Trademark Basics

This section provides an introduction to trademarks as well as some of the most common questions and answers related to trademark filing. It's written in plain English to ensure it can be understood by the average person.

We recommend that you read all of the information provided below before going to the questions section.

Table of Contents:
  1. What is a Trademark?
  2. Establishing Trademark Rights
  3. Trademark Registration Requirements
  4. Trademark Registration Process
  5. Monitoring and Enforcing Trademarks
  6. Renewing Trademarks
  7. Top 25 Trademark Questions

1. What is a Trademark?

A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from those of others.

In other words, a trademark is a way to establish and protect a company and its products from other products which may be inferior or diminish their reputation. Anything that distinctly identifies a company can be a trademark, provided that it is for goods.

A service mark is the same as a trademark, except that it identifies and distinguishes a service rather than a product. Like a trademark, a service mark can include words, names, symbols and logos. Typically, trademarks appear on the actual product or its packaging. Service marks appear mostly in advertising for the services. Throughout the guide the terms "trademark" and "mark" refer to both trademarks and service marks.

2. Establishing Trademark Rights

Trademark rights are established by:

  • actual use of the trademark in commerce to sell a product or service
  • filing an “intent to use” application with the U.S. Patent and Trademark Office (USPTO) stating that the applicant has a bona fide intention to use the mark in commerce within the designated amount of time.
3. Trademark Registration Requirements

In order to successfully register a trademark with the USPTO, the following requirements must be met:

  1. The application must be filed in the name of the owner of the mark. The owner of a trademark is the person that uses the mark in commerce to identify the product or service it sells. The owner may be an individual, corporation, partnership, association or other type of legal entity.
  2. The applicant must specify the type of entity it is (individual, corporation, etc.). If for example the applicant is representing a corporation, the applicant must list the name under which the business or group is incorporated and the state (or foreign nation) under which it is organized. The citizenship of the applicant and a mailing address is also required.
  3. An important part of the application will be selecting the proper “basis” for filing. If the trademark has already been used in connection with the sale of goods or services, it would be filed under “Use in Commerce”. You must specify the date of first use of the mark in commerce and the date of first use of the mark anywhere. An applicant who has not yet used the mark may apply based on a bona fide or good faith intention to use the mark known as “Intent to Use”. Once the application has been filed with “Intent to Use” basis, and the intended mark has been approved, published for opposition and indicated as allowed, you will have six months to verify actual use and submit a specimen of use. It is possible, under certain circumstances to extend this six month period for up to two years.
  4. The applicant must submit a drawing of the trademark and if the application is based on actual use a specimen of the trademark is also required. A specimen is an actual example of the trademark being used on the goods or in the offer of services. You must show how you are actually using the mark in commerce. For goods, acceptable specimens would include tags, labels, instruction manuals, or containers that show the mark on the goods or packaging. Examples of acceptable service mark specimens are signs, photographs, brochures or advertisements that show the mark used in the rendering or advertising of the services. The specimens must be flat and no larger than 8½" x 11". DVDs, CDs and the like are also acceptable.

A drawing is a page that depicts the trademark you seek to register. In an application based on actual use, the drawing must show the trademark as it is actually used (i.e., as shown by the specimens). For applications based on an "Intent to Use", the drawing must show the trademark as the applicant intends to use it. A drawing is necessary even when a specimen is submitted.

4. Trademark Registration Process

Registering a trademark is a complex process that may take anywhere from six months to several years, depending on certain individual factors. After filing an application, the USPTO will assign your file a serial number and send you a receipt (generally within three weeks). Your application will then be carefully examined by a USPTO attorney who will determine whether or not the proposed trademark is entitled for registration. If the examining attorney decides that the mark is eligible for registration the trademark will be published in the Official Gazette for opposition. During this opposition period any party wishing to object to the registration of the mark may do so by filing a Notice of Opposition within 30 days (from the date of publication). If your trademark survives the opposition period, the USPTO will either issue a Certificate of Registration (if the application is based on actual use) or a Notice of Allowance (if the application was based on intended use).

5. Monitoring and Enforcing Trademarks

Once you register your trademark, you will have legal ownership of the trademark. Trademark enforcement requires constant monitoring to ensure that other companies are not infringing on your rights as a trademark holder. After spotting a potential trademark infringement issue, it is best to consult a trademark attorney.

