Guide to Registering a Trademark in USA with the US Patent and Trademark Office - USPTO
Businesses aspire to establish a presence in the United States as one of the world's most desired marketplaces. In 2021, it ranked second in trademark applications, second only to China, underscoring its significant role in trademark protection worldwide. By securing a trademark registration in the US, you are taking a crucial step towards safeguarding your intellectual property within the world's largest and most influential economy. It will not only shield your brand from potential infringement but give you access to a multitude of other benefits.
Trademark registration is especially important for startups too, demonstrating awareness of marketing protection and signaling valuable intellectual assets to potential investors. Research by the UCLA in 2021 revealed that companies with a higher number of trademark registrations tend to experience better stock performance, further highlighting the positive impact of trademark registration on a company's overall success. This is supported by a recent study by the European Patent Office (EPO) in 2023, showing that startups with trademarks and patents are over 10 times more likely to secure funding during their early growth stages, emphasizing the importance of intellectual property in attracting investment.
The US has defied post-pandemic expectations with strong economic growth, resilient labor markets, and lower inflation. Its success is attributed to growth-focused policies and strategic investments, contributing to a positive global economic impact. The robust business environment in the US underscores the growing importance of intellectual property, particularly in the realm of e-commerce and the trust consumers place in well-known brand names.
In this comprehensive guide on how to secure a US trademark, we'll accompany you through each step of the application process. We'll focus on the essential requirements for both foreigners and locals and address several questions issues such as the benefits of a US trademark registration, the importance of conducting a thorough trademark validity search, and how to maintain your trademark once certified.
Trademark Registration in the USA: An Overview
To register a trademark in the United States, you must file an application with the United States Patent and Trademark Office (USPTO). The timeframe for trademark registration is generally between 6 and 12months, although this may be longer depending on the type of application and its complexity, and whether any objections or challenges arise. When you successfully register a trademark with the USPTO, your exclusive rights to that trademark typically begin on the registration date. Trademark registrations in the US maintain their validity for a period of 10 years, with the option to renew.
In the United States, as in other countries, such as Canada, trademark systems follow a "first-to-use" approach, where trademark rights are granted primarily to the entity able to demonstrate the longest use of the mark "in commerce" in USA territory. This concept of "first-to-use" prioritizes actual use of the trademark over another individual or entity that may file for registration. However, you must be able to support your claim of prior multi-state commerce use with evidence, when necessary, especially if a third party challenges your ownership.
The trademark registration process in the US is notoriously complex, making it one of the more challenging jurisdictions. US trademarks can also be costly due to the substantial government fees, which are assessed on a per-class basis. This means that the expense of registering a trademark can add up significantly, especially if you plan to protect your brand across multiple categories of goods or services.
State vs Federal Registration
If your business operates primarily at a very localized level, serving customers within your state and having no plans to expand beyond those boundaries, it's worth considering a state trademark application. State trademark registrations offer protection within the state, which can be more cost-effective and suitable for businesses with limited geographic reach. However, state trademark registrations do not provide the same level of protection nationwide, so if your business operates across multiple states or there's potential for expansion beyond your state, a federal trademark application may be a more comprehensive and advisable choice to safeguard your brand nationally.
Benefits of US Trademark Registration
Nonetheless, there are several compelling reasons as to why you should register your trademark in the United States. Here are 8 of them:
Nationwide protection: Given that the USPTO operates at the federal level, a registered trademark in the USA offers protection comprehensive protection for your goods or services across all 50 states. This protection empowers you to assert your trademark rights nationwide, irrespective of your physical business presence in particular regions. Please note that if you wish to operate in unincorporated territories of the United States such as Puerto Rico, the American Virgin Islands, American Samoa, and Guam, it's advisable to file local trademark applications as a registered US trademark doesn't inherently prevent others from registering the same trademark in these specific regions.
Exclusive rights and protection: The public USPTO database notifies competitors of your trademark rights, acting as a legal deterrent against others wishing to use a similar mark that may confuse consumers. It also helps to prevent the unauthorized use and counterfeiting of your brand.
