United States Trademark Law: The Ultimate Guide

Registering your first trademark can be hard. Luckily, this guide covers everything you need to know about registering your mark with the USPTO.
19 de noviembre de 2018 por
United States Trademark Law: The Ultimate Guide
Jacob Tingen

Registering your first trademark can be one of the most important moments in the life of a small business owner.

When you first register your brand's unique mark and name with the U.S. Patent and Trademark Office (USPTO), you gain numerous legal protections which can help you safeguard your business in the future.

In this article, we'll cover almost every aspect of U.S. trademark law that you'll need to know to help grow your small business.

We'll be breaking this information down into four broad sections: understanding the basics, planning ahead, trademark registration, and how to protect your mark after you register it with the USPTO.

Contents:

Step 1: Understanding the Basics of U.S. Trademark Law

A trademark is a symbol, name, or other identifying feature that makes a consumer think of a specific product, service, or brand.

When you register your trademark, you're essentially announcing to the world that you're laying claim to that particular mark.

Because of this, you're allowed to stop other brands from registering or using confusingly similar marks.

You also gain several other legal protections, as detailed in the U.S. Code.

In this first section, we'll cover several common questions people often have about trademarks.

What Can I Register?

You can register a trademark for anything that helps consumers identify your business, products, goods, or services.

When we think of trademarks, we traditionally think of logos, slogans, and catchphrases.

However, you can register just about anything that helps consumers distinguish your products and services from those of another business.

Designs, images, sounds, jingles, smells, and even colors have been registered as trademarks on the Federal Register.

Further, as a result of a recent decision from the Supreme Court, even some forms of disparaging trademarks are now also perfectly legal.

In this way, a trademark is any type of distinctive "thing" that represents a particular product or company.

In addition to these restrictions, some things are harder to register than others.

This is because trademarks have four different levels of protection:

  • Arbitrary and Fanciful
  • Suggestive
  • Descriptive
  • Generic

Each level provides different protections and restrictions, and can even affect whether or not you can register your mark in the first place.

Suggestive, Arbitrary, and Fanciful Marks

Under U.S. common law, you will immediately acquire trademark protections after using suggestive, arbitrary, or fanciful marks "in commerce."

This is because each of these three trademark "levels," by definition, presume that your mark is "unique."

Suggestive marks usually give a hint about a quality that describes your product.

For example, "Chicken of the Sea" brand tuna would count as "suggestive" because it suggests that the company’s product (1) is similar to chicken, but (2) actually comes from the sea.

Arbitrary and fanciful marks, on the other hand, do not suggest what the product is.

In fact, by definition, they have nothing to do with the product or service in the first place.

For example, the "bitten apple" logo that represents Apple brand products has nothing to do with electronics.

However, it's impossible to associate any other computer or phone company with the name "Apple" without thinking of the monolithic Apple brand.

Basically, arbitrary and fanciful marks are often words and images that have no relation to your core business outside of your actual use of the mark.

If your mark is suggestive, arbitrary, or fanciful, receiving trademark protection is usually pretty easy.

The difficulty comes in if your mark borders on descriptive.

Descriptive Marks

Descriptive marks are a little harder to obtain trademark protection for.

This is because descriptive marks are not unique by nature, so you would have to show that your mark has acquired "distinctiveness" over time in order to receive trademark protections.

Many refer to this acquired distinctiveness as having a "secondary meaning," because even though the mark describes something common, it has also become associated with a particular brand.

Most descriptive marks cannot register on the principal trademark register, since they have yet to acquire a "secondary meaning."

Instead, you'll have to register your mark on the supplemental trademark register.

Then, after five years on the supplemental register, you can apply to place your mark on the principal register.

Generic Marks

"Generic" marks are names or logos that are so prevalent in modern society that they have become fundamentally representative of the particular product or service they describe.

Put more simply, you can not register words like "car," "ice cream," or "barber" as trademarks, as doing so would bar anyone else from using these words in any aspect of their business.

A good sign that your mark is generic is if you are using the word's dictionary definition, or the word is commonly used to refer to your product or service.

For example, if you name your small lawn mowing business "Lawn Mowers," you generally won't be able to register that name with the trademark office.

