Why register your trademark?
It is your choice whether to file for federal trademark registration. The benefits include:
Trademark is listed in our database of registered and pending trademarks. This provides public notice to anyone searching for similar trademarks. They will see your trademark, the goods and services on your registration, the date you applied for trademark registration, and the date your trademark registered.
Legal presumption that you own the trademark and have the right to use it. So, in federal court, your registration certificate proves ownership, eliminating the need for copious amounts of evidence.
Can use your registration as a basis for filing for trademark protection in foreign countries. Right to bring a lawsuit concerning the trademark in federal court. May use the federal trademark registration symbol, ®, with your trademark to show that you are registered with us. This may help deter others from using your trademark or one too similar to yours.
Record your registration with U.S. Customs and Border Protection (CBP). They can stop the importation of goods with an infringing trademark. Federal, state, and international registration
How you choose to protect your trademark is up to you. You are not required to register your trademark, but where or whether you decide to register your trademark can determine the scope of your rights. Specifically, you can rely on common law rights or file for state, federal, or international trademark registration.
Why Should Your Shopify Store Design Match Your Business Goals
If you haven’t filed for state or federal registration, your trademark protection is based solely on using your trademark in commerce within a particular geographic area. This limits your rights, as you can only enforce your trademark rights for the specific area where your trademark is used.
State trademark registration
Registering your trademark with your U.S. state creates rights in that state only. Your trademark is not protected if you expand your business across state lines into another state where your trademark is not registered. If you decide to expand your business across state lines, you’ll need to decide if you want to register your trademark in that state or apply for federal registration. Also, not all states have trademark registration databases, which means that third parties will not be aware of your rights in that trademark. It’s your responsibility to prevent others from using your trademark. See more information about state registration requirements.
Federal trademark registration
Registering your trademark with the USPTO creates rights throughout the entire United States and its territories, and includes your registration in our publicly accessible database of registered trademarks. You can use the ® symbol and you can generally rely on those rights to protect your trademark as you expand your business across state lines. However, the USPTO is not an enforcement agency, so you will be responsible for pursuing any infringing users.
International trademark registration
While there is no such thing as a “worldwide trademark” or a “worldwide trademark registration,” you can register your trademark in multiple countries through the Madrid Protocol. This international treaty allows you to file a single application that can then be applied to any of the over 100 member countries, as long as you meet the legal requirements for registration in those countries.
Although the Madrid Protocol creates something called an “international registration,” the registration doesn’t create worldwide rights. The treaty simplifies applying for a trademark registration in different countries, but it doesn’t automatically guarantee your trademark will be registered in each country. Each country’s trademark office will review your application and decide whether your trademark will be registered in that country.
How long does a federal registration last?
Your trademark registration can last forever, so long as you continue to use your trademark in commerce and provide us with evidence that you’re still using it. Specifically, you need to file maintenance documents with fees at prescribed, periodic intervals. For example, you must file a maintenance document after your trademark has been registered for five years.
If you don’t maintain your trademark registration at these intervals, you’ll lose your federal registration and will need to start the application process over. Learn more about maintaining your federal trademark registration.
Search & Clear The Trademark
Before you file for trademark protection you’ll need to make sure your mark can be registered. That means searching for others who may have already registered a similar mark and assessing whether your mark meets the other requirements for registration with the United States Patent and Trademark Office (USPTO).
The search and clearance process was covered at length in a different post(Opens an external site in a new window) and so I won’t cover that process in detail here. Just know that until you’ve conducted a search and clearance of your mark (or, preferably, had a trademark attorney do so for you) it’s a bad idea to try apply for federal registration of your mark. If you’re still not convinced, I strongly encourage you to read the search and clearance blog post before you go any further.
Prepare The Trademark Application
The Principal Register
It’s typically wise to apply for registration on the USPTO’s Principal Register. The Principal Register provides the trademark owner the greatest protection, including a presumption that the trademark is valid; the registrant owns the mark; and the registrant has the exclusive right to use the mark. However, to qualify for registration on the Principal Register, your mark must meet certain requirements, so be sure to do your homework on this or consult with a lawyer before you apply.
