Trademark Registration: Federal Level

What does a trademark registration on the federal level entail? What rights and protections does it grant? And most importantly, what is the process to get one?

Federal registration is a part of the trademark protection in the United States. The Lanham Act is the main statute for the federal registration. Overall, it deters potential infringers. Federal registration can be done through a trademark attorney. For registration, an application and a drawing of the specific trademark must be filed with the U.S. Patent and Trademark Office accompanied with a proper filing fee for each class of registration.

How much is the fee?

The filing fee varies depending on how the application is submitted. Besides, that the filing fee must be submitted for each class of registration. There is a list of classes of good and services that USCIS uses. The owner of the mark may choose to register the mark either in one or several classes. The mark gets protection in the class of goods/services in which it is registered. For example, if a business is using the mark in relation to selling clothes, it is one class. If a business is using the mark in relation to selling clothes and food, it is two classes. In the latter case the filing fee will be multiplied by 2.

What kinds of specimen are acceptable?

A specimen should demonstrate how the mark is being used in relation to the goods/services. Such a specimen can be pictures of the price tags next to the goods, packaging material which displays the mark, instructions of use, pictures of the goods at the store, screenshots of the online stores, websites, advertising materials, etc.

What is the difference between the registration based on the “use in commerce” and “intent to use”?

The applicant for the trademark registration must indicate in the application the date when the mark was first used in commerce. If the mark was not used in commerce yet, the filing must be made based on the “intent to use”. If it is stated that a mark is to be used in commerce on some future date, the USPTO will issue a Notice of Allowance (NOA) instead of the Registration Certificate. This filing basis requires the applicant to undertake certain actions before the mark can be registered, which are: (1) begin using the mark in commerce and (2) filing a Statement of Use that includes a specimen and an additional filing fee ($100 per class). The issue date of this Notice of Allowance establishes the due date for the filing of a Statement of Use (SOU) or a Request for Extension of Time to file a Statement of Use. A SOU must be filed before a registration certificate can be issued. The applicant has six (6) months from the NOA issue date to file either:

  • -An SOU, if the applicant is using the mark in commerce with a filing fee of $100 per class
  • or
  • -An Extension Request, if the applicant is not yet using the mark in commerce with $150 per class.
If an Extension Request is filed rather than a Statement of Use, a new request must be filed every six (6) months until the Statement of Use is filed. The applicant may file a total of five (5) extension requests. Please keep in mind that a Statement of Use cannot be filed more than thirty-six (36) months from the date the NOA issued.

What disclaimers may be required?

Remember that the registration of the mark gives its owner the exclusive right to use this mark in association with particular goods or services. For this reason common use words cannot be registered as a trademark, unless this word was not used and cannot be used by the general public in relation to the certain good or services. A good example of this is Apple. It would be impossible to register the word “apple” in relation to growing or selling fruits. However, the word was not in common use in relation to computers and other electronics; therefore, now it is a trademark of the company. Now imagine a combination of several words is proposed for the registration as a trademark. A disclaimer may be required that an applicant will not have the right for the use of separate words outside of the submitted combination. For example, “travel agent for your mind and soul”–a disclaimer is required that the applicant does not expect to have any ownership rights for the use of the words “travel”, “agent”, “mind”, or “soul” outside of the provided specimen. The disclaimer will also be required if a geographical name is a part of the mark: for example, “New York best yellow bee honey”. A person’s name can be registered as a trademark. Actually this is exactly what most public figures do (singers, actors, artists). The consent of the person whom the name belongs is required. Other details of the trademark application that can be found on www.uspto.gov.

What happens once the application is submitted?

The applicant gets a filing receipt with the details of the information submitted within the application and a serial number immediately upon filing. A serial number is assigned to every application and is subsequently used to track its progress. About four (4) months after filing, an examining attorney from the USPTO determines if the trademark may be registered. If some questions arise either about the application or the mark itself, the attorney issues an office action letter that contains questions, references to the laws, and may specify the changes that need to be made in order for the mark to be registered (such as the necessary disclaimers must be provided, for example). The applicant has six (6) months from the date of the letter to reply to it. If no response is received, the application will be considered abandoned.

Once the trademark attorney is satisfied that the mark is suitable for registration, it is published in the USPTO Official Gazette for the period of 30 days. The publication is done to put the public on notice that a certain mark was submitted and is awaiting the registration. It is an opportunity for anyone who considers the mark to be infringing to oppose the registration. If opposition is submitted, the application together with opposing papers are transferred to the U.S. Trial and Appeal Board.

The process before the Trial and Appeal Board is similar to the regular court proceedings - there is an applicant and an opposer who are similar to the plaintiff and defendant in a regular court action; there are judges; there is a discovery and motion practice; however, the proceedings before the U.S. Trial and Appeal Board definitely have their own specifics. The assistance of an experienced trademark attorney is vital at this stage. Not many marks get opposed in real life. If no opposition was submitted during the publication period, the mark will be duly registered and a Certificate of the Registration will be issued. Remember that the trademark registration is not permanent in nature. It has to be renewed before the expiration of the five-year period since the date of its registration. If no renewal application is timely submitted, the mark will be considered abandoned and available to other market participants for use.

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