Knowing the Trademark Registration Process

An applicant for a USPTO Trademark Registration must comply with all substantive and procedural requirements of the U.S. Trademark Act and U.S. Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity is not represented by an attorney.


 The best source of detailed information (over 1500 pages) on obtaining a trademark with the USPTO is the USPTO Trademark Manual of Examination Procedure (TMEP). A separate manual covers the Identification of Goods and Services-US Acceptable Identification of Goods and Services Manual (over 1000 pages with notes). Another separate manual (over 1300 pages) covers the Trademark Trial and Appeal Board Manual of Procedure (TBMP).


Steps to a Strong Trademark

Short Summary of Steps Leading up to Filing for Registration & Steps After Filing for Registration

(linked to other pages with more details)

Before Filing for Registration                     After Filing for Registration   

→Verify INHERENT STRENGTH or Verify the potential trademark is a Strong Trademark(TM) rather than a Weak mark. “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).  


What is involved with verifying a trademark for inherent strength?

Searching federal, state, and common law marks to see if the potential trademark or parts of the potential trademark are being used by third parties. One of the goals of a Strong Trademark Registration is to reserve the exclusive use of the potential trademark which means verifying that the potential trademark is not already used by prior users (registered  or unregistered).

Note: The USPTO does NOT determine the right to use a mark, only the right to register a trademark. The USPTO and the TTAB have no authority to determine the right to use, or the broader questions of infringement or unfair competition (TBMP §102.01), but only the right to register on the federal registers. However, the right to use a mark may be challenged by a prior user under the Lanham Act in an opposition to registration, a cancellation proceeding or in federal court. See Trademark Right To Use-Search and Clearance for more information.

Analyzing where the potential mark falls on a distinctiveness continuum. Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on how the trademark is used) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive are registrable on the USPTO Trademark Principal Register. Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness with Secondary Meaning (must be proven with evidence and generally at least 5 years of use). Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register and receive no common law protection as trademarks.

Verify the RIGHT TO USE the potential trademark--verify the potential trademark has no prior users that may prevent you from registering your mark or who may sue you for using their mark (including users who have abandoned their registration but have not abandoned the mark and have not lost the right to defend their claim) by searching federal, state, and common law marks (thorough trademark search) to see if the potential trademark or parts of the potential trademark are being used by third parties;

Verify the RIGHT TO REGISTER the potential trademark--verify the potential trademark (or service mark) meets USPTO standards for registration (see Grounds for Refusal to see a nonexhaustive list of reasons why the USPTO can refuse a registration);

Verify the mark FUNCTIONS AS A MARK (indicates origin and distinguishes such goods/services from those manufactured and sold by others) in applicable specimens of the mark--verify it meets USPTO standards for a trademark rather than just being a collection of mere words or symbols that do not justify legal protection as a trademark (see Acceptable Specimen for more information);

Verify the registration ID of Goods and Services is both the correct and maximum claim that are user can make, verify that the Goods and Services ID meets USPTO ID requirements before filing and verify that the specimen of use meets “USE IN COMMERCE” requirements before filing a basis (i.e. Was the use a bona fide sale or transportation in commerce which may lawfully be regulated by Congress?).  See How Do I Know What Filing Basis to Use? for more information.

Federal Registration. The federal trademark application form TEAS should be filled out with the USPTO taking into account the steps above or the steps at the site VerifyATrademark.com.

  • You are encouraged to have all information required to complete the form available prior to starting your session, sessions are limited to 60 minutes but can be extended if the session is renewed at the correct point.
  • Image files for TEAS forms must be in JPG format or pdf format. (The TEAS forms accept PDF files (in addition to JPG files) for the following: evidence, specimens, foreign registration certificates, consents, miscellaneous information, and handwritten pen-and-ink signatures. However, a mark image is only acceptable in the JPG format.) To file an initial application for a stylized or design mark, you must be able to attach a black-and-white image file. Where a specimen of actual use in commerce is required, you must attach a scanned image or digital photograph, showing the mark "in use", not exceeding 2 megabytes per attachment.
  • Be very careful NOT to confuse the mark and specimen images and attach an image meant to be a specimen as the mark image, because in most instances this cannot be cured through an amendment, since it would be considered a "material alteration" of the mark as filed.
  • The USPTO recommends that you first prepare complex entries, for example, goods/services recitations in a Word or Word Perfect document, which permits spell checking through that word processing tool, save it in text format and paste into the TEAS form.
  • Many categories, such as changes in ownership cannot be changed after filing, the registrant must start over (and pay again).
  • Registration Subject to Cancellation for Fraudulent Statements: You must ensure that all statements made in filings to the USPTO are accurate, as any inaccuracies may result in the cancellation of a trademark registration. For example, the lack of a bona fide intention to use the mark with all goods and/or services listed in an application or the lack of actual use on all goods and/or services for which you claimed use in an application or post-registration filing could jeopardize the validity of the registration, resulting in its cancellation. See TEAS important notices.