Tip: If, for some reason, your mark doesn’t qualify for registration on the Principal Register, you could still apply for registration on the Supplemental Register, though you’d have less protection than with a mark on the Principal Register.
The Bases For Filing
Your trademark application must be based on either (1) use in commerce or (2) intent to use in the future.
A use-based application means that, at the time of the application, you’ve already been using the mark in commerce or in connection with the goods and services you list in the application. It’s worth mentioning that your use of the mark can’t have been only for the purpose of reserving trademark rights, but rather must have been done in the ordinary course of trade. If your use-based application is accepted, you’ll have successfully registered your mark.
An intent to use application means that, at the time of the application, you haven’t yet used the mark but have an actual intent to do so in the future. If your intent to use application is accepted, the USPTO will issue what’s called a Notice of Allowance. At that point, in order to successfully register your mark, you’ll need to file evidence (along with an Amendment to Allege Use or a Statement of Use) showing that you’ve used the mark in commerce or in connection with the goods and services listed in your application.
Tip: If you’ve used the mark for one of the goods or services in your application, but not for another, you should specify which basis for filing covers which specific goods and services. For example, if you’d already used the mark “STRTCH” for selling therapy bands, but hadn’t yet used it for providing physical therapy services, you’d claim use for selling the bands but intent to use for providing PT services.
The Contents of the Application
Your trademark application must contain the following information to be considered complete:
The applicant’s name and address. The applicant should be the owner of the trademark. For example, if a corporation owns the trademark, the applicant should be the corporation. The applicant’s type of legal entity and citizenship. Examples of this include corporation, partnership, LLC, etc.
Name and address (for correspondence). This information should be of the person or legal representative who will communicate with the USPTO regarding the application.
A drawing of the mark. If the mark you’re seeking to register is merely a word or phrase without any design element, then it’s considered a standard character mark and you’ll just need to type in the letters of the word or phrase. (Tip: registration of a standard character drawing provides the greatest protection for a mark because it can be presented in different ways but still be covered). If, however, the mark has one more design elements, such as a particular color, style, or font, then it’s not considered a standard character mark and you’ll need to provide a drawing of the mark accurately depicting the design elements. (Tip: if you want to register a sound mark you should submit an audio clip of the sound).
A description of the mark.
You only need to provide a description of the mark if yours is not a standard character mark; for instance, a mark that has design elements, color, or sound. Your description shouldn’t be long but it should be thorough in describing the significant elements of your mark.
A list of goods and services covered by the application.
You must list each good and/or service the mark is, or will be, used with. While you may want to include as many items as possible in order to have the widest protection you can, keep in mind that filing fees are based on the number of classes in the application, and so your application can get very expensive. Once you’ve narrowed down the items to include, make sure to describe them in a concise but specific way. Common problems that occur here are using vague terms (e.g., “accessories”), open-ended terms (e.g., “such as”), and overly technical terms. (Tip: The USPTO’s Trademark ID Manual(Opens an external site in a new window) contains examples of language that’s been accepted for particular types of goods and services).
The international classes of the goods and services.
Goods and services are broken down into 45 classes. It’s a good idea to assign one or more of these classes to each of your distinct goods and services, as failing to do so may delay processing of your application. Again, keep in mind that the more classes you select, the more you’ll pay, as filing fees are calculated based on the number of classes contained in the application. (Tip:Determining which classes of goods and services you’re eligible for is often an area where the help of an attorney will be useful).
The dates of first use of the mark and a specimen of use of the mark.
This is only a requirement for use-based applications. List the date that the mark was first used. Then provide a specimen—typically photos of the mark—showing its use in connection with your goods/services. If you sell goods, you could include a label bearing the mark; if you provide services, you could include a page from your website showing the mark and referencing the service you provide.
A verified statement or declaration.
Either the applicant or an authorized representative for the applicant has to date and sign a declaration, which in essence attests to the truth of the application submitted.
The required fee. The amount of the fee will depend on which type of application you file and how many classes are included in your application. Your filing fee will, at the very least, be $225, but it could be much more if you have a number of classes of goods and services. Once you’ve completed these steps, you should be ready to file your application.
