This article provides a brief guide to registering a trademark for a product or services in the United States.
What Is A Trademark?
A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies goods or services and distinguishes them in the marketplace. A trademark can refer to both a trademark or a service mark, with the former used to identify goods and the latter services.
Registering a trademark provides a business with certain legal protections that prevent others from exploiting the same or very similar marks.
To protect a trademark at the federal level in the US, a trademark should be registered with the Patent and Trademark Office (USPTO). It is not a legal requirement to register a mark with the USPTO, but it is strongly recommended for businesses expanding their presence in the marketplace.
Registering a trademark starts with performing a search for identical or similar marks already registered. This first step is vital and avoids the prospect of an application being rejected and application fees wasted.
The USPTO’s trademark database is known as the Trademark Electronic Search System (TESS). This will show any trademark has already been registered or applied for that is:
- similar to the trademark being applied for
- used on related products or for related services, and
A trademark that meets all three criteria will almost certainly be rejected.
US law provides for two types of trademark application: a use-based application or an intent-to-use application.
A use-based application should be filed if the trademark is being used in commerce in the US at the time of the application. To apply for a use-based trademark, the applicant must provide evidence of the mark’s use in commerce.
An intent-to-use application can be filed if the applicant has a “genuine intent” to use the trademark in the future. If granted, a Notice of Allowance will be issued, and the trademark should be used in commerce within six months of approval. Evidence will need to be provided of the trademark’s use, although further six-month extensions can be applied for up to five times.
The USPTO accepts intent-to-use applications from overseas businesses wishing to register their trademark in the US. This may be done via the Madrid Protocol, a system for the registering of trademarks worldwide. However, the applicant will have to provide evidence of the trademark in use before it is registered in the US.
Timelines And Costs
Most applications are completed online via the USPTO’s Trademark Electronic Application System (TEAS). The TEAS has two filing options: the TEAS Plus; and the TEAS Standard.
TEAS Plus is the cheapest option at USD250 per trademark class but has more up-front requirements. TEAS Standard costs USD350 per class but has fewer up-front requirements. It also allows applicants to provide a custom description of the goods or services they intend to trademark.
Provided the USPTO finds no issues, the time between submitting a trademark application and USPTO approval typically takes about six months. After approval, the application is published in the Trademark Official Gazette for 30 days, during which time any third party potentially harmed by the mark can oppose it.
If the USPTO raises objections to an application, it will issue an Office Action giving the applicant six months to respond.
Therefore, in order to avoid any protracted and costly disputes, it is recommended that the services of a trademark attorney are engaged, as these will have specialist knowledge of the application process and potential pitfalls.