Office Action(s) from USPTO followed by Applicant’s Response to Office Action (ROA)

There are two basic possibilities: No Objections- the Trademark examiner allows the mark (no Office Action) and it is Published for Opposition (see below); or Refusal-examiner refuses the mark for not meeting requirements for federal registration and issues an Office Action giving the applicant a chance to respond to issues raised.


If an Office Action is made by the USPTO, Applicants (or their representatives) must address each issue raised by the examining attorney and responses to office actions must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned. No response is the leading cause of abandoned applications.


Publication for Opposition or Published for Opposition

Marks that have been approved for the Principal Register are published in the Trademark Official Gazette. An OPPOSITION is a proceeding in which one party is seeking to prevent registration of another party's trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, he/she can file an opposition. For more information, see TTAB Facts and Questions.  

(A CANCELLATION is a proceeding in which a party seeks to cancel an existing registration of a mark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel. For more information, see TTAB Facts and Questions.)


Certificate of  Registration (for actual use) or Notice of Allowance (intended use). If there is no opposition, the trademark will register and the applicant will receive a Certificate of Registration. If the filing was for an Intent-to-Use, the applicant will receive a Notice of Allowance and has 6 months to file a Statement of Use (or Amendment) or an extension or the application will be declared abandoned. There is currently NO issue fee for a USPTO federal trademark. Also there is NO refund if a trademark does not issue for any reason.


Trademark Marking

The ® symbol can only be used (for the U.S.) after a USPTO registration has been issued and only for the goods or services for which it was registered.


Maintenance

A trademark owner must maintain a trademark by continuing to use the trademark in commerce and by filing for Continued Use or Excusable Nonuse and Renewal at the appropriate times.  Two years of nonuse may be evidence of abandonment.

Recommended: Five years of continuous use after registration may qualify a mark for Incontestability by the filing of a §15 Declaration. An "incontestable" registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions.


Recommended Additional Steps

Enforcement

The USPTO does not enforce rights to a trademark. It is up to the owner of a mark to monitor and protect their own rights through civil or criminal means. A trademark owner may seek remedies against infringers in U.S. District Court (registered trademarks) or in state courts (for registered or unregistered trademarks for state or common law infringement or unfair competition). Registered or registering trademarks that may harm a user’s prior right may be opposed or cancelled. See Published for Opposition and Opposition Steps/Cancellation Steps.

Trademarks may be protected from imported counterfeits by recordation with the U.S. Customs and Border Protection (CBP), through working with the FBI and reporting counterfeiting, and by seeking enforcement through the International Trade Commission (ITC). See Anti-Counterfeit Enforcement for more information.


Domain Names-Remedies available to a trademark owner who has been infringed

Domain name registrants and trademark owners that have distinctive names or famous names should monitor use of their names by others on the internet and in other commercial use for infringement, counterfeiting or piracy. Remedies and injunctions are available for those who have trademarks on the Principal Register of the USPTO against those who violate U.S. Trademark Law. State remedies may be available to those who have unregistered trademarks or domain names.

Trademark registrants of a mark registered in the USPTO whose rights have been civilly infringed may be entitled to injunctions (stop the use of the infringing name, goods or services), the plaintiff may also be entitled to recover defendant’s profits, any damages sustained by the plaintiff (up to 3 times damages under some circumstances), and the costs of the action. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

Violation of the Anticybersquatting Consumer Protection Act (domain names) may lead to a court taking action against the domain name registrant with the following consequences: forfeiture, cancellation, or transfer of a domain name to the owner of the mark and other remedies including injunctive relief, recovery of defendant's profits, actual damages, and costs, and statutory damages (in cybersquatting cases), in an amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

Remedies for trademark owners who have been infringed through domain name registrations and use are also available through Domain Name Dispute Resolution at the World Intellectual Property Organization and other organizations. See http://wipo.int/amc/en/domains/ for more information.


Record Trademark or Trade Names (or trade style) with U.S. Customs and Border Protection (CBP)  

Only trademarks that have been registered on the USPTO Trademark Principal Register or copyrights registered through the Library of Congress can be recorded and protected through U.S. Customs and Border Protection and through the International Trade Commission.


Different CBP rules apply for different types of importations with protection available for:

Counterfeit Trademarks (19 CFR § 133.21)-are a spurious trademark that is identical to, or substantially indistinguishable from, a registered trademark;

Copying or Simulating Trademarks or Trade Names (19 CFR § 133.22)-one which may so resemble a recorded mark or name as to be likely to cause the public to associate the copying or simulating mark or name with the recorded mark or name; and

Restricted Gray Mark Articles (19 CFR § 133.23)-are foreign-made articles bearing a genuine trademark or trade name identical with or substantially indistinguishable from one owned and recorded by a citizen of the United States or a corporation or association created or organized with the U.S. and imported without authorization of the U.S. Owner.

Infringing copies or phonorecords (19 CFR § 133.42)-are “piratical” articles, i.e., copies of phonorecords which are unlawfully made (without the authorization of the copyright owner).


MerelyDescriptive.com

Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418

1-651-500-7590

WP@NJP.legal


Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


©2008-2017 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us