However, you might still be able to receive specific protections as a common law trademark, as detailed in a later section.

What is Trademark Priority?

Trademark priority is basically how the USPTO decides who has the right to use a given mark.

Generally speaking, the first person to use a trademark in commerce has trademark priority over all later applicants.

The easiest way of gaining trademark priority is by registering your mark.

Doing so successfully will give you priority over all later marks.

However, remember that trademark registration does not automatically lead to trademark priority.

If another company used a similar mark "in commerce" before your date of registration, they might still hold trademark priority in their local area.

This is because trademark priority is usually decided based on two factors:

It is important to note that registering for a trademark only protects the mark from all future users.

Pre-existing users of your trademark—such as small or local businesses who haven’t registered their mark or conducted business over state lines—can continue using the mark in their given market and geographic area.

This is the reason that most businesses purchase a thorough Trademark Search Report before registering their mark.

How Much Does it Cost to Register a Trademark?

Depending on which path you choose, the total cost of registering a trademark can vary. In general, you should budget for anywhere between $900 and $3,100.

This money is split between your attorney (if you choose to hire one) and the various fees required by the USPTO.

USPTO Fees

The USPTO charges a base processing fee for all trademark applications. This fee can vary based on your application type, but is generally between $250 and $350.

In addition to the basic application costs, there are also several additional fees which tend to appear throughout the process.

These can include:

  • Requesting Extensions – You must file a Statement of Use within six months of your Notice of Allowance. If you need to request a six-month extension, there’s an additional charge of $125 per class of goods/services.
  • Allegation of Usage – If you are instead filing an Allegation or Statement of Use to prove usage of the mark, you must include a payment of $100 per class.
  • Abandonment Status – If your application goes into abandoned status at any time during this process, there will be a $100 per class fee to continue the application.
  • Maintenance and Renewal – In order to keep your registration, you must occasionally send paperwork to the USPTO to maintain and renew your trademark.

In regards to the final point, you must file a Section 8 declaration during your 5th and 6th years of registration to renew your trademark.

Filing this application costs $100 per class of goods/services.

You must also file both a Section 8 and 9 declaration during your 9th and 10th year of registration (and then every 10 years after that).

If you file online, the combined application for this renewal is $425 per class of goods/services.

Attorney Fees

While hourly rates are used on occasion, many trademark attorneys will offer a flat fee for trademark registration services.

That flat fee could range anywhere from a couple hundred dollars to thousands of dollars depending on the scope of your case.

Trademark registration attorney fees typically cover the cost of obtaining and reviewing a trademark search report, and then actually registering your trademark.

In sum, expect to pay the following trademark registration costs you choose to file:

  • Trademark search report = $200 – $800
  • Attorney fees = $450 – $2000
  • TEAS plus fee = $250 per class of goods/services
  • Grand Total = $900 – $3,050 (+$250 per additional class of goods/services)

Should I Hire an Attorney?

The USPTO actually has a pretty good article on whether or not you'll need an attorney for your trademark application.

Essentially, no rule or law states that a U.S. citizen or permanent resident needs to hire an attorney when they register a trademark, though it is often encouraged.

Whether or not you should hire an attorney is really dependent on your individual case.

Editor's Note: As of August 3rd, 2019, all foreign domiciled trademark applicants must hire a U.S.-licensed attorney for their trademark applications. For more information, see this blog post by the USPTO.

Reasons You Should Hire an Attorney

To put it simply, trademark attorneys specialize in the subject of trademark law.

The best way to make sure you have the right expertise on your side is to hire a trademark attorney.

Instead of working with external resources, which can often have conflicting information, a trademark attorney can offer you both experience in, and knowledge of, trademark law.

Hiring an attorney can also save you money in the long run.

Simply registering your trademark can cost several hundred dollars, and if you miss deadlines additional fees may follow.

Further, the filing fee is non-refundable, which means that, if you mess up your application, there's no way to get your money back.

Hiring an attorney and getting it right the first time can save you money.

Another advantage of hiring an attorney is that they know the specifics of what the USPTO is looking for.