Legal recourse and enforcement: Trademark registration grants you the ability to file a federal court action. It serves as prima facie evidence of your ownership and establishes a robust foundation for initiating legal proceedings in cases of infringement, pursuing compensation, and securing court orders to prevent unauthorized use of your trademark across the country.
Incontestable rights: After five years of continuous use following registration, you can file an Affidavit of Incontestability, making your trademark rights nearly immune to challenges in court.
Use of ® symbol: Registration grants you the right to use the ® symbol or "Registered Trademark".
- Brand enhancement: Registration increases your trademark's value as a business asset, helping to build trust and loyalty in your brand and rendering it more appealing to prospective investors, collaborators, and clientele. It offers opportunities for brand expansion and generating revenue through licensing or franchising agreements.
Assistance in domain name disputes: A trademark registration provides valuable evidence in domain name disputes and other online infringement cases.
Preventing importation of infringing goods: You can file your US registration with the US Customs Service to prevent the importation of goods that infringe on your trademark.
So, trademark registration in the United States delivers a host of advantages and safeguards for your brand or business, underscoring its pivotal role in fortifying and preserving your intellectual property assets.
The option of submitting a US trademark application is open to individuals and organizations worldwide. This includes:
Individuals: Any person who employs a mark in association with their goods or services, whether they operate as sole proprietors or entrepreneurs, can apply for a trademark.
Corporations and other business entities: Legally recognized entities such as corporations, limited liability companies (LLCs), partnerships, and other business organizations have the right to seek trademark protection for their brands.
Foreign entities: Foreign individuals or entities, whether currently using a trademark in US commerce or intending to do so, are eligible to apply for trademark registration. It's important to note that foreign applicants often require representation by a US-licensed attorney.
Non-profit organizations: Non-profit organizations that utilize or plan to use a trademark with their goods or services can pursue trademark registration.
Individuals or entities applying for a trademark or already holding a trademark registration are required to furnish and maintain an up-to-date domicile address in their trademark filings. As well as establishing the applicant or registrant's identity, this requirement determines whether they must be represented by a US-licensed attorney when submitting documents related to trademark affairs, as is the case for all foreign applicants.
The general requirements for a trademark application are as follows:
The full legal name and address of the applicant (either your company or your personal name).
Contact details, such as a telephone number and email address.
State of incorporation (if filing in your company's name) or citizenship (if filing in your personal name).
The trademark name you wish to register. If it's a logo, provide the image of the logo.
Specify whether the trademark has been used in the US, answering yes or no. If it has been used, provide the date of the first sale, or use in the US for each product and service.
List of the products you currently sell or plan to sell under your trademark.
List of the services you offer or plan to offer under your trademark.
If your trademark is already in use, include specimens of use. For products, these can be photos showing your trademark on the products or their packaging. For services, a screenshot of your website displaying your trademark may suffice.
There are several filing basis options for applying for a US trademark registration depending on your unique business circumstances. This includes "Use In-commerce" and "Intent to Use". Please see the Application Section below for a more detailed explanation.
Do I Need to Hire a Local Attorney?
All applicants, whether they are U.S. residents or foreign entities, must designate and maintain a US address for correspondence. This requirement ensures that the USPTO has a reliable means of communication with applicants. If you're a foreign entity or individual without a physical US address, you must appoint an authorized trademark attorney to receive communications from the USPTO on your behalf (See more in the For Foreigners section below).
Although not mandatory for non-US citizens and entities, the decision to hire an attorney merits careful consideration. If you choose not to hire one, be prepared to act as your own legal representative. An experienced US trademark attorney can conduct a comprehensive trademark clearance search, guide you through the intricacies of the trademark application process, address any ongoing communication with the USPTO, and resolve any potential obstacles that might emerge throughout the registration process. Following a successful application, they can also safeguard and uphold your trademark rights, represent your brand before the USPTO's Trademark Trial and Appeal Board, and protect against fraudulent solicitations.
