In the United States you can register your trademark at the federal level through the United States Patent and Trademark Office (“USPTO”).
Federal registration in the U.S. is not required to start using a trademark for your business, but registering provide significant benefits. First, a federally registered mark gives you rights throughout the entire United States, even in areas your business isn’t operating. This can be an advantage if your business is geographically limited now but plans to expand in the future. Second, federal registration grants you a collection of powerful legal presumptions that make it easier to succeed in suing someone for infringing on your trademark.
The first step is preparing an application for registration. The application will contain the mark sought to be registered and basic information about the owner of the mark. It will also need to list the goods and services you are using the trademark in connection with. Rights to a trademark only apply to the goods or services the owner uses the trademark on. Others are free to use the trademark for other goods or services if the use isn’t likely to confuse consumers. For example, this is why there are Dove chocolates and Dove soaps made and sold by two entirely different companies. The selection of goods and services is critical to registration, and an experienced trademark attorney can assist in properly framing an application.
Once an application is filed, an attorney at the USPTO will examine the application. They will compare the applied-for trademark to other registered marks, and if it is too similar to existing marks it may be rejected. An application may also be rejected for other reasons such as incompleteness. If an application is rejected, don’t worry–most applications receive at least one rejection prior to registration. The USPTO will allow the applicant an opportunity to respond and contest the reason for the rejection. Our trademark attorneys have substantial experience responding to and overcoming rejections to registration.
Once the examiner approves an application, the trademark will be published in the USPTO register and the public will have 30 days to object to the full registration of the trademark. The most common reason for objections is that the trademark is too similar to a mark that someone else is using but either hasn’t registered, or the USPTO did not cite against the application.
Once an application completes the objection period, an application based on existing use will proceed to register. If the application is on an intent to use basis, then a notice of allowance will be issued, and the applicant will have six months to show use (which can be extended up to three years with payment of fees). The USPTO recently switched over to providing digital certificates of registration, which will be delivered to the applicant. Once the mark is registered, the owner can use the ® symbol with the mark.
It is important to note that trademark rights and registration processes are jurisdiction-specific. We are highly experienced in filing, prosecuting, and obtaining United States trademark registrations. We also have an extensive network of over ten thousand lawyers around the world who help us facilitate international trademark protection for our clients.