Prepare The Trademark Application
To file online, you’ll use the Trademark Electronic Application System(Opens an external site in a new window) (TEAS). The TEAS has two different filing options to choose from: Plus or Standard (formerly known as “RF”).
TEAS Plus. At $250 for filing in a single class, the Plus application option is the cheapest option, but it has more requirements. To qualify for Plus filing, the applicant must submit all of the information that was set out earlier in this post under the heading “The Contents Of The Application.” With the Plus application, you must pick a description of your goods and services from a preset list, which can be good for inexperienced applicants but unduly restrictive for others.
TEAS Standard. At $350 for filing in a single class, the Standard application option is more expensive than the Plus option. However, the Standard application also allows you to create a custom description of your goods and services, an essential feature for certain applicants. For more information on these options, including which one may be right for you, check out this blog post(Opens an external site in a new window).
Confirm Filing & Monitor Status
TEAS Standard. At $350 for filing in a single class, the Standard application option is more expensive than the Plus option. However, the Standard application also allows you to create a custom description of your goods and services, an essential feature for certain applicants.
You’ll also receive a serial number for your application. You can use this number to monitor your application by accessing the Trademark Status and Document Retrieval(Opens an external site in a new window). There’s no need to check the status of your application compulsively, but do take a look every few months to make sure everything is in order.
Respond To Office Actions
Once the USPTO receives your application, it will assign it to an “examining attorney” who will then review it. This can take up to 6 months. If the examining attorney finds any issues with the application, he/she will issue an "office action” that denies registration and includes the reasons for the denial.
The topic of office actions and how to respond to them was covered at some length in an earlier post that you can read here(Opens an external site in a new window), so I won’t dwell on them in this post. Just know that if you’ve gotten this far without an attorney, now is the time when you should probably find a good one to help you prepare a response. You’ll be expected to provide persuasive reasons, typically based on prior cases, why your application should be accepted, a task that lawyers are uniquely qualified to perform.
Related: Dealing With A Geographic Descriptiveness Objection To Your Trademark Application(Opens an external site)
The Mark Is Published
Assuming that your application is approved by the examining attorney, it will then be published in the USPTO’s Official Gazette, an online publication, for 30 days. During this period of time, any party may oppose registration of the mark if it believes it would be damaged by it being registered. If any opposition is filed, then there is a court-like proceeding to resolve the dispute.
If, on the other hand, no opposition is filed, then the USPTO will register the mark and issue you a certificate of registration, so long as you submitted a use-based application. Keep in mind that it may take several months after the publication period is over for registration to issue. If you submitted an intent to use application, then the USPTO will issue a Notice of Allowance, which requires you to take an additional step of submitting evidence of use of the mark in commerce.
Submit A Statement Of Use
If you receive a Notice of Allowance, you must file a statement of use within six months, along with evidence showing that you’ve used the mark. You must also pay a filing fee with the statement of use ($100).
Tip: If you still haven’t used the mark at the time your statement of use is due to be filed, you can ask for a 6-month extension of time. You can do this up to 5 times in total, but must pay a $125 filing fee for each request for extension.
Assuming the examining attorney approves the statement of use, then the mark will be registered and a certificate of registration will be issued. This can take several months, so don’t be alarmed if you don’t receive a certificate of registration right away.
Maintain Your Trademark Registration
Last but not least, make sure you maintain your registration or you’ll risk losing it. That means filing certain documents and paying fees every sixth and tenth year.
Every sixth and tenth year, you should file a Declaration of Continued Use, along with a current “specimen” of use, or a Declaration of Excusable Nonuse. These filings are also referred to as Section 8 Declarations.
In addition, every tenth year, you should file a Renewal Application, which is also referred to as a Section 9 Renewal Application.
So, to recap, every sixth year you should file a Section 8 Declaration, and every tenth year, you should file both a Section 8 Declaration and a Section 9 Renewal Application. If you fail to do so, your trademark registration will be canceled.
If you are wondering how to register your own trademark, we are here to help! Please contact us for more information.
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