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How Federal Trademark Registration Works

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It is possible to register certain types of trademarks and service marks with the U.S. Patent and Trademark Office (PTO). Federal registration puts the rest of the country on notice that the trademark is already taken, and makes it easier to protect a mark against would-be copiers.

How does a mark qualify for federal registration?

To register a trademark with the PTO, the mark's owner first must put it into use " in commerce that Congress may regulate." This means the mark must be used on a product or service that crosses state, national or territorial lines or that affects commerce crossing such lines--for example, a catalog business or a restaurant or motel that caters to interstate or international customers. Even if the owner files an intent-to-use (ITU) trademark application (ITU applications are discussed in the previous set of questions), the mark will not actually be registered until it is used in commerce.

Once the PTO receives a trademark registration application, the office must answer the following questions:

  • Is the trademark the same as or similar to an existing mark used on similar or related goods or services?
  • Is the trademark on the list of prohibited or reserved names?
  • Is the trademark generic--that is, does the mark describe the product itself rather than its source?
  • Is the trademark too descriptive (not distinctive enough) to qualify for protection?

If the answer to each question is " no," the trademark is eligible for registration and the PTO will continue to process the application.

I know the PTO won't register a mark if it's not distinctive or already in use. But are there other types of marks that are ineligible for federal registration?

Yes. The PTO won't register any marks that contain:

  • names of living persons without their consent
  • the U.S. flag
  • other federal and local governmental insignias
  • the name or likeness of a deceased U.S. President without his widow's consent
  • words or symbols that disparage living or deceased persons, institutions, beliefs or national symbols, or
  • marks that are judged immoral, deceptive or scandalous.

As a general rule the PTO takes a liberal view of the terms immoral and scandalous and will rarely refuse to register a mark on those grounds.

If the PTO decides that a mark is eligible for federal registration, what happens next?

Next, the PTO publishes the trademark in the Official Gazette (a publication of the U.S. Patent and Trademark Office). The Gazette states that the mark is a candidate for registration; this provides existing trademark owners with an opportunity to object to the registration. If someone objects, the PTO will schedule a hearing to resolve the dispute.

Is it possible to federally register a mark made up of common or ordinary words?

Yes, if the combination of the words is distinctive. But even if the entire mark is judged to lack sufficient distinctiveness, it can be placed on a list called the supplemental register whereas marks that are considered distinctive (either inherently or because they have become well known) are placed on a list called the principal register. Marks on the supplemental register receive far less protection than do those on the principal register. The benefits granted by each type of registration are discussed in more detail in the next question.

What are the benefits of federal trademark registration?

It depends on which register carries the mark. Probably the most important benefit of placing a mark on the principal register is that anybody who later initiates use of the same or a confusingly similar trademark may be presumed by the courts to be a " willful infringer" and therefore liable for large money damages.

Placing a trademark on the supplemental register produces significantly fewer benefits, but still provides notice of ownership. This notice makes it far less likely that someone will use that identical mark; the fear of being sued for damages should keep potential infringers away. Also, if the trademark remains on the supplemental register for five years--meaning that the registration isn't canceled for some reason--and the mark remains in use during that time, it may be moved to the principal register under the secondary meaning rule (secondary meaning will be presumed).

Even if a mark is not registered, it is still possible for the owner to sue the infringer under a federal statute which forbids use of a " false designation of origin" (Title 15 U.S.C. Section 1125). It is usually much easier to prove the case and collection large damages, however, if the mark has been registered.

How long does federal registration last?

Once a trademark or service mark is placed on the principal register, the owner receives a certificate of registration good for an initial term of ten years. The registration may lapse before the ten year period expires, however, unless the owner files a form within six years of the registration date (called the Sections 8 and 15 Affidavit) stating that the mark is either still in use in commerce or that the mark is not in use for legitimate reasons.

The original registration may be renewed indefinitely for additional ten-year periods if the owner files the required renewal applications (called a Section 9 Affidavit) with the U.S. Patent and Trademark Office. Failure to renew a registration does not void all rights to the mark, but if the owner fails to re-register, the special benefits of federal registration will be lost.

What happens if there is a conflict between an Internet domain name and an existing trademark?

To establish a Web site, the owner must first register the site name with a non-profit organization called InterNic. As a general rule, InterNic will register any name that it hasn't already registered, without regard to whether the name is in fact a trademark owned by a different company. This has led to a number of instances where companies with famous marks have initially not been able to use these marks when establishing Web sites because someone already used the name to identify another site.

Courts have generally sided with the trademark owners in these disputes and ordered the domain name user to stop using the offending name, even when no goods or services were being offered on the Web site.

Also, to respond to the legitimate interests of trademark owners--and to keep from getting sued as an enabling (contributing) infringer--InterNic lets an established trademark owner contest the use of a domain name that infringes the owner's mark, and in some cases requires the domain name owner to either stop using the name or post a bond to cover any damages suffered by the trademark owner while the dispute is settled in court.

Can a business register its mark at the state level?

It is possible to register a mark with the state trademark agency, although the state registration does not offer the same level of protection provided by federal law. The main benefit of state registration is that it notifies anyone who checks the list that the mark is owned by the registrant. This fact will lead most would-be users of the same mark to choose another one rather than risk a legal dispute with the registered mark's owner. If the mark is also federally registered, this notice is presumed and the state registration isn't necessary. If, however, the mark is used only within the state and doesn't qualify for federal registration, state registration is a good idea.

How To Register a Trademark

For most trademarks already in use, federal registration is a relatively straightforward process. You use a simple two-sided form provided by the PTO to:

  • describe your mark
  • state when it was first used
  • describe the products or services on which the mark will be used, and
  • suggest the classification under which the mark should be registered (there are approximately 40 classifications for goods and services; the PTO can help you figure out which one is right for your mark).

In addition, your form must be accompanied by:

  • a " drawing" of your mark (for word marks, this simply involves setting the mark out in the middle of a page in capital letters),
  • samples of how your proposed mark is being used, and
  • the registration fee--currently $325.

On its website, the PTO offers two electronic registration options. prinTEAS lets you fill in the form online but requires you to print out and mail in a hardcopy. eTEAS lets you both fill in the form online and file it via E-mail. These options are available at www.uspto.gov

If you are applying to register your mark on the basis of its intended use, then you needn't provide the samples or the date of first use, but you can't complete your registration until you put your mark into actual use and file some additional paperwork with the PTO.

The USPTO offers a free booklet containing plain English instructions for filling out this form, and also provides help on its Web site: www.uspto.gov.

Copyright © 1999 Nolo.com Inc.

Last updated: Oct 21, 1999




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