Last Published: 10/7/2020

It is your choice whether to apply for federal trademark registration. You can always rely on common law rights based on use alone, which give you limited protection in your specific geographic area of use. However, if you want to protect and grow your business, you might consider federal registration.

The U.S. Patent and Trademark Office (USPTO) reviews trademark applications and determines whether an application meets the requirements for federal registration. Federal registration on the Principal Register provides several advantages, including the following:

Constructive notice to the public of the registrant's claim of ownership of the mark;

  • A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • The ability to bring an action concerning the mark in Federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries; and
  • The ability to file the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods.

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers your mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

Starting the process
Step 1: Is your product or service eligible for registration?
Most applicants base their U.S. application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future. What is "use in commerce"? For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade and not use simply made to reserve rights in the mark.

Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

Step 2: Determine what type of trademark you want to register.
You can apply to register your trademark as a standard character trademark or a special form trademark. The type you choose affects your scope of protection. Learn more about trademark types and drawings

Step 3: Understand how the type of trademark you want to register affects your application. 
The type of trademark you want to register changes your trademark submission requirements. A standard character trademark requires very little information, while a special form trademark requires you to submit a JPG version of the trademark and a description of the trademark. Once you submit your application, you cannot change to a different trademark or materially alter the trademark you submitted.

Step 4: Search to see if anyone else has applied for or registered a trademark that’s confusingly similar to yours.
Complete a comprehensive search to make sure that someone else hasn’t already registered or applied for a trademark that’s the same as or too similar to yours using the Trademark Electronic Search System (TESS). If someone else already has done so, the USPTO may refuse your application because of a likelihood of confusion between your trademark and the other trademark. It’s your decision whether to file your application after conducting a search. The USPTO cannot provide any preliminary determination of registrability of any mark prior to the filing of an application.

Step 5: Identify and classify your goods or services. 
You can use the Trademark ID Manual to identify and classify what goods or services you’re offering. The number of classes of goods or services you have affects how much your application costs. Once you file your initial application, you cannot expand the scope of your goods or services. You may only narrow or delete them.
 
Step 6: Know your filing basis.
A filing basis is the legal or statutory basis for filing an application to federally register a trademark in the United States. You must specify in your application which filing basis you’re using, such as “use in commerce” or “intent to use in commerce,” and meet the requirements for the basis you’ve selected. Learn about the different types of filing basis options.

Step 7: Choose your application form.
To apply, you must use the Trademark Electronic Application System (TEAS) to complete the initial application. The initial application form has two filing options: TEAS Plus and TEAS Standard. Costs differ between filing options because the filing options have a different number of up-front requirements. You can pay by credit card, through an existing USPTO deposit account, or via electronic funds transfer.

Registering a trademark overseas
Federal registration is not valid outside the United States. However, if you are a qualified owner of a trademark application pending before the USPTO or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the International Bureau of the World Property Intellectual Organization, through the USPTO.

Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. See the USPTO’s Trademark Manual of Examining Procedure (TMEP) Chapter 1000 for further information and consult the trademark law of each relevant country.

For general trademark information, explore www.uspto.gov/TrademarkBasics and download the Trademark Basics booklet. If you have questions, please contact the Trademark Assistance Center.
 

 




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