For example, if you decide to register using Plus or Standard forms, you need to meet the specific requirements for each of these forms.

Otherwise, the USPTO will automatically deny your application.

Another key element of hiring an attorney is their ability to help you determine whether you should register your mark on the Principal or the Supplemental register.

An attorney can help you figure out if your trademark is legally distinctive, or if it’s merely descriptive.

While these terms sound like small differences, choosing the wrong one can result in an instant rejection of your application.

Reasons You Don't Need an Attorney

There are also several benefits to not hiring an attorney.

While this is generally not recommended, registering a trademark by yourself is also a viable path.

The biggest reason you don't need an attorney is that you can find all the relevant USPTO forms (and instructions) online.

They also have an extensive FAQ section and several videos that answer many common questions about trademark law.

Another significant advantage of registering by yourself is that you can save money in attorney fees (provided you file correctly the first time).

As we mentioned earlier, the USPTO has a specific fee structure they stick to when dealing with trademark applications.

They also provide an overview of all other related fees.

As long as you file correctly the first time, registering your own trademark is often the cheaper (and quicker) option for most small business owners.

Lastly, if there are issues with your application the examining USPTO attorney will generally send you an Office Action which describes where you went wrong.

Using this action, it's relatively simple to fix your application for resubmission.

However, untangling a trademark problem can sometimes be more expensive than hiring an attorney to begin with, so keep that in mind before you file.

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Step 2: Planning Ahead

Applying to register a new trademark is deceptively easy.

While the actual act of applying isn't all that difficult, there are several pitfalls surrounding the process that you need to look out for.

Because of this, it's important that you plan ahead to avoid common mistakes which can delay your application, or result in a total rejection of your mark.

Potential pitfalls is one of the reasons you should seriously consider hiring an attorney before moving forward.

We'll outline three of the most important things to consider below.

Get a Trademark Search Report

Screenshot taken from TESS on Aug. 21, 2019, which you can access here: https://www.uspto.gov/trademarks-application-process/search-trademark-database. You should always search for your mark in TESS before applying for a new trademark.

The first thing any trademark attorney will recommend is getting a comprehensive trademark search report.

Most good attorneys will actually do this report for you as part of their full trademark application package.

However, it's still good to understand how this report is compiled, as well as what kind of information this report provides.

Investigating your trademark can be a lot of work, but it is an important first step in the trademark process.

Think of it as an investment in the goodwill and reputation of your company.

Doing your due diligence in this first step can save you a lot of time, money, and effort.

More practically speaking, you should search for marks "confusingly similar" to your own before applying with the USPTO.

This is because USPTO examining attorneys will review your application using the same general guidelines when deciding whether or not to approve your mark.

If they find a trademark that is confusingly similar to the one you're applying with, they'll outright reject your application.

In this case, you'll lose all the time, money, and effort which went into your application.

If you fail to perform a proper search, you're basically setting yourself up for failure.

As some additional resources, check out these articles from our Knowledge Base:

Research Trademark Classes

All goods and services fall under one or more of the 45 international trademark classes.

These classes are generally defined using the 1957 Nice Agreement, and are used by roughly 85 nations around the world.

When you register your trademark with the USPTO, you'll have to submit a separate application for each product or service class your brand falls under.

For example, if your business both sells roofing materials and repairs roofs, you may have to file under multiple classes, since you're offering both products and services.

We've created pages for each product and service class below.

You can also access more resources on the World Intellectual Property Organization (WIPO) website.

International Product Classes

International Service Classes

Should I File My Trademark on the Supplemental or Principal Register?

The USPTO offers two different lists for trademark registration. These two lists are called the Supplemental and Principal Registers.

All business owners should aim for registering their trademarks on the Principal Register, as it offers stronger protections.

Think of the Supplemental Register as a way for weaker marks to still receive formal protections while they strengthen their brand through commerce.

A Quick Example

For an example of why this might be the case, consider the following scenario:

Bill and Joe Smith are brothers, who each want to start their own small business.

Bill's business is named "Banana," and he sells printers.

Because Bill's business name is arbitrary (not related to the product he's selling), it is distinctive enough for the Principal Register.

