TTFC (A Brand of Sagacious IP or Sagacious Research). All rights reserved. (C) 2016-2024
+1-206-309-7575 
[email protected]
Menu
+1-206-309-7575 [email protected]
If your trademark is unique in the state that you are filing, you may be entitled to protection in your state if you have filed a state registration. Unfortunately, this protection is valid in your state only and will not afford you all of the legal protections that accompany a federal trademark registration. Your trademark can still legally be used in other states, so state-only trademark registrations are appropriate only for small entities which do not wish to expand into other states and who will not make substantial investments in marketing the trademark.
If you are selling a product or service and operate in multiple states or if you have made or plan to make substantial investments in marketing your trademark, then you should seek federal trademark registration.
To determine whether a trademark is available for use, it is essential to have a professional trademark search performed.
Trademark rights come from using a trademark, not from registration. (Registration provides the registrant with additional protections, rights, and remedies with respect to the registered trademark.)
Therefore, your trademark may be infringing even if there is not a conflicting trademark on state or federal trademark registers.
Best practice is to conduct a nationwide or international trademark search covering state and federal registration databases as well as “common law” (unregistered) trademarks before attempting to register or use your trademark.
Performing a professional trademark search before you begin using or attempt to register a trademark is essential to help you avoid spending money on marketing that may end up useless and from incurring legal liability for trademark infringement.
The Madrid System is an international system for registering trademarks in multiple countries. It allows users to submit trademark applications in multiple countries through one application.
“Likelihood of confusion” is a bar to trademark registration that applies when an applied-for trademark is:
“likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” 15 U.S.C. §1125.
When the USPTO examines a trademark application, they will look through their records to determine if the applied-for trademark would likely be confused with an existing trademark registration. If the applied-for mark is likely to be confused with an existing trademark registration, the application will be refused.
“Likelihood of confusion” is one of the most common reasons for the USPTO to refuse trademark applications. To avoid a refusal for “likelihood of confusion” you can have a professional trademark search performed to identify potentially confusing marks and work with a licensed US trademark attorney to craft your application to reduce the odds of refusal.
Traditionally, a trademark had to be in use in “interstate commerce” to be eligible for federal trademark registration but today, you can file an “intent-to-use” trademark application before you begin using the trademark.
If you have not used your trademark in commerce yet, but have a good faith intention to do so in the future, you can file an application with the USPTO to register your trademark with an “intent-to-use” filing basis.
If your “intent-to-use” application is eventually granted, your filing will have priority in time over later applicants, even if their actual use date precedes yours.
Although you don’t need to use your mark in commerce before filing an application, you must show actual use of your mark by filing a “Statement of Use” within six months and by paying an extra USPTO fee.
Not ready after six months? You can request up to five additional six-month extensions, but each will require payment of an additional USPTO fee.
A “Declaration of Use” needs to be filed with the USPTO between the 5th and 6th years after the trademark registers. If you miss the deadline, the USPTO will allow you to file late during a six-month grace period for an additional fee.
The USPTO has two stages of review. First, the office will check that applicant has fulfilled the minimum requirements for application. This typically takes place within the first few weeks after application.
Second, a USPTO examining attorney will review the application, USPTO records, and other materials to determine if the application meets the registration requirements of federal law. This step usually takes place around four to six months after application.
If the examining attorney determines that a mark should not be registered, the examining attorney will issue a letter called an “office action” to you or your attorney explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application.
To give your trademark application the greatest chance of success, the USPTO recommends that you work with a licensed US trademark attorney.
Visit http://tsdr.uspto.gov/ and use your USPTO trademark serial number to locate your application, view documents, and track the status of your application.
A specimen is a sample of your trademark as used in commerce. For example, a specimen could be a label or tag attached to your goods that shows your trademark, a product container or packaging showing your trademark on the packaging, or, most often these days, a website displaying your trademark where your goods can be purchased or ordered.
An “incontestable” trademark registration is immune from most common challenges to its validity, whereas other trademarks on the primary register are given a “presumption” of validity but can be challenged.
To gain “incontestable” status, a “Section 15 Declaration” may be filed after five years of consecutive use from the date of federal registration.