Keep in mind that while engaging an attorney does not affect your application fees, the overall cost of filing will be higher due to legal fees. Nonetheless, it can be a cost-effective option in the long run since an attorney can provide expert advice on your trademark's registrability, manage, and streamline your application, and address various issues throughout the process.
Since August 2019, the USPTO has implemented a rule for foreign applicants. This means that for non-US citizens and entities, it is mandatory to enlist the services of a US trademark attorney to represent them in all trademark-related matters. This change has implications for both non-US residents and foreign companies looking to protect their brands in the United States and includes those from Canada who were once exempt. The scope of this new regulation extends not just to the application process but also to trademark renewals, document submissions, and even simple address modifications.
Considering the complexity of trademark registration in the US, involving several stages and critical legal determinations both before and after the application, this necessity of legal counsel should be regarded as a valuable resource rather than a hindrance.
The Madrid Protocol, also known as the Madrid System, is an international treaty that simplifies the process of registering trademarks in multiple countries. Administered by the WPO, the Madrid Protocol may at first appear to offer a streamlined and cost-effective approach for foreign entities aiming to protect marks across multiple countries, simplifying the process with a single application. However, the reality is that while the Madrid Protocol expedites the application process, the intricate nature of the US trademark system can often lead to Office Actions. The unique demands of US trademark applications, particularly concerning the specificity of goods, services, and classification categories, can swiftly complicate Madrid Protocol filings. In contrast, a tailored direct filing with the USPTO with the aid of a US trademark attorney enhances the prospects of a successful registration.
Our 5-Step Guide to Certification
In the following section, we offer our 5-step guide to the Trademark Application process in the US.
STEP 1 Conducting a Trademark Validity Search
Conducting a thorough trademark viability search is a fundamental step in safeguarding your brand's identity. Real trademark disputes in the US can serve as powerful reminders of this, underscoring that vigilant trademark searches are not mere formalities but essential safeguards against infringement and costly legal entanglements. Take the case of Red Bull, in which the similarity between their renowned "RED BULL" mark and an application for "PINKCOW" resulted in a protracted legal battle. Similarly, when Nike sought to protect its iconic "JUST DO IT" slogan against a registration for "JUSTSAYIT" on books promoting healthy lifestyles, their thorough trademark search and strong brand reputation played a vital role in the successful defense.
The Trademark Trial and Appeal Board sustained the opposition on grounds of possible confusion and dilution. In such cases, the Court of Appeals gives greater weight to the fame of a brand based on the enormous advertising costs involved in creating a very distinct mark and a product of lasting value. By prioritizing a comprehensive trademark search, a business can secure its brand's long-term success, preventing potential conflicts and ensuring their distinctive market presence.
Trademark Electronic Search System (TESS)
TESS stores comprehensive data on both current and past trademark registrations and applications. By utilizing this search tool, you can identify any potentially conflicting trademarks among the registered and pending ones. 3 main options are available: Basic Word Mark Search Word and/or Design Mark Search; Word and/or Design Mark Search. This examination will assist you in making an informed decision about pursuing your trademark registration.
Retiring TESS: What to know about the new trademark search system
As noted in a recent blog from our USPTO leadership, we will be retiring the Trademark Electronic Search System (TESS) on Thursday, November 30.
TESS will be replaced by our new trademark search system. This cloud-based system:
Provides a modern, more stable search experience
Offers a simplified search interface while supporting complex searching for advanced users
Supports new features and capabilities to adapt to the ever-evolving needs of the trademark community
Nominus also offers a trademark search tool for more than 70 countries. You can search by Trademark Name, Number or Applicant, and Class.
Please note that effective November 30, 2023, the USPTO intends to introduce a new cloud-based trademark search system, which will replace the current TESS. This upcoming system is designed to offer:
A contemporary, reliable search platform.
An intuitive interface for straightforward searches, with advanced options for experienced users.
Enhanced features and functionalities to meet the dynamic requirements of the trademark community.
