Lex Indicium

The process to apply for a federal trademark registration is a separate and more involved examination process than registering a business name with a state’s Secretary of State. The U.S. Patent and Trademark Office (“USPTO”) conducts a months-long examination of every trademark application to ensure all statutory and regulatory requirements are met and that the mark does not conflict with an already registered or earlier-for applied mark. We have summarized the benefits of trademark registration and the process below:

Benefits to a Federal Trademark Registration

In the U.S., trademark registration is not necessary to protect or enforce your exclusive rights in your brand. You may be able to protect unregistered trademarks under so-called “common law” trademark rights based on your use and reputation of the mark in commerce. However, common law trademark rights are much more limited than the rights afforded to federally registered trademark rights. Federal registration of your mark confers a number of benefits upon the trademark owner, including the following:

• presumption of validity of the registration, ownership of the mark, and exclusive use of the mark in commerce;
• presumption of continuous use of the mark since the filing date of the application;
• incontestability of the mark five years after registration (prevents contests based on descriptiveness and prior use of the same mark);
• constructive notice of the registrant’s claim of ownership of the mark;
• nationwide rights regardless of whether the mark is actually in use nationwide; and
• the right to bring suit in federal court.

The Application Process in the U.S.

Federal and State Trademark Filings

In the U.S., applicants have a choice of pursuing a state trademark registration and/or a federal trademark registration. There can be strategic benefits to pursuing either or both, depending upon a number of circumstances. For the purposes of this post, we will focus on federal registration.

Basics of Federal Application and Examination

There are two basic types of federal trademark applications for federal registration, the actual use application, and the intent-to-use application. Both applications require the applicant to identify the mark, provide applicant information, and a description of the goods and/or services with which the mark is or will be used.

The actual-use application must also include: (1) a claim that the applicant is currently providing all of the claimed goods and/or services in interstate commerce (i.e. selling across state lines); (2) the dates the mark was first used in interstate commerce; and (3) at least one ‘specimen,’ or an example of use of the mark (e.g., packaging, labels, etc.) showing the mark as actually used. An intent-to-use application does not require any of these three elements upon filing, however, the applicant will need to file each of these elements later in the application process under something called a “Statement of Use” in order to secure a registration.

The completed federal application is sent to the U.S. Trademark Office where it eventually is assigned to an examiner. As of the writing of this blog, applications are generally examined 3-6 months after filing. The examiner scrutinizes the application for adherence to formalities and examines the mark, the description of goods and specimens to ensure that the mark is registerable (e.g., is not descriptive, etc.).  The examiner also searches for potentially conflicting registered and pending trademarks.

Publication and Allowance

After examination, if the examiner concludes that the mark is registerable, he or she will issue a Notice of Publication. Subsequently, the mark will be published in the Official Gazette.  Potential opposers to registration of the mark have 30 days after publication to file a Notice of Opposition. Assuming no opposition is filed, the mark will proceed to registration if it was filed based on actual use.

If the application was based upon “intent to use,” then, after the publication period the Trademark Office will issue a “Notice of Allowance.” An intent-to-use application will stay in the “allowance” period until the earlier of the applicant filing a Statement of Use (and evidence of use), or six months from the issuance of the Notice of Allowance. The applicant is permitted to file extensions to the “allowance” period in six-month increments for up to three years. Although filing an intent-to-use application functions to accord priority to your application, your trademark rights only mature with use and registration.  Therefore, use of the mark is crucial to perfecting your rights.

The time from application to registration is often lengthy and can take anywhere from eight months to several years depending on how the examination goes and the basis for the application (intent to use or actual use). Even applications encountering little or no objection from the Trademark Office generally take a minimum of a year to reach registration. It can take two to three times as long if the application encounters substantive problems, such as a rejection based upon the likelihood of confusion.

Application Process for Applications Based on Actual Use

Application Process for Applications Based on Intent-To-Use

Trademark Rights Outside of the U.S.

Trademark rights are jurisdictional so a registration in the U.S. will generally not be enforceable in another country.  In addition, unlike the U.S., trademark rights in foreign countries generally are predicated on registration and not use.  As such, it is imperative that trademark owners with any international exposure and/or plans to enter foreign markets, seriously consider protecting marks in foreign jurisdictions.

While there is a requirement in the U.S. to retain counsel, because of the legal technicalities and strict deadlines involved in the trademark application process, applicants often find working with an attorney specializing in trademark matters to represent and advise them in this process helpful.