Joe, on the other hand, takes great pride in his family's name and heritage, so he decides to start his business with his son, and wants to include his family name in the brand.

He eventually settles on "Smith & Son Paper Manufacturers."

However, surname marks almost never get on the Principle Register on their first try, so he can't just follow the same path as his brother.

What should he do?

In most cases, Joe can register his trademark on the Supplemental Register.

While registration on the Supplemental Register itself doesn't prove distinctiveness, it can provide legal protections while you wait for the "five years" requirement dictated by the USPTO.

After five years of using his surname trademark in commerce, he can re-file for his position on the Principal Register.

Basically, the Supplemental Register is a formal list for trademarks that are waiting for their distinctiveness requirements to fall into place.

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Step 3: How to Register a Federal Trademark

To begin, you should remember that you don't have to register your mark in order to receive protections under federal trademark law.

Unregistered marks are often called "common law trademarks," and receive strong legal protections on the local, if not national, scale.

However, only fully registered marks can gain the highest level of protection offered by U.S. trademark law, sometimes referred to as "incontestability."

Further, only registered marks can gain protections outside of their immediate local area (which can be as small as the city or town you're based in).

Finally, registering your mark or brand name is also important because it helps you mark your territory in a particular niche.

Specifically, registering your mark in a particular trademark class bars other businesses from registering, or even using, a confusingly similar mark in the same class.

For example, a business that sells wine (Class 33) could protect its name from other wine sellers.

However, they may have difficulty contesting a similarly named business that sells coffee or tea (Class 30).

This, as simply one example, is the reason that a Delta Airlines trademark can exist at the same time as Delta Faucets, since they operate in distinctly separate trademark classes.

Editor's Note: As of October 5th, 2019, all trademark applications must be filed online. The USPTO will no longer accept paper applications as of this date. Learn more about this change by reading the USPTO's blog post on the subject.

How to Register a Federal Trademark

We've gone over the full trademark registration process in a previous article.

However, the process itself can be boiled down into four quick steps:

  1. Perform a Trademark Search – As we mentioned earlier, this is a crucial step in ensuring the strength of your mark. This step can also help you pick a strong trademark that is likely to become incontestable.
  2. File the Application – The USPTO actually offers a rather robust application page which provides several resources for first-time applicants.
  3. Receive a Response – Occasionally, you may receive a document called an "Office Action" from the USPTO attorney in charge of your application. This document will basically list a few minor errors or corrections you need to fix before they'll accept your trademark. Sometimes, an Office Action will have substantive complaints about your mark that may prevent you from registering. A "Final" Office Action, however, is un-correctable, and means you'll have to start the process from scratch.
  4. Publication in the Official Gazette – Every Tuesday, the USPTO puts out the newest edition of the Trademark Official Gazette. Publication in the Gazette provides "notice" to all other businesses that you've successfully registered your mark.

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Step 4: Protecting and Maintaining Your Mark

While the most obvious step in the trademark process is the actual registration, the large majority of your time will actually go into protecting and maintaining your mark after the fact.

How to Maintain Your Trademark

Screenshot of the online version of the Section 15 Declaration of Incontestability application. Taken from https://teas.uspto.gov/postreg/sect15 on Aug. 21st, 2019.

Registering your mark with the USPTO is only half the battle.

You must also carefully nurture the mark for as long as you intend to use it.

There are several key points you should consider when maintaining your trademark.

Renewal

First, don’t forget to renew your mark.

You’ll have opportunities to renew your mark between five and six years after its registration date, followed by additional renewal periods every ten years.

After your mark has been on the Principal Register for five years, you can also file a Section 15 "Declaration of Incontestability."

As noted above, incontestability is the highest form of protection for your trademark.

This is because you are given the benefit of the doubt in almost all trademark contests against other brands.

Protection

In addition to renewing your mark, you must also protect it from other businesses.

You need to stay aware of other competitors in your industry and think about the names of new businesses that you become aware of.

If someone uses your mark or a confusingly similar mark to promote their own brand, that may damage your trademark.

It also opens you up to legal problems down the line.

