Applying for federal registration of a trademark with the United States Patent and Trademark Office (USPTO), the government office which registers marks, is one of the best things you can do to protect your intellectual property from infringement under trademark law. However, just filing an application provides no guarantees that your trademark will be registered. The USPTO has outlined a federal trademark application process that is relatively straightforward and transparent, but which requires applicants to be careful and diligent with the information they provide, especially when it comes to classes of goods and/or services.
The Federal Trademark Application Process
To register a trademark, there are a few basic steps in the application process which every applicant must adhere to in order to achieve successful registration. In order, those steps include:
1. Determine which type of trademark you would like to register
Are you registering a goods mark or service mark? A “good” is a physical product offered for sale to the public, while a “service” is any activity performed for compensation (think window washing, pool cleaning, or dog walking). There are more specific definitions for products and services which must be included in your application; we will discuss these further below.
2. Search for trademarks that may be similar to yours
The USPTO maintains an online database of trademark applications and registrations, the Trademark Electronic Search System (TESS). Before applying to register your mark, you should conduct a thorough search to make sure that someone else hasn’t registered or applied for a trademark that is “confusingly similar” to yours.
3. Classify and describe your goods or services
At this stage, you should search the USPTO’s Trademark ID Manual to identify the classes of goods or services you are offering. Once you have classified your products, you may use USPTO-approved descriptions or write custom descriptions. Remember, you cannot expand the scope of offerings after filing an application, you may only narrow or remove them.
4. Determine your filing basis
There are two main definitions of filing basis, “use in commerce” and “intent to use.” If you are using your trademark for selling your goods or transporting them out of state (or providing services out of state), then your products are being used in commerce and your filing basis would be used in commerce. If you haven’t started using your trademarked goods/services in commerce, but you have a bonafide (sincere) intent to do so within 3-4 years, then you have the intent to use.
There are additional considerations if your mark is in use or intended to be used for international commerce. If you have registered or applied for a trademark in another country or countries, you may use that as a basis for filing a registration application in the United States, also known as Section 44 filing bases. Additionally, you may extend foreign trademark registration into the United States under the Madrid Protocol, under a Section 66(a) filing basis.
USPTO Application Requirements
You must file electronically using the USPTO Trademark Electronic Application System (TEAS), but at any time you may choose to save your application and continue it later. You may use the TEAS Plus or TEAS Standard forms, but the different filing options have different requirements, filing fees and payment options.
To obtain a filing date, you must include:
- Applicant’s name
- Name & address for USPTO correspondence
- A clear drawing of the mark for design marks or nontraditional marks
- Listing of goods and/or services for sale or offer under the mark
- Filing fee for each class of goods/services described in the application
Every applicant must also provide:
- Information about the individual applicant or legal entity
- Filing basis (intent to use or use in commerce)
- Verified statement by the applicant, legal representative, or attorney
- A description of the mark for marks other than standard character word marks
- A drawing showing the mark for any mark other than non-visual marks (sound, scent, etc.)
- English translation or transliteration of any non-English words featured in the mark
If you are a foreign-domiciled trademark applicant or registrant, you must have a U.S. licensed attorney represent you.
Remember, once you file a trademark application, then by law, the information in the application becomes public record, including contact information like your address and email address. Any member of the public will be able to view your application on the USPTO website, or any other website which indexes USPTO data.
What Types of Applications May Be Filed?
You may file an application for trademark registration for both traditional marks (words, images, symbols, etc.) and non-traditional marks (color, sound, scent, flavor, touch, etc.) as well as collective membership (as in an organization) or certification marks (to certify characteristics of other goods or services). Here is a rundown of the main types of trademarks which may be registered:
- Word Mark – standard letters and words in Latin characters, with numbers in Roman or Arabic numerals, with only common punctuation or diacritical marks with no design or stylized elements.
- Design Mark – stylized wording and/or design to USPTO file specifications (JPG format, 5 MB or less, 300-350 DPI, 250-944 pixels length or width).
- Color Mark – visual and depicted in color drawings with substantial proof of acquired distinctiveness, along with other requirements (see USPTO Trademark ID Manual).
- Shape Mark – configuration, shape, or design of a product or its packaging, with a description and drawing that depicts the mark in 3 dimensions.
- Sound Mark – detailed description of the sound, including words or lyrics, in standard electronic file format (.wav, .wmv, .wma, .mp3, .mpg, .avi) no greater than 5 MB in size.
- Scent/Flavor Mark – requires substantial proof of acquired distinctiveness, along with a detailed written description, and specimen containing the scent or flavor which matches the description.
- Touch Mark – represented graphically.
- Motion Mark – submit a drawing depicting a single point in the movement or up to five frames showing the stages of movement, which must be a “repetitive motion of short duration”. Include an audio or video specimen in standard electronic file format, no greater than 5 MB for audio or 30 MB for video, along with a detailed written description.
- Collective Membership Mark – used by the members of a cooperative, association, or collective to indicate membership. Include a description of the nature of the organization such as type, purpose, or activities.
- Certification Mark – word, name, symbol, or device used by someone other than the mark owner to certify origin, material, manufacture, quality, accuracy, or other characteristics of goods or services.
Trademark registration applications take between 9-12 months to issue, provided no substantive objections are raised either by the patent office or objections filed by third parties. If Office Actions are issued, oppositions are filed, required documentation such as foreign registration is not available, or other unusual circumstances arise with your application, the process can be significantly delayed, by months or even years.
What Happens After The Application Is Filed?
Typically, a review of your application will begin within three months by a USPTO examining attorney. Provided there are no issues with the initial application, your application will be published in The Trademark Weekly Gazette, the official weekly USPTO publication listing newly published marks, along with registrations that have been canceled or renewed.
If other trademark owners formally oppose your application, it won’t be automatically dismissed, but it will slow your registration process. If the opposition is unsuccessful, your mark will be registered. Also, you can check the status of your application at any time through the Trademark Status and Document Retrieval (TSDR) system.
If you have questions about what to include in your federal trademark application or anything about the application process, our experienced team of trademark attorneys at Allen Dyer are here to help. Contact us to schedule a consultation today!
About the Author
Matthew McKinney practices in all areas of intellectual property, representing a wide range of clients in connection with the acquisition, transfer, enforcement and defense of their intellectual property rights.