The Nice classification system
The USPTO uses the international NICE classification system used to categorize goods and services for trademark registration purposes. NICE conveniently organizes goods and services into a total of 45 distinct classes. Goods typically fall under classes 1 to 34, encompassing tangible products that you can physically touch. Services are categorized into classes 35 to 45, covering intangible offerings. This mechanism ensures that trademarks are registered for the appropriate category of goods or services they will be associated with. Keep in mind that each class of goods or services you wish to register under your trademark will require a separate application and the accompanying filing fee.
When conducting a trademark search for your business, be diligent in casting a wide net and explore various possible similarities. Consider "Sunset Breeze Resorts" and "Sunset's Tropical Retreats"; these names may seem distinct at first glance, but they share a common element, "Sunset," and a similar theme related to holiday accommodation. Overlooking such subtle details can jeopardize your trademark registration efforts, so be sure to search comprehensively.
As well as our team of Experienced Trademark Attorneys at hand to help you with your application, Nominus offers a Comprehensive Trademark Study that can save you from potential obstacles and disappointments down the road. It involves a comprehensive assessment of the USPTO's vast trademark database and employs their absolute criteria to evaluate your trademark's registration prospects, with the aim of identifying potential obstacles such as prior filings that might result in Office Actions from the examiner or third-party oppositions. Identifying these conflicts early on helps you to make informed decisions about your trademark strategy.
STEP 2 Application
Having successfully conducted your trademark viability search, the next step involves gaining access to and completing the application form. For Non-US individuals or Entities or those that have enlisted their services, this will be completed by your Trademark Attorney. Typically, this process is facilitated via USPTO's digital filing mechanism known as the Trademark Electronic Application System (TEAS). This can be accessed via your MyUSPTO portal, which provides access to various USPTO tools and systems, including TEAS, for managing their intellectual property and trademark-related activities. It allows you to closely monitor and oversee your trademark applications and registrations in real-time.
To log into the MyUSPTO portal, follow these steps:
Create a USPTO.gov account: If you don't already have a USPTO.gov account, you will have to create one:
Navigate to the USPTO.gov website (www.uspto.gov).
Click on the "Sign in" link at the top right corner of the page.
On the sign-in page, click the "Create an Account" button.
Follow the steps to complete your account registration, including providing and verifying your contact information and creating a username and password.
Access MyUSPTO: After having successfully created your USPTO.gov account, login using your username and password. You should now be able to access the MyUSPTO portal by selecting "MyUSPTO" from your account dashboard or the website's main menu.
Within the MyUSPTO portal, you can access several tools and features to manage your intellectual property portfolio, including tracking your trademark applications and registrations, monitoring application statuses, and receiving email updates.
Once you're logged in to your MyUSPTO portal, select File a TEAS application.
If you haven't already done so, you will then be required to verify your identity using the ID.me digital identity verification service used by US government agencies to confirm the identity of individuals for various purposes.
To do this, you must also select a role, then click on Verify ID.me.
Having completed your ID Verification, you will be presented with two filing options to choose from. The first, TEAS Plus, demands more rigorous initial filing requirements while offering the benefit of lower fees per class of goods or services. On the other hand, TEAS Standard filing provides a more flexible alternative, although applicants must progressively fulfill all prerequisites and pay higher fees per class.
The majority of trademarks are registered in Standard Character format, which safeguards words, letters, numbers, or combinations thereof without constraints on font style, size, color, or design. It essentially provides protection for the core words, regardless of their visual presentation, as exemplified by the registered trademark: Disney. Other instances of standard character format trademarks encompass well-known brands such as "Ford: Built Ford Tough", "AT&T: The World Delivered", or "Adidas: Impossible is Nothing".
Several other registration options are available to suit different branding needs. These include Design Marks, which include specific design elements; Collective Marks, indicating group membership or endorsement, such as "Fair Trade Certified"; Certification Marks, signifying product quality or origin; Sound Marks such as the NBC chimes; and Motion Marks, covering moving images or animations such as MGM's iconic lion roar.
"Use in commerce" and "intent to use"
USPTO uses distinct filing bases, each with its own set of meanings and requirements depending on your business scenario.
