US Trademark Registration Process – How to register a trademark
A US Federal trademark registration is prima facie evidence of the validity of the registered mark and registration, the registrant’s ownership of the mark, and the exclusive right to use the mark in commerce in connection with the specified goods and/or services. For a discussion of the many benefits of a US trademark registration, please see our FAQs.
How to register a trademark?
A US trademark is filed with the United States Patent and Trademark Office. Because trademark law which applies to the filing of federal US trademark applications is quite complicated, it is generally recommended to hire a trademark attorney (USPTO advises to hire a trademark attorney) to help you in preparing a trademark application which best suits your needs and to avoid the many pitfalls of the US trademark registration process and of course expensive trademark litigation. For a basic overview of the US trademark process please see below:
Basic Requirements for Federal Registration
An applicant may file an application for federal trademark registration based on either
- Bona fide intent to use (See Flow chart for intent-to-use applications); or
- Actual use of the mark for goods offered (transported) or services rendered in commerce.
The term “use in commerce” as defined under the Lanham Act means a bona fide use in the ordinary course of trade, and not merely to reserve a right in a mark (15 USC §1127). With regard to a use-based trade-mark the goods must be transported from one state to another (interstate commerce) and the services must be used in the sale or advertising of services rendered in commerce. For a detailed discussion of the use acceptable for trademark and service mark applications see the blog post Specimen – trademark use and de minimis use.
Use-based Trademark Registration Procedure
The US trademark registration process for an application based on actual use includes the following steps:
1. Filing the trademark application, including a statement of use and one specimen; (15 USC § 1051(a))
2. Examination, about 3 months after filing the trademark an examining attorney will examine the application to determine, inter alia:
- that the mark acts as a mark, or is capable of becoming a mark. For a detailed discussion see What can be trademarked? ; and
- that the mark does not conflict with any previously registered mark;
It is quite common that the USPTO issues an Office Action notifying the applicant regarding problems with the application. The Office Action will state why registration is being refused. In order to avoid a refusal based on the above grounds, our firm offers a flat fee service that includes an examination of your trademark’s registrability and a comprehensive trademark search at $450. Not only will you avoid losing the official application fee (Official fees are not reimbursed by the USPTO) but also a possible threat of expensive trademark litigation or opposition proceedings.
3. publication for opposition on the Principal Register, if the
4. a 30 day opposition period in which any third-party may file an opposition against the trademark application. This initial 30 day period is extendable.
5. Issuance of registration – after two to four months after close of the opposition period the USPTO will issue a registration certificate.
Intent-to-use Registration Procedure
In contrast to a used-based application, intent-to-use applicants can seek trademark registration only on the Principal Register. The filing procedures includes:
1. filing a trademark application, including the declaration of bona fide intent to use the mark in commerce on the goods or services;
2. examination for registrability and, if acceptable, publication for opposition
3. issuance of a notice of allowance following expiration of the opposition period; and
4. submission of a statement of use and a specimen within six months off issuance of the notice of allowance. Extensions of time for an additional 30 months may be obtained.
5. Issuance of registration – the USPTO will issue a certificate of registration.
An intent to use application may be amended to allege use at any time between the filing of the application and the date of approval of the mark for publication. The amendment must, among other things, contain one specimen and the statement that the applicant is now using the mark in commerce on the goods and/or services specified in the application. If the amendment is accepted, the application will then be processed as an application based on use. This means that once any opposition is overcome, or the time oppose has expired, no notice of allowance will issue nor with a statement of use be required. Rather the registration will issue and the certificate of registration will be forwarded.
