove infringement of a mark listed on the Supplemental Register. Registration on the Supplemental Register is an admission by the owner that their trademark isn’t distinctive enough to be placed on the Principal Register.
The USPTO decides what register a trademark should be listed on based on one factor: distinctiveness. If the USPTO considers a trademark to be distinctive, then it's allowed on the Principal Register. All other trademarks, with few exceptions, are placed on the Supplemental Register.
In determining whether a trademark is distinctive, the USPTO determines where on the distinctiveness spectrum the trademark falls. There are five levels of trademark distinctiveness.
A generic trademark is made up of only words or designs that generally describe the goods or services associated with the trademark. For instance, "gas station" refers to a place where you get gas rather than a specific provider’s service station.
Generic trademarks don't qualify for either register because, by definition, a generic term calls to mind a type of product rather than a specific product. Generic trademarks have no distinctiveness and can only be registered on the Supplemental Register if the trademark also contains descriptive wording that isn’t generic.
A descriptive trademark is made up of words that describe a particular quality, ingredient, or aspect of the associated goods or services. For instance, “American Airlines” for a U.S.-based airline is an example of a descriptive trademark.
Surnames (like “Johnson” or “Williams”) and geographically descriptive trademarks (like “Midwest” or “New England”) are a couple kinds of trademarks that can only go on the Supplemental Register.
But descriptive trademarks can be considered distinctive enough for the Principal Register if they gain secondary meaning (or “acquired distinctiveness”).
Acquired distinctiveness is when a trademark becomes more than its literal meaning. If buyers see a trademark as associated with providing a set of goods or services rather than as merely a description of those goods or services, then the trademark has acquired distinctiveness and gained secondary meaning.
Going back to our example, "American Airlines" has acquired secondary meaning. When buyers hear the airline name, they don’t think of the name as a description of the travel services. Instead, they immediately think of the company providing the services.
Descriptive trademarks can gain secondary meaning or acquire distinctiveness by the owner:
If an owner believes their mark has acquired distinctiveness, they can submit their evidence to the USPTO for review. The owner will either provide their evidence in the initial application or later on in the application process in response to an office action.
Suggestive trademarks are similar to descriptive trademarks but require more thought. Suggestive trademarks imply rather than outright state some aspect of the connected goods and services.
For example, “Jaguar” for cars is suggestive. Jaguars are fast and the car brand is known for making fast cars. Because the brand name is not “fast cars,” which would be descriptive and instead describes something that gives the impression of speed, the trademark would be considered suggestive.
Suggestive trademarks are distinctive but are the weakest of the distinctive trademarks. Suggestive trademarks are registrable on the Principal Register.
In the middle of the pack of distinctive trademarks are arbitrary trademarks. Arbitrary trademarks are made up of words or designs that are unrelated to the associated goods or services.
For instance, “Amazon” for an online retail store is arbitrary. “Amazon” is a real word, but it has nothing to do with online retail store services. Arbitrary trademarks are registrable on the Principal Register.
Fanciful trademarks are the most distinctive trademarks and are registrable on the Principal Register. Fanciful trademarks consist of made-up words. For instance, “Kodak” for cameras is fanciful because it’s not a real word.
You might wonder what happens when your trademark consists of more than one type of distinctive trademark.
For example, assume you use the name “Cotton Candy Balloon Company” to sell party balloons. “Cotton Candy” would be arbitrary. But “Balloon Company” would be generic. You could still register your entire trademark “Cotton Candy Balloon Company” on the Principal Register because part of it is arbitrary.
That’s the rule: As long as your trademark has one portion that is distinctive—whether a word or image—it'll be considered distinctive and registrable on the Principal Register. But be aware that you’ll be required to “disclaim” any unregistrable words. Disclaiming a word doesn’t mean that your word is removed from your registration. It just means that someone else can use that word in their trademark.
Going back to our example, you would need to disclaim “Balloon Company” because these words aren’t distinctive. Your trademark would still be “Cotton Candy Balloon Company.” But someone else can use the words “balloon” or “company” as long as their trademark isn’t too similar to yours.
If you’ve determined your trademark would be registrable on the Supplemental Register, you’ll need to submit an application to the USPTO to register it there.
Your trademark will go through the same process as trademarks applied for on the Principal Register. But while trademarks in an application for the Principal Register don’t have to be in use yet, trademarks in applications for the Supplemental Register do.
The USPTO will review your application to make sure your trademark isn't too similar to one that has already been registered or applied for. Before you apply, do a trademark search to make sure your trademark is available to register.
You'll want to be especially careful you're not using someone else's trademark if yours is descriptive. Many trademark owners will be tempted to use descriptive words to describe their goods or services because doing so clearly communicates their business to customers. These kinds of descriptive trademarks can often be repeated or overlap too much, so you’ll just want to make sure yours is one of a kind.
Alternatively, you can apply for your trademark on the Principal Register. If, during the review process, the trademark examiner requires you to move over to the Supplemental Register, you can make the change within your existing application.