If you know about the infringement and don’t do anything, you can end up in a significantly weaker position later on when renewing or protecting your trademark rights.

Trademark Official Gazette

A sample screenshot of the online version of the the Aug. 20th Trademark Official Gazette, taken from: https://eog-tmng.uspto.gov/ on Aug. 21st, 2019.1

As mentioned earlier, a useful resource for any trademark holder is the USPTO's Trademark Official Gazette.

The Gazette is a publication that lists all of the newly approved trademarks from the previous week.

After you and your attorney submit your trademark for registration with the USPTO, the organization will review it.

If the USPTO finds that there are no clear legal reasons to deny your trademark, the USPTO will approve your trademark and publish it in the Gazette.

Even after registration, you should periodically check the Gazette to scan for any infringing marks in your class.

The USPTO ultimately isn't responsible for any infringing trademarks.

Instead, it's your responsibility to file an infringement case with the Trademark Trial and Appeal Board.

If you fail to regularly check the Gazette, a new company might get away with copying your brand's logo or name for their own commercial gain.

How to Object to an Infringing Trademark

Screenshot of the Trademark Trial and Appeal Board Manual of Procedure for June, 2019. Taken from the Trademark Trial and Appeal Board Manual of Procedure on Aug. 21st, 2019.

Once another brand publishes its trademark in the Trademark Official Gazette, you have 30 days to oppose their mark.

If you decide to oppose the trademark, you need to hire an experienced attorney immediately.

All objections to trademarks are heard by the Trademark Trial and Appeal Board, which has its own special set of rules and precedents.

However, the case will generally play out similar to a civil court hearing.

Trademark opposition hearings are a long and rigorous process.

In general, there are seven broad steps in a trademark opposition hearing you should know about:

Step 1: File a Notice of Opposition – First, you file a notice of opposition with the Trademark Trial and Appeal Board. This is similar to a complaint in a civil case.

Step 2: The Board Issues an Institution Order – The Trademark Trial and Appeal Board will then issue an institution order. This will inform all parties of the trial date and discovery dates. The institution order generally sets forth a deadline for the defendant’s answer.

Step 3: The New Company Files an Answer – Then the party you are opposing will file an answer to your petition. The new company will likely deny all allegations set forth in the notice of opposition.

Step 4: A Settlement or Discovery Conference will be Held – Then there will be a settlement conference. If the attorneys cannot work out a settlement, then they will work out a schedule for discovery.

Step 5: Testimony Period is Held – Finally, we get to the difference between a civil action and a trademark opposition hearing.

There is no live action trial in a trademark hearing. Instead there are three different periods of testimony:

  • The company that submitted the new trademark will have 30 days to submit its trial evidence.
  • Afterward, the old company opposing the trademark will have 30 days to submit their evidence.
  • Finally, the new company will have 15 days to rebut the evidence of the opposing company.

Step 6: Both Parties Submit their Final Briefs – After this testimony period, both parties will submit their final briefs to the board. These briefs are crucial to the TTAB’s decision.

The new company will file a brief with a maximum 60 page limit.

The old company opposing the new company’s trademark will file a brief with a maximum 55 page limit.

Finally, the new company has the option to issue a 15 page reply brief to the old company's brief.

Step 7: Trademark Trial and Appeal Board Renders Their Decision – To render their decision, the TTAB will have the testimony period and parties final briefs to rule on the case.

However, in some instances either party can request an oral hearing. The oral hearing would be heard by a panel of three members from the board.

The board will then make its decision. Unfortunately, it can take up to six months (or more) for the board to reach its decision.

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Conclusion

Registering your first trademark can be an exciting process. However, you should always make sure you're doing everything by the book.

While the process might look simple on paper, it can quickly end up overly complicated and expensive if things go wrong.

For this reason, it's highly recommended that you seek the advice of an experienced trademark attorney when registering your first mark.

Speaking with an attorney can help you navigate around common pitfalls, and can make the entire process much easier, and in many cases cheaper.

No matter which path you choose, you should always make sure to nurture and police your mark after you formally register it with the USPTO.

If you take care of your trademarks, you'll set your business up for greater successes and profits in the future.

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Further Reading:

Other Resources:

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