United States: Filing A Federal Trademark Application

Last Updated: November 5 2018
Article by Michael J. Schwab

This Note discusses how to prepare and file an application to register a trademark or service mark with the US Patent and Trademark Office (USPTO). It outlines the elements of an application for a mark on the Principal Register based on use or an intent to use in commerce. It includes practical guidance about all aspects of the application process, from preliminary discussions with the client about the proposed mark, through prosecution of the application, to post-registration maintenance.

Federal registration is important to protecting trademarks, which are often among a business entity's most valuable assets. However, not getting the right information from the client, application filing omissions, and other mistakes can lead to costly delays and a loss of priority over competing marks. This Practice Note outlines the steps for registering a federal trademark or service mark with the US Patent and Trademark Office (USPTO) and provides practical guidance for avoiding problems along the way.

PRELIMINARY CONSIDERATIONS

A federal registration grants the trademark owner substantial benefits and more expansive rights than are available for an unregistered mark under the Lanham Act or state law (see Practice Note, Acquiring Trademark Rights and Registrations: Benefits of Federal Registration (2-505-1700)).

This Note covers:

  • The requirements for registration on the USPTO's Principal Register (see Principal or Supplemental Register (W-013-9729)).
  • Federal trademark applications for trademarks for goods or services, or both.

It does not provide instructions for:

  • Registration on the Supplemental Register.
  • Applications for concurrent use marks, certification marks, or collective marks.

In this Note, "trademark" and "mark" refer to both trademarks and service marks.

TIMING

Obtaining a federal trademark registration typically takes at least one year (assuming the application is successful). However, it may take much longer than that. The timing depends on a variety of factors, including the extent to which the USPTO or third parties object to registration of the mark and the USPTO's backlog of pending applications.

For a visual representation of the general process for registering a trademark in the USPTO, see US Trademark Application Flowchart: Use-Based Application (9-519-0444) and US Trademark Application Flowchart: Intent-to-Use Application (8-519-0487).

PRE-FILING STEPS

Obtaining Information from the Client

Counsel should obtain complete information from the client about a new mark the client seeks to register in order to:

  • Evaluate the mark's protectability and registrability.
  • Prepare and file the application with the USPTO.

Important trademark information to discuss with the client includes:

  • The format of the mark, for example, if it is a standard character mark, a stylized or design mark, or a non-traditional mark, such as a sound mark.
  • Variations of the mark that the client is using or may use, which may require separate clearance and registration.
  • Any meaning or significance of the proposed mark in:

    • any foreign languages; or
    • the applicant's field or industry.
  • The goods and services in connection with which the mark is being or is intended to be used and for those goods and services, the relevant:

    • trade channels; and
    • target consumers.
  • If the mark has been used in commerce, details about the use, including:

    • first use dates;
    • any prior (or concurrent) users;
    • the duration of the use; and
    • its geographic scope.
  • Details about the origin of the mark, including who created it and when it was created.

For more on what information counsel should seek about the proposed mark, see Standard Document, Trademark Search and Registration Questionnaire (0-508-1487) and Trademark Searching and Clearance Information Checklist: Key Information to Obtain About the Trademark (9-508-1831).

Searching and Clearance

Before filing, counsel should evaluate the client's proposed mark and, ideally, clear it for registration by:

  • Ensuring that it qualifies for federal registration under the Lanham Trademark Act (Lanham Act), related regulations, and applicable USPTO rules including, for example, that the mark is:

    • used in a type of commerce that Congress can regulate (for example, in connection with goods or services in or affecting interstate commerce); and
    • distinctive (meaning that the mark is not a generic term or merely descriptive of the applicable goods or services).
  • Obtaining and evaluating a trademark search report to ensure the mark is not confusingly similar to any marks previously registered with the USPTO or applied for or used by third parties.

Analyzing a trademark's eligibility for federal registration and trademark search results requires knowledge of trademark law and is typically performed by an experienced trademark attorney. For a list of resources on the search and clearance process, see Trademark Searching and Clearance Toolkit (W-012-4884).

Knock-Out Searches

Trademark searches typically consist of an initial preliminary (knockout) search followed by a full, comprehensive search. However, even if the client lacks the time or budget for the full search, counsel should still conduct the knock-out search to identify any obvious conflicts.

Knock-out searches may be done relatively quickly and inexpensively using free databases, such as the Trademark Electronic Search System (TESS), the USPTO's searchable online database of registered marks and applications. For more information, see Practice Notes, Trademark Searching and Clearance: Preliminary Trademark Searches (4-507-2834) and Acquiring Trademark Rights and Registrations: Knock-Out Search (2-505-1700).

PREPARING THE APPLICATION

PRINCIPAL OR SUPPLEMENTAL REGISTER

Most applications are filed for registration on the USPTO's Principal Register, which grants the trademark owner the most protection. A certificate of registration on the Principal Register entitles the registrant to important legal presumptions, including that:

  • The trademark is valid.
  • The registrant is the owner of the mark.
  • The registrant has the exclusive right to use the mark in commerce on or in connection with the goods or services specified in the registration.

(15 U.S.C. § 1057(b).)

However, some terms that do not qualify for registration on the Principal Register may be eligible for registration on the Supplemental Register. These are usually merely descriptive marks for which the trademark owner cannot yet demonstrate acquired distinctiveness.