If you have a descriptive trademark, you can even register it on the Supplemental Register and then reapply for the Principal Register once your trademark has gained secondary meaning.
It can be hard to make the call on whether your trademark should be placed on the Principal or Supplemental Register. Because switching to the Supplemental Register is free, it’s normally a good idea to start with the Principal Register.
If a trademark examiner doesn’t accept your trademark on the Principal Register, then it could be a good time to seek help from a trademark attorney. An attorney can let you know if switching to the Supplemental Register is the best option or if it’s worth fighting to get your trademark on the Principal Register.
]]>Before you register your name, you should consider two preliminary issues:
Okay, once you’ve executed these two hurdles, you’re ready to proceed.
Before you begin your federal application, you’ll need to figure out what theory it’s based on. Most federal trademark applications are based on either “use in commerce” or an applicant’s intention to use the trademark (referred to as an “intent-to-use” or ITU application). Learn more about Intent-to-Use applications.
The preferred (and less expensive) method of preparing the federal trademark application is to use the online Trademark Electronic Application System (TEAS) located at the PTO’s website (www.uspto.gov). TEAS is an interactive system in which the user is asked a series of questions. If a question is not answered or an essential element is not completed, the applicant is asked to correct the error. I recommend starting with the TEAS PLUS system as it is the least expensive way to file.
Using the online TEAS PLUS system, you will be asked the basis for your application. If you have already used the mark in connection with your blog, then you would check “Yes” under “Use in Commerce.” As for dates of use, you will need to provide the date (or your best guess as to the dates) you first debuted your blog using the trademark, anywhere. You will also need to provide the date when you first sold your work (or services) outside your state (for example, through an Internet sale or during travel to a software trade show). If you have not yet used the mark but have a bona fide intention to use the mark, check “Yes” under “Intent to Use.”
You will need to identify your class of goods. Blogs fall into Class 041_:
International Class 041: Education; providing of training; entertainment; sporting and cultural activities
Along with the class for the goods, you will need to provide a description of the blog services. This description is different from the listing of the International Class.
EXAMPLE: "On-line journals, namely, blogs featuring commentary and information in the fields of [describing the content or field of the blog].
If the mark is a word or group of words, identification of the mark is straightforward. The mark may be identified simply as “DEAR RICH” or “GAWKER.” But if the mark is a stylized presentation of the word, a graphic symbol, a logo, a design or any of the other devices permitted under trademark law, a statement must be provided that clearly identifies the mark. If you’re using the TEAS system, type in the word mark or, in the case of a stylized mark, attach a graphic file (either JPG or GIF format) containing a black and white rendition of the mark. Insert a written description in the appropriate box.
For the broadest protection for a word mark, register it free of any lettering style. This will give you the ability to use the trademark in various fonts, rather than being restricted to your original presentation of the mark.
The applicant can be an individual, a partnership, a corporation, an association such as a union, social club or cooperative, or a joint ownership by some combination of any these forms. Most likely, it’s you, so your own citizenship is required as well as a mailing address. If you are doing business under a fictitious name, that information should be provided, especially if it is included on any specimen furnished with the application. If the mark is owned jointly by two entities, that should be stated as well. Supplying this information online using TEAS is facilitated by typing the appropriate information into the form. Drop-down menus and online help screens are available to guide you.
You are required to provide a declaration, a sworn statement or other verification that the facts in the trademark application are true. You, or an officer of your corporation or association, should sign the declaration. The TEAS application provides an all-purpose declaration that can be used for both ITU applications and for trademarks that are in use.
Many trademarks include words or phrases that, by themselves, cannot be protected under trademark law. To allow one person an exclusive right to use such terms would decimate the English language. Therefore, the trademark office usually requires a disclaimer as to certain portions of trademarks. For example, if an applicant wanted to register the mark, The Big Fat Blog, the applicant would be required to disclaim “Blog.” This means that apart from the use as a part of the trademark, the applicant claims no exclusive right to use the word “blog.”
If your application is based on actual use of your mark in commerce, you’ll need to enclose a specimen—that is, a JPG showing the trademark being used on your blog. In the case of ITU applications, the specimen must be filed later, together with a document entitled “Amendment to Allege Use.” You’ll see that the USPTO provides a means for uploading a digital photograph of the specimen. For your blog trademark, you should furnish a digital image of a screen display that shows use of the mark at the blog, along with the URL as shown in the browser.
You will complete the process by paying the fees, authorizing your electronic signature and validating the application. After you click “Pay/Submit” and your transaction is successful, you will receive a confirmation.
Later, you will receive email acknowledging the submission of your application. Hold on to that email, because it is the only proof you’ll have that the USPTO has your application. It is also proof of your filing date and contains the serial number assigned to your application.
Okay, you’ve filed. Learn what to do after you file your application.
]]>Okay, once you’ve answered these two questions, you’re ready to proceed.