6. Renewing a Trademark

In order for a trademark registration to remain valid the registrant is required to file a Declaration of Continued Use with the USPTO:

  1. between the Fifth and Sixth year after the date of registration of the mark, and
  2. within the year before the end of every 10-year period after the date of registration. (The registrant may file a Declaration within a six-month grace period after the end of the sixth or every tenth year by paying an additional fee)

Registrants must renew their trademarks within the year before the expiration date of a registration (or within a six-month grace period after the expiration date by paying an additional fee). There is no limit to the number of times a trademark can be renewed, as long as use of the trademark continues by its owner.

7. Top 25 Trademark Questions
Q. How long does it take to register a trademark?

A. Since many factors can affect the registration process it is difficult to determine the exact amount of time it will take to register a trademark. An applicant will receive a filing receipt along with a serial number (that will allow for monitoring of the file), generally within 3 weeks of filing. You should receive a response from the Office within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.

Q. What are the benefits of a registered trademark?

A. Federally registering your trademark provides several advantages:

  • Constructive notice nationwide of the trademark owners claim
  • The exclusive right to use the trademark on or in connection with those goods or services set forth in the registration
  • Provides official notice to others that the trademark is already in use, discouraging others from registering the same or similar mark
  • Gives the trademark owner an automatic right to sue in federal court
  • Use of the ® (the "Circle-R") symbol (only those with a valid federal registration are allowed to use the ® symbol)
  • Provides a tool to stop cyber squatters from taking your mark for a domain name
  • Registering a trademark in the U.S can be used as a basis for obtaining registration in foreign countries
  • Registration may be filed with U.S. Customs to prevent importation of trademark infringing foreign goods
  • Decreases the likelihood of another party claiming that your trademark infringes upon their trademark
Q. Do I need to register my trademark?

A. No. Under U.S. law, you gain trademark protection once you have used the mark "in commerce". This is often referred to as common law rights. However, when you federally register your trademark, you gain many advantages (as listed above)

Q. Do I have to be a U.S. citizen to obtain a federal trademark registration?

A. No. However, an applicant's citizenship must be stated in the application. . If an applicant (such as a corporation) is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, he or she must choose which citizenship will be printed in the Official Gazette and on the Certificate of Registration.

Q. Is a federal trademark registration valid outside the United States?

A. No. However, certain countries do recognize a United States trademark registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. The laws of each country regarding trademark registration must be consulted.

Q. What are "common law" trademark rights?

A. Common law rights arise from the actual use of a trademark in commerce. Common law rights are severely limited because they are restricted to the geographical area where the mark is used.

Q. Who can file a trademark application?

A. A trademark application must be filed by the owner of the mark. Generally, the person who controls the use of the mark, and controls the goods and services the trademark represents is the owner of the mark. This can be an individual, corporation or other legal entity. An application filed by anyone other than the owner will be declared void.

Q. How long does a trademark registration last?

A. Trademark registration rights can last indefinitely if the owner continues to use the mark to identify goods or services. However, in order for the trademark to remain valid, a Declaration of Use must be filed:

  1. between the fifth and sixth year following registration and
  2. within the year before the end of every 10-year period after the date of registration. Assuming that a Declaration of Use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term. Registrations granted on or after November 16, 1989 have a 10-year term. Trademarks can be renewed for additional 10-year terms. There is no limit to the number of times a trademark can be renewed, as long as use of the mark by its owner continues.
Q. How do I contest someone else using or attempting to register a trademark similar to mine?

A. There are several ways to dispute use of your trademark by a third party. However, given that each situation consists of different facts, it is best to consult an attorney specializing in trademark law.

Q. Can the ownership of a trademark be assigned or transferred from one person or entity to another?

A. Yes. All trademarks can be transferred or assigned from one person/entity to another by filing an assignment with the USPTO. Along with the mark, the assignment transfers the “goodwill” of any business that was associated with that trademark. Unregistered trademarks or those still pending may also be sold or assigned.