Applicants who receive an “office action” (refusal) should contact a licensed US trademark attorney. While it is possible to overcome an office action from the USPTO without the help of a licensed US trademark attorney, professional representation will greatly improve your odds of overcoming an office action.
There are different types of office actions for different issues with applications.
Sometimes, it is a technical error that an attorney can deal with easily while other office actions require a formal legal response, most often because the trademark has been deemed “generic,” “descriptive,” or because there is a “likelihood of confusion” with another trademark. Applicants who attempt to resolve these substantive office actions without the help of a licensed US trademark attorney are rarely successful.
If an applicant fails to respond to any office action, the trademark application will be refused.
TEAS is an acronym for the USPTO’s Trademark Electronic Application System. It allows the applicant to file online trademark applications, pay filing fees, and track trademark applications online.
“USPTO” is an acronym for the United States Patent and Trademark Office. The USPTO is the regulatory agency housed within the Department of Commerce that is responsible for the administration of the patent and trademark systems within the United States.
A US federal trademark registration offers multiple benefits to registrants, including:
The investment it takes to register a trademark is small compared to the benefits of holding registration and the potential costs of failing to register a trademark being used in commerce.
A “Notice of Allowance” (NOA) is issued by USPTO to the applicant when an “intent-to-use” trademark application has met the requirements of the USPTO and has been “published for opposition” (allowing the public a chance to object to the application) for 30 days with no objection.
It means that the trademark has been allowed but it has not been registered yet. The NOA ensures the applicant that the trademark can be registered after submission of an acceptable Statement-of-Use that includes evidence showing the trademark has been used in commerce.
The Trademark Official Gazette (TMOG) is a weekly publication by USPTO which discloses newly published, but not yet registered, trademarks along with a list of cancelled and renewed registrations.
The Trademark Official Gazette puts the public on notice that a registrant is seeking to reserve rights in a particular trademark. After publication, the public has 30 days to file a trademark “opposition” requesting that the USPTO refuse registration of the applied-for trademark.
After a USPTO trademark examiner determines that the applied-for trademark meets the registration requirements of federal law, it will be “published for opposition” in the Trademark Official Gazette. After publication, the public has 30 days to file a trademark “opposition” requesting that the USPTO refuse registration of the applied-for trademark.
Unfortunately, you must file separate applications to register a word (e.g. “NIKE”) and a logo (e.g. ).
It takes around nine to 12 months to register a trademark if there are no USPTO “office actions” (refusals) or trademark “oppositions” from the public.
If there is an “office action” from the USPTO or a public “opposition” to your trademark registration, the time can be extended by six months or more.
USPTO fees are between $250 to $350 per “international class of goods and services.”
If you choose to follow the USPTO recommendation and hire a trademark attorney to assist you with your filing, attorney fees will vary, but could cost thousands.
Attorneys can be expensive, but it is very difficult to successfully register a trademark on your own and the cost of rejection and reapplication, along with the time and stress of the application process, makes hiring a licensed US trademark attorney well worth the investment.
The Trademark Filing Company offers one of the best values for trademark filings by a licensed US trademark attorney. Click here to see current rates for Sure-File and Quick-File services.
No, a trademark filed in the US provides protection only in the US and not any other foreign country. To protect your trademark in different countries, you need to seek protection in each specific countries, though it is possible to use a common application for many countries under the Madrid System.
Once your trademark is successfully registered in the US, it is valid for a period of 10 years from the date of registration. It is important to maintain the validity of the trademark in the US and for that, you need to file a “declaration of use” to confirm that you are actively using the trademark in the fifth year of the trademark registration. If you fail to file the declaration, your trademark will become “abandoned” and you will no longer have the legal protection federal registration affords.
In the 10th year, you will have to file another “declaration of use.” Once the request for trademark’s validity is approved, it is valid for another 10 years.
It is strongly recommended that you purchase a professional trademark search because of the technical skill and expertise required to perform an effective search. The Trademark Filing Company offers packages that include professional searches (found here), or you can purchase a search independently from our preferred partner, TMReady.
It is possible to perform your own trademark search by:
Again, performing a proper trademark search is very technical and difficult and it is recommended that you work with a professional service for reliable results.
In the United States, anyone may file a trademark application for themselves online via the Trademark Electronic Application System (TEAS), however, the USPTO recommends that you work with a licensed US trademark attorney to get the best results.
