Do you know how to successfully register a US Trademark?

What are the Registration and Renewal Requirements for a US Trademark?

If you are a business owner in the United States, you probably already know that a US Trademark Registration is a very valuable asset that can protect your company's brand, and/or products and services.  A US Trademark Registration can help set you apart from competitors, and provides nationwide recognition and protection of your identity among consumers of your goods and services. Trademark registration gives your business the exclusive right to use your mark within your industry. This means no competitor can legally use a similar name, logo, or slogan that could confuse your customers. The exclusivity provided by a trademark strengthens your market position and builds customer trust. 

But, knowing all the above, do you know what the process is to attain a Federal trademark registration?  More importantly, do you know the process to keep (ie. Renew) such a Federal trademark registration?  Very often, a lack of clarity or familiarity with either of these questions can cause a business owner to fail to attain a Federal trademark registration or lose one.

The purpose of this short article is to provide an outline of the process and requirements. 

The Clearance Process

Though the United States Patent and Trademark Office (USPTO) does not require that you undertake any efforts to "Clear" your mark before filing an application, it is a very good idea to do so.  The Clearance Process involves running checks to ensure that there are no pre-existing trademark registrations (at either the Federal or State level) or unregistered "common law" trademark usages that may conflict with your chosen trademark and cause a problem in the application process.

The USPTO can issue a refusal during the examination process if your chosen trademark is too similar to an existing US Trademark Registration, so as to be likely to confuse the consumers.  Similarly, after the examination process, an application is published for opposition, at which time any pre-existing State trademark owners or owners of "common law" rights may file an opposition to block your efforts to attain a registration for your chosen mark.

Thus, it is considered best practice to check before you file your US Trademark application, to ensure that you know of any risks posed by conflicting trademarks.  For information on the various types of steps to perform the Clearance Process, check out our recent Blog article. link  = https://www.iveticlaw.com/what-is-the-difference-between-a-knock-out-search-and-a-full-or-comprehensive-search-for-my-trademark

Because of the importance of the Clearance Process, it is advisable to seek the advice of an experienced trademark attorney for this process.  Many experienced trademark practitioners provide Clearance Opinions on a flat-fee basis.

The Application Process to Register a US Trademark

While you own so-called "common law" rights in a trademark the moment you commence using that trademark in commerce, an application for a Federal (US) trademark can be filed either before or after you commence use of the trademark in commerce. 

An application to attain a Federal trademark registration can be undertaken by filing the requisite forms and supporting material with the USPTO.  This can be done online, via the USPTO's "Trademark Center."

To file a Federal trademark application, you will need to identify the owner of the trademark, the trademark (is it a Logo or Standard Character mark), whether you are claiming color or not, the good and/or services sought for protection, and the basis of your application.

At the USPTO, you can file and list any of the following as the basis for your trademark application:

• your trademark is already in use in commerce
• you have a bonafide "intent to use" the trademark in commerce
• you have a foreign application or registration that you wish to use as the basis for seeking US trademark protection/registration

Trademark Already "In Use"

To support a Federal trademark application on on "In Use" basis, you will need to submit a specimen demonstrating (ie. proving) that you have already commenced use along with your application.  

You will also need to provide a date of first use, and a declaration that you do not know of anyone else claiming the right to use.

Trademark for Bonifide "Intent to Use"

If you file an application before you have actually begun using the trademark in commerce, you do not need to provide a specimen demonstrating (ie. proving) that you have already commenced use along with your application.

However, you will later in the process be required to eventually prove use (and provide a specimen and fee) in order to attain a registration for your trademark.

Foreign Trademark Registration/Application

An application can be based on either a foreign application or registration (either directly or through the Madrid Protocols).  

In either case, you do not need to provide a specimen proving use in the United States.

The Examination Process to Register a US Trademark

Once you have filed a Federal trademark application, it will take some time for that application to be assigned to a USPTO Examiner Attorney (probably several months).  

Once assigned to an Examiner Attorney, the application will be reviewed to reach a determination if any defects render it ineligible for registration as a trademark, and if any existing Federal trademark registrations and/or prior filed trademark applications are in conflict with yours (so as to raise a "likelihood of confusion")

If any problems are found, they will issue a Office Action (also called a "non-final" Refusal).  If an Office Action is issued, you will have 3 months to address the Office Action issues with a further submission.  

This is yet another phase during which the assistance of a trained trademark attorney is of great benefit.

The Publication for Opposition Process to Register a US Trademark

If an application is approved for publication, that means that the USPTO will publish the same in the Official Gazette, and interested 3rd Parties may oppose the application if they feel it dilutes, or threatens their existing rights.

At this phase, it is not necessary for those 3rd Parties to have existing US trademark registrations (State or "common law" owners are eligible), nor for their US trademark registration or prior-filed application to have been raised in an Office Action by the Examiner Attorney.

If anyone files an Opposition, then you have the option to file an Answer and engage in a separate legal proceeding before the Trademark Trial and Appeal Board (TTAB) to defend against the Opposition.  If you fail to defend against the Opposition within the stated time limits, your Application will be deemed abandoned.  Likewise, if you unsuccessfully defend your application at the TTAB, your Application will be deemed abandoned.

For those reasons, it is advisable to seek the assistance of a trained trademark attorney at this phase.

The Registration Certificate

If your application successfully navigates all the above stages, it will mature into a trademark registration.  At that time the USPTO will issue a Trademark Registration Certificate, and you will have the right to use the ® Symbol to denote your trademark.  The USPTO no longer issues paper certificates (you get a digital one) unless you separately request and pay for paper certificates.

The Process to Maintain/Renew a US Trademark

Once you are issued a registration certificate for your trademark, the registration will remain valid for an initial period of 6 years from the date of registration.  At that time, between the 5th and 6th anniversaries, you will need to file a Section 8 Declaration, proving that you are still using the trademark for the stated goods/services.  At that time you will need to file a form, a specimen, and filing fees for the number of classes involved.  

If you fail to file within that period (or the automatic 6-month grace period), you will lose your registration, as it will be canceled.  Likewise, if your specimen is rejected, you may lose your registration.  Therefore, this is another phase where the advice and assistance of an experienced trademark practitioner attorney can be of great benefit.

Therafter, you will need to file a combined Section 8 and Section 9 Declaration between the 9th and 10th anniversary of the registration.  Again, you will need to provide proof that you are still using the trademark registration in the same class(es) of goods and/or services, and pay a filing fee. 

If you fail to file within that period (or the automatic 6-month grace period), you will lose your registration, as it will be canceled.  Likewise, if your specimen is rejected, you may lose your registration.  Therefore, this is another phase where the advice and assistance of an experienced trademark practitioner attorney can be of great benefit.

Thereafter, you will need to file to renew your trademark registration every 10 years. 

Take the First Step Towards Securing Your Brand

A trademark is more than a legal tool—it's a strategic investment in your business's future. By registering and maintaining your trademark, you're protecting your business's identity and ensuring long-term success.

If you're ready to secure your brand with a US trademark or if you have questions about the process, our experienced legal team is here to help. Contact us today to get started and schedule your consultation!

Contact us for a Free Consultation on your Trademark matter!