Q. What kind of review will the USPTO conduct after I file my trademark application?

A. After filing a trademark application, two main types of review will be conducted by the USPTO. The USPTO will first review your application to check whether you have completed the basic filing requirements. If you have met the basic filing requirements, the application will be forwarded to an examining attorney, who will determine whether federal law permits registration of the proposed trademark. The examining attorney will examine the written application, the drawing, and any specimen and will make sure that all the necessary requirements including the payment of required fees are fulfilled. If the examining attorney decides to refuse the registration, he/she will send you a letter called an Office Action. This letter explains the reasons for the refusal of the application and any procedural or technical errors that were found. Generally, the applicant will be granted a chance to correct any inadequacy in the application (except in case of conflict with other trademarks). If you receive an Office action, you must submit a response with corrections within 6 months of the issue date of the Office action. If you do not submit a response within the allowed amount of time, the application will be declared abandoned. If only minor corrections have to be made, the examining attorney will contact you by phone/email. If your application passes through all the examination procedures, your mark will be published in the Official Gazette. This will allow other parties 30 days (from the day of publication) to object to the registration of the trademark. If no objections are filed in the 30 days, the mark will become registered in anywhere from 3-12 months.

Q. Will the examining attorney search for conflicting trademarks?

A. Yes. The examining attorney must conduct a search of USPTO records to determine whether the applicant’s mark resembles any registered or pending trademarks that would likely cause confusion when used on or in connection with the goods or services identified in the application. The two main factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

  • The similarity of the marks; and
  • The commercial relationship (channels of trade or class of purchasers) between the goods/services listed in the application and those listed in the registration or pending application.

To find a conflict, the trademarks do not have to be identical and the goods/services do not have to be the same. It may be enough that the marks are similar and the goods/services are related.

Q. What are some other reasons the USPTO might refuse my trademark?

A. Registration may also be refused if:

  • The proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services
  • The proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services
  • The proposed mark is primarily merely a surname
  • The proposed mark consists of or comprises immoral, deceptive, or scandalous matter
  • The proposed trademark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute
  • The proposed trademark consists of or comprises the flag, coat of arms, or other government insignia of the United States or any state, municipality, or foreign nation.
  • The proposed trademark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased U.S. President during the life of his widow, if any, except by the widow's written consent.
Q. How can I obtain state registration of a trademark?

A. Generally, you can obtain the protection of state trademark registration by applying for and paying a fee to the Secretary of State (or comparable office) in the state where you are using the trademark. However, the benefits of federal registration greatly outweigh those of state registration.

Q. How do I know if I need trademark or copyright protection?

A. Both trademark and copyright registrations protect your intellectual property, however there are significant differences between the two. Copyright protects original works of authorship including literary, dramatic, musical, and artistic works. You can copyright poems, novels, movies, songs, computer software, and architecture. A trademark on the other hand protects a name, logo, slogan or sound (e.g. the name "Microsoft" or Nike slogan "just do it"). It is possible for some things to qualify for trademark and copyright protection. If a logo is an ornate image, it can be protected by copyright. When the logo is used to indicate the source of goods or services, it may also be trademarked (the holder of the copyright to the image and the owner of the trademark may or may not be the same). In other words, if you have written a novel or even a single sentence, and want exclusive rights to your original work, you would file for copyright protection. If you would like to sell goods or services under your company name and prevent consumers from confusing your brand with others, you would apply for a trademark.

Q. How do I list the products and/or services on my Trademark application?

A. It is required by the USPTO that all trademark applicants list and describe all the goods and/or services being sold (or that plan to be sold) in connection with the proposed trademark. This is an essential step in the trademark application because it will not only determine which uses of your trademark will be protected, but also what other requirements must be fulfilled in your application. There are 45 classes of goods and services that are used by the USPTO (34 for products and eleven for services). You must choose into which class your goods and/or services fall and provide a specific description. For example, if you are selling wooden chairs, your goods would fall into "Class 20: Furniture Products" and wooden chairs would be the specific product. You may list all the goods/services you plan to sell together as long as they are categorized in the same class. If they fall into a different class, you must add an additional class for each product/service (each additional class requires an additional $385, which includes the USPTO filing fee).

Q. What is a trademark specimen and how does it relate to goods and services?

A. A specimen is an actual example of how the trademark is being used in commerce in connection with the goods or services that your trademark represents. You need to include a specimen only if your application is based on actual use. For products, examples of acceptable specimens are tags or labels which are attached to the goods, containers for the goods, displays associated with the goods, photographs or digital images of an actual product on which the trademark is imprinted or engraved. Invoices, announcements, order forms, leaflets, brochures, catalogs, letterhead, and business cards are generally considered unacceptable specimens. For service marks, examples of acceptable specimens are signs displaying the mark, brochures, advertisements, business cards or stationery showing the mark in connection with the services, menus displaying the mark, or photographs showing the mark either as it is used in the rendering or advertising of the services. The specimen must show the mark and include a clear reference to the service (not just the trademark alone) to be considered acceptable.