“TEAS Plus” and “TEAS Standard” are the two ways to file a trademark online in the United States.
TEAS Plus applications use descriptions of goods and/or services that are pre-approved by the USPTO, and are typically appropriate for those who plan to file for a trademark for a standard product or service. TEAS Plus applications require a USPTO fee of $250 per class of goods and services.
TEAS Standard applications allow applicants to enter a custom description of goods and/or services that must then be reviewed by a USPTO trademark examiner. TEAS Standard applications require a USPTO fee of $350 per class of goods and services.
There are various forms that one may need to submit when making federal trademark filings online in the United States, including, among others:
You may get the forms from the USPTO’s Index of all TEAS Forms.
Not sure what form to use? Contact a licensed US trademark attorney today.
The USPTO does not refund fees.
To avoid wasting your valuable time and money, the USPTO recommends that you work with a licensed trademark attorney to file your trademark application.
During or after the trademark registration process, if your trademark application becomes “abandoned” because you failed to respond to a USPTO “office action” or because you missed a maintenance filing, you may revive the application or registration within two months of abandonment by submitting a petition and an accompanying fee of $100 to the USPTO.
Not sure if your “abandoned” application can be revived? Contact a licensed US trademark attorney today.
Once your trademark is registered, it is your sole responsibility to enforce and maintain it. You have to submit certain fees and documents in the following years to keep your trademark alive:
A “clearance search” is a term for a thorough and professional trademark search that will “clear” your use of a trademark by before you begin using it or submit a trademark registration application.
It is strongly recommended that you purchase a professional trademark search because of the technical skill and expertise required to perform an effective search. The Trademark Filing Company offers packages that include professional searches (found here), or you can purchase a search independently from our preferred partner, TMReady.
A “common law” trademark is an unregistered trademark. Trademark rights accrue from use of a trademark, not from registration, so it is possible to get trademark rights without filing a federal application, however, there are many benefits to federal registration that holders of common law trademarks do not enjoy.
Common law trademarks are usually discussed in terms of whether an applied-for trademark will be implicated in the “likelihood of confusion” test that the USPTO performs upon examining every trademark application.
Not sure if there is a common law trademark in existence that might conflict with your trademark? The best solution is to have a professional trademark search performed.
The Trademark Filing Company offers packages that include professional searches (found here), or you can purchase a search independently from our preferred partner, TMReady.
It is not required that you hire a licensed US trademark attorney if you live in the United States, however, the USPTO urges all applicants to hire an attorney for trademark applications because applications filed by a licensed US trademark attorney are much more likely to be approved.
If you do not live in the United States, you are required to a hire a licensed US trademark attorney to file your trademark application.
You may only use the federal registration symbol ® on to designate a trademark that has been registered with the USPTO.
You may not use this symbol if your trademark application is still pending.
Before registration, you may use the ™ symbol to indicate that you believe you have common law rights in the trademark.
Generally, word marks offer the strongest legal protection, followed by composite marks, and then design marks (logos). This is because competitors find it easier to create logos and designs that are similar but noninfringing on other trademarks.
The level of difficulty increases for copycats when they are forced to find words that do not infringe upon your trademark.
For this reason, most budget conscious applicants should first apply for protection on word marks before design marks, however, each applicant must evaluate the strengths of their trademarks independently.
Not sure which type of trademark is right for you? Contact a licensed US trademark attorney today.
A “filing basis” is a basis in US trademark law upon which you file your trademark application with the USPTO. Each filing basis comprises of several requirements that one must fulfil before a trademark will be registered. You must select one the following options as part of your application:
An “opposition” proceeding occurs when a member of the public files with the USPTO to oppose the registration of an applied-for trademark. This occurs after the USPTO trademark examining attorney has reviewed the application and determined that the trademark is entitled to registration under federal law, but before the mark has actually registered, in the 30 days following “publication for opposition” in the Trademark Official Gazette.
A “cancellation” proceeding is similar to an opposition proceeding, except that it occurs where a trademark has already been registered by the USPTO, and a member of the public wishes to cancel the registration.
TTFC (A Brand of Sagacious IP or Sagacious Research). All rights reserved. (C) 2016-2024