Filing a Federal Trademark Application FAQ

Apply for protection for your trademark under federal law.

How do I apply for federal trademark registration?

You can file your trademark application online at the U.S. Patent and Trademark Office (USPTO) website by using the Trademark Electronic Application System (TEAS). You can also call the USPTO for a paper form, but the USPTO cautions that paper forms will not be processed as quickly, and paper applications cost $50 more to file.

To begin the electronic registration process, go to the USPTO website (www.uspto.gov). On the home page, click the "Trademarks" link, and then, on the next screen, click "FILE online."

For most trademark applicants, federal registration is a relatively straightforward process. When completing the application, you need to:

• describe your trademark or service mark (often referred to as "marks," for short)
• 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 online help provided by the USPTO can help you figure out which classification is right for your mark).

In addition, your application must be accompanied by:

• a "drawing" of your mark (for word marks, simply type the word; for graphic marks, you can include a photo file of graphic images)
• samples of how your proposed mark is being used, and
• the registration fee -- currently $325 per class when filing online.

How does a trademark qualify for federal registration?

To register a trademark with the U.S. Patent and Trademark Office (USPTO), the trademark's owner first must use it in "interstate commerce." 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, an Internet business or a restaurant or motel that caters to interstate or international customers.

The trademark owner must also be able to answer "no" to all of 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?

For information on distinctiveness vs. descriptiveness, see Qualifying for Trademark Protection FAQ.

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

The USPTO publishes the trademark in the Official Gazette (a publication of the USPTO). The Gazette states that the trademark is a candidate for registration; this provides existing trademark owners with an opportunity to object to the registration. If someone objects, the USPTO will schedule a hearing to resolve the dispute. If no one objects, you should receive a response from the USPTO within a year. The total time for an application to be processed may range from a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.

In order to maintain the status of a federally registered trademark, the owner must file a statement of continued use and later, a renewal application. The owner acquires additional rights if a statement of incontestability is filed. The USPTO does not notify the trademark owner when these statements are due, and if these documents are not timely filed, the federal registration is canceled.

What types of trademarks are ineligible for federal registration?

The USPTO won't register any marks that contain:

• names of living persons, unless they have given their consent
• the U.S. flag
• other federal and local governmental insignias
• the name or likeness of a deceased U.S. President, unless his widow has given consent, or
• words or symbols that disparage living or deceased persons, institutions, beliefs, or national symbols.

Nor is the USPTO supposed to register marks that are judged immoral, deceptive, or scandalous. As a general rule, however, the USPTO takes a liberal view of the terms "immoral" and "scandalous" and will rarely refuse to register a mark on those grounds.

In addition, the USPTO will not register marks that are used only in one state; a trademark must be used to offer good or services for sale in more than one state to qualify for federal trademark protection.

What are the benefits of having a trademark on the USPTO's Principal Register?

First, there are two registers: the Principal Register and the Supplemental Register. Registration of a mark on the Principal Register conveys the important substantive rights that most people associate with federal registration and, as a result, it is the preferred method of federal trademark protection.

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.

Registration on the Supplemental Register does not convey the bundle of rights and protections granted on the Principal Register. For example, registration on the Supplemental Register is not evidence of the owner's exclusive right to use the mark in connection with the goods or services, and the owner of a mark on the Supplemental Register cannot utilize the power of the Customs services to stop importation of infringing goods.

How long does federal trademark registration last?

Once a trademark or service mark is placed on the U.S. Patent and Trademark Office's (USPTO's) 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 statement within six years of the registration date (called a Section 8 Affidavit) stating that the mark is still in use in commerce.

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 USPTO. 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.

Can a business register its trademark at the state level?

Yes, if the trademark is used only within one state (and thus doesn't qualify for federal registration), state registration is a good idea. State registration, however, 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 state's list that the mark is owned by the registrant. This fact will lead most would-be users of the same trademark to choose another one rather than risk a legal dispute with the registered mark's owner.

If the mark is also federally registered, a would-be user of the same trademark is presumed to know the trademark is federally registered, and state registration isn't necessary.