Before you begin your federal application, you’ll need to figure out what theory it’s based on. Most federal trademark applications are based on either “use in commerce” or an applicant’s intention to use the trademark (referred to as an “intent-to-use” or ITU application).
Learn more about Intent-to-Use Applications.
The recommended method of filing a federal trademark application is to use the online Trademark Electronic Application System (TEAS) located at the PTO’s website (www.uspto.gov). TEAS is an interactive system in which the user is asked a series of questions. If a question is not answered or an essential element is not completed, the applicant is asked to correct the error. Starting with the TEAS PLUS system as it is the least expensive way to file.
Using the online TEAS PLUS system, you will be asked the basis for your application. If you have already used the mark in connection with the sale or distribution of your software, then you would check “Yes” under “Use in Commerce.” As for dates of use, you will need to provide the date (or your best guess as to the dates) you first debuted your application anywhere – for example, when it was first offered at the Apple App Store, etc. You will also need to provide the date when you first sold your work (or services) outside your state. For most software developers, that’s almost always the same as the first date of sale anywhere. If you have not yet used the mark but have a bona fide intention to use the mark, check “Yes” under “Intent to Use.”
Learn more about Intent-to-Use Applications.
You will need to identify your class of goods. Software traditionally falls under International Class 009: Electrical and Scientific Apparatus.
Along with the class for the goods, you will need to provide a description of the software. This description is different from the listing of the International Class.
EXAMPLE: "Computer game software for use on mobile and cellular phones.”
EXAMPLE: "Computer programs and computer software for electronically trading securities.”
EXAMPLE: "Computer search engine software.”
EXAMPLE: "Computer game software downloadable from a global computer network.”
EXAMPLE: “Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures”
EXAMPLE: “Medical software for {indicate function or purpose of software}
If the mark is a word or group of words, identification of the mark is straightforward. The mark may be identified simply as “MOOM” or “SKETCHUP.” But if the mark is a stylized presentation of the word, a graphic symbol, a logo, a design or any of the other devices permitted under trademark law, a statement must be provided that clearly identifies the mark. If you’re using the TEAS system, type in the word mark or, in the case of a stylized mark, attach a graphic file (either JPG or GIF format) containing a black and white rendition of the mark. Insert a written description in the appropriate box.
For the broadest protection for a word mark, register it free of any lettering style. This will give you the ability to use the trademark in various fonts, rather than being restricted to your original presentation of the mark.
The applicant can be an individual, a partnership, a corporation, an association such as a union, social club or cooperative, or a joint ownership by some combination of any these forms. Most likely, it’s you, so your own citizenship is required as well as a mailing address. If you are doing business under a fictitious name, that information should be provided, especially if it is included on any specimen furnished with the application. If the mark is owned jointly by two entities, that should be stated as well. Supplying this information online using TEAS is facilitated by typing the appropriate information into the form. Drop-down menus and online help screens are available to guide you.
You are required to provide a declaration, a sworn statement or other verification that the facts in the trademark application are true. You, or an officer of your corporation or association, should sign the declaration. The TEAS application provides an all-purpose declaration that can be used for both ITU applications and for trademarks that are in use.
Many trademarks include words or phrases that, by themselves, cannot be protected under trademark law. To allow one person an exclusive right to use such terms would decimate the English language. Therefore, the trademark office usually requires a disclaimer as to certain portions of trademarks. For example, if an applicant wanted to register the mark, My MAP APP, the applicant would be required to disclaim “APP.” This means that apart from the use as a part of the trademark, the applicant claims no exclusive right to use the word “APP.”
If your application is based on actual use of your mark in commerce, you’ll need to enclose a specimen—that is, a JPG showing the trademark being used in connection with the sale of your app. In the case of ITU applications, the specimen must be filed later, together with a document entitled “Amendment to Allege Use.” You’ll see that the USPTO provides a means for uploading a digital photograph of the specimen. For your blog trademark, you should furnish a digital image of a screen display that shows use of the mark at the blog, along with the URL as shown in the browser.
The USPTO has stated that acceptable specimens for computer programs would be a photograph of a display screen projecting the identifying trademark of a computer program, or a photograph of a frame(s) of a movie or video tape bearing the mark. It is not necessary that purchasers see the mark prior to purchasing the goods, so long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce.
For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it provides sufficient information to enable the user to download the software from the website. If the website simply advertises the software without providing a way to download it, the specimen is unacceptable.
EXAMPLE: Acceptable Specimen for Keynote software
You will complete the process by paying the fees, authorizing your electronic signature and validating the application. After you click “Pay/Submit” and your transaction is successful, you will receive a confirmation.
Later, you will receive email acknowledging the submission of your application. Hold on to that email, because it is the only proof you’ll have that the USPTO has your application. It is also proof of your filing date and contains the serial number assigned to your application.
Okay, you’ve filed. Here’s an article about what to do after you file.
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