Use in commerce: this refers to actively employing your trademark to sell goods or provide services across state and international boundaries your state's borders. For instance, consider you run an online software business based in Florida, and your software services are utilized by customers in New York, California, and Canada. This broad geographic usage demonstrates "use in commerce." Supporting evidence may include indicating the "date of first use", displaying your trademark on website pages, advertisements, labels, tags, packaging, or promotional materials as well as user agreements or service records demonstrating customers from different locations.
"Intent to use": If your trademark isn't currently in use but intend to do so within the next one to two years. For instance, you might be developing a productivity app, but it's still in the beta testing phase and hasn't been publicly launched. This scenario qualifies as "intent to use." While you can apply for trademark registration under this basis, actual registration hinges on demonstrating tangible use in commerce and filing the necessary TEAS form.
Foreign registration: If you already hold a registered trademark in your home country, you can use that registration as the basis for registering the same mark in the US. This can expedite the application process. You don't need to provide proof of trademark use for approval, but you will be required to submit a scanned Foreign Registration Certificate and a translation of your home country's registration. After your trademark is registered, you'll need to show that you're using the trademark during the 5th and 6th years following registration.
Foreign application: also known as Section 44(d) or Section 44(e), this is for trademarks filed in countries other than the US in the past six months. It's primarily used by foreign applicants who have already applied for or registered a trademark in their home country and wish to extend their trademark protection to the U.S.
Priority claim: A mechanism that allows a trademark owner to establish the priority date of their trademark in the US based on a prior application filed in another country or jurisdiction. Filing a priority claim allows the trademark owner to align their US trademark application's priority date with the filing date of their foreign application, ensuring their rights are recognized and protected in the US.
For both the Foreign Registration and Foreign Application bases, once your trademark registration is approved, you'll have additional requirements, including foreign registration certificate that features your trademark or proof of use in the United States. Please note that for all these application processes, proof of use must be submitted between the fifth and sixth years from the registration date's approval. We recommend consulting with a qualified trademark attorney for specific guidance on using these bases.
Importance of a clear description
It's important to provide a clear and specific description of the goods and services associated with your mark. This helps in accurately defining the scope of protection for your trademark. Your application may face rejection if you apply for goods or services beyond your current usage or intended future use. In such cases, additional inquiries might be made to confirm the precision of your descriptions. Let's say you are applying for a trademark in class 25 for goods related to clothing. If you initially provide a broad description such as "Clothing" without specifying the types of clothing, the USPTO may request a more detailed list of specific goods. In response, you would need to provide a list that could include items such as "t-shirts, jeans, hats, dresses, and footwear". This precision secures exclusivity and prevents similar trademarks in your market, reflecting your business offerings accurately.
USPTO offers the following recommendations to expedite the review process for your trademark filing:
When using TEAS Standard, you should use the Acceptable Identification of Goods and Services Manual (ID Manual) or include the likely International Class to streamline the process.
Respond promptly to formal communications, such as office actions, to allow more time for resolving issues and addressing unexpected IT problems.
Use the dedicated fields in electronic TEAS forms to provide comprehensive responses to office actions, including alternative arguments and solutions. Avoid separate explanations unless necessary.
For minor and straightforward issues, communicate directly with your assigned examining attorney to expedite the resolution process through examiner's amendments.
STEP 3 Formal Examination
Having submitted the application form, USPTO will evaluate whether the minimum filing conditions have been met. If they have, the application is assigned a serial number and forwarded to an examining attorney. This attorney meticulously scrutinizes the application to ensure it aligns with pertinent regulations and statutory requirements. A thorough search of the USPTO database is carried out for registered and pending trademarks to identify any conflicts, assess the trademark's industry relevance, and check the goods or services descriptions.