For more on the difference between the Principal and Supplemental Registers, see Practice Note, Acquiring Trademark Rights and Registrations: Principal Register (2-505-1700) and Supplemental Register (2-505-1700).

This Note covers the requirements for registration on the Principal Register.

FILING BASES

Trademark applications must claim at least one of four filing bases. The two most common bases, and the only ones covered in this Note, are:

  • Use in commerce based on Section 1(a) of the Trademark Act (15 U.S.C. § 1051(a)) (see Use in Commerce).
  • Intent to use (ITU) based on Section 1(b) of the Trademark Act (15 U.S.C. § 1051(b)) (see Intent to Use).

However, an applicant outside the US can benefit from its home country's participation in international trademark agreements by filing under one of the following other bases:

  • As a qualified foreign applicant under Section 44 of the Trademark Act, which allows the applicant to base its application on certain foreign applications or registrations (15 U.S.C. § 1126). If applicable conditions are met, the effective filing date for the US application is the applicant's foreign application filing date. However, to achieve registration in the US, a §44 applicant needs to either:

    • have a qualifying foreign registration; or
    • also assert US use or intent to use.
  • (Trademark Manual of Examining Procedure (TMEP) § 1003.03.)
  • By seeking an extension of protection to the US under the Madrid Protocol, based on the applicant's home county application or registration and Section 66 of the Trademark Act (15 U.S.C. § 1141f). A Madrid Protocol applicant asserts an intent to use the mark in the US as part of its application. However no use is required before registration. (TMEP § 1904.01.)

Use in Commerce

A use-based (or Section 1(a)) application claims actual use of a mark in commerce on or in connection with the goods and services listed in the application. The use must be a bona fide use in the ordinary course of trade and not use solely made to reserve trademark rights (see Use-in-Commerce Requirements).

The mark must have been used on all the goods and services in the application, unless the applicant also claims an intent to use as a basis for some goods or services. An applicant cannot claim both bases for the same goods and services and must specify which basis covers which goods and services (37 C.F.R. § 2.34(b)).

Intent to Use

An ITU (or Section 1(b)) application is based on a bona fide intent to use the mark in connection with the goods or services listed in the application even though actual use has not yet taken place (15 U.S.C. § 1051(b)). The USPTO examines and publishes ITU applications the same way as applications claiming prior actual use of the mark. However, if the ITU application survives the examination and opposition process, the USPTO issues a Notice of Allowance.

To obtain a registration, the ITU applicant then must file an Amendment to Allege Use or a Statement of Use, along with appropriate evidence showing that it has used the mark in commerce on or in connection with the goods and services listed in the application (see Notice of Allowance).

For more on Notices of Allowance and filing a statement of use, see Standard Document, Client Letter: Trademark Notice of Allowance (W-012-7984).

APPLICATION REQUIREMENTS

The USPTO grants a filing date for an application that includes, at a minimum:

  • The applicant's name.
  • A name and physical address for correspondence.
  • A clear drawing of the mark.
  • A listing of the goods or services.
  • A filing fee for at least one class of goods or services.

(37 C.F.R. § 2.21; TMEP § 202.)

In most cases, the filing date is the effective date for determining filing priority or constructive use against third parties. The USPTO rejects any application that does not include the required elements. However, an application that contains only those elements is not considered complete and will draw an office action in which the examining attorney (also referred to as a trademark examiner or examiner) requests additional information.

To be considered complete, a trademark application must include the following:

  • The applicant's name and address (see Name and Address of the Applicant).
  • The applicant's legal entity type and citizenship (see Type of Legal Entity and Citizenship).
  • Correspondence name and address (see Name and Address for Correspondence).
  • A drawing of the mark (see Drawing or Depiction). A description of the mark, if it is not in standard characters (see Description of the Mark).
  • A list of goods and services covered by the application (see The Goods and Services Specification (or Identification)).
  • The international classes of the goods and services (see Goods and Services Classification).
  • For a use-based application:

    • the dates of first use of the mark (see The Date of First Use in Commerce and The Date of First Use Anywhere); and
    • a specimen of use of the mark in connection with goods or services in each class in the application (see Specimen of Use).
  • A verified statement or declaration (see Verified Statement or Declaration).
  • Additional statements, as applicable (see Additional Statements). The applicable fee (see Fee).

(37 C.F.R. §§ 2.32, 2.33, 2.34; TMEP § 818.)

The electronic forms on the USPTO website prompt filers to include this information.

Name and Address of the Applicant

The applicant must be the owner of the trademark that is in use or, if it has not yet been used, a party entitled to use the mark in commerce. The owner does not have to be the one using the mark; the use can be by a related company. However, where the mark is used by a related company, the owner must control the nature and quality of the goods sold or services rendered under the mark. (TMEP § 1201.01.)

If an applicant does not own or is not entitled to use the mark at the time of filing, the application is void. It cannot be amended to name the correct party as the applicant, because the applicant has no right that can be assigned. (TMEP § 803.01.)

If an individual applicant is doing business under another name, the application should include both the real name and the assumed business name in the application (TMEP § 803.02(a)).

The applicant does not have to be a US citizen and can be an individual, partnership, corporation, or any other type of legal entity.

The application must include the applicant's mailing address, which appears on the registration certificate. Specific address requirements vary depending on the type of applicant, as follows:

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Michael J. Schwab
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