If your application is found to meet all legal registration requirements without substantive issues, it will be approved for publication. However, any discrepancies noted by the USPTO during the application review can lead to the issuance of an Office Action, so precision and completeness are vital to avoid potential setbacks when submitting your application. Office actions lead to a temporary suspension of your application until the issues identified are resolved. They must be addressed within a three-month period; failure to do so may result in your application being expunged. You can, however, request a one-time extension from the USPTO for an additional fee, giving you an additional three months to respond. Seeking guidance from your attorney in case an Office Action is issued can be instrumental in navigating the process seamlessly. Failure to resolve issues raised will lead to a final office action denying registration of your trademark. In the latter case, you can file an appeal with the Trademark Trial and Appeal Board (TTAB),
STEP 4 Publication in the Official Bulletin
If your trademark application successfully clears the USPTO's examination, it will be published in the Official Gazette for a 30-day period. This public disclosure serves as notice to others who may wish to challenge the registration of the trademark by filing a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB).
STEP 5 Certification
Providing there are no oppositions, your application will advance to the next phase, although your trademark will still not be registered at this point. Typically, it takes a further three to four months from publication to receive official notification about registration or the next steps. If your application is based on use in commerce, it will proceed to registration. However, if it's based on an intent to use, you'll receive a Notice of Allowance and must submit a Statement of Use (SOU) within six months with a specimen demonstrating your trademark's use in commerce to obtain a successful registration. Alternatively, you can request an extension, granting an additional six-month period.
After the USPTO approves your Statement of Use or extension, your trademark will be officially registered, and you'll receive a registration certificate, marking the successful completion of the trademark registration process.
Upon registration of your trademark, your electronic certificate of registration will be accessible via the Trademark Status and Document Retrieval (TSDR) system. To access the system, navigate to the official www.uspto.gov, then go to the "Trademarks" section, which provides links to various trademark-related resources. Look for the "Trademark Status and Document Retrieval (TSDR)" option. Click on TSDR to access the system. Enter your trademark application serial number or registration number, and you'll be able to view and download relevant documents.
You'll find a registration notification in the prosecution history, along with a certificate icon. Furthermore, an email containing the certificate link will be sent to trademark owners and all registered email addresses, allowing you to view, download, and print your registration certificate at no cost. This certificate serves as proof of your trademark's registration. Be sure to review the certificate for accuracy upon receiving the link. In the event of any inaccuracies, you can submit a request for amendment or correction using the Section 7 Request for Amendment or Correction of Registration Certificate TEAS form, which may entail a fee.
Monitoring the application
You can monitor the progress of your trademark application through the Trademark Status and Document Retrieval (TSDR) system (Please see the previous section on how to access TSDR). Once filed, you'll receive a serial number, allowing you to access your application's status, documents, and outstanding deadlines via TSDR. Note that new documents may not appear immediately, with typical upload times ranging from four to 80 days due to recent increases in the number of filings. After registration, you can continue to track your trademark's status using the application serial or registration number.
Maintaining your trademark
Providing you keep using your trademark "in commerce" and the required maintenance filings and fees are regularly submitted to the USPTO, your US trademark registration can remain in effect indefinitely. You should also ensure that your contact details are kept up to date. As the trademark holder, it's also your responsibility to protect your mark from potential infringements, given that the USPTO does not undertake this role for you. This entails diligent monitoring and enforcement of your trademark's use in the market. Should any infringements arise, collaboration with legal counsel is imperative to uphold and your trademark rights.
Once a trademark has been registered, the owner must submit a Declaration of Use or Excusable Non-use (Section 8 Declaration) 5 years after the registration date to confirm that the trademark is still in use "in commerce". Following that, a second maintenance document, known as a Section 9 Renewal, should be filed between the 9th and 10th years after the registration date. Failure to submit promptly the required documentation and fees may result in the cancellation of the trademark registration and the loss of associated legal protections.
Navigating the United States trademark registration process can be a daunting and time-intensive endeavor, particularly for those applicants residing outside the US. That's why Nominus recommends considering our Trademark Registration service. Our team of experienced professionals is well-equipped to handle a substantial portion of the tasks involved, from conducting trademark research to managing and filing the paperwork. You'll receive expert guidance every step of the way, making the trademark registration process more manageable and efficient for you. So, when you're ready to take the first step toward trademarking your brand, feel free to reach out to us through chat or email, and we'll get you started on the journey of trademarking your brand.