Applying for a U.S. Trademark

If you are considering applying for a U.S. trademark, you probably have some questions, including “is it worth it?” and “how exactly does it work?”. This article covers the main steps of trademark registration in the U.S. and answers the most common questions that our clients ask when considering applying for a U.S. trademark. Please mind that this article is neither legal advice nor should be treated as an exhaustive description of all applicable laws.

U.S.-licensed attorney requirement

Since 2019, all foreign trademark applicants in the U.S. must be represented at the United States Patent and Trademark Office (USPTO) by a U.S.-licensed attorney. In other words, since 2019, a foreign individual or company can no longer apply for a trademark with the USPTO independently – each trademark application must be submitted with the USPTO by a U.S.-licensed attorney.

What is a trademark?

A trademark can be a word, combination of words, a design (logo) or any combination of these elements that you use in connection with selling goods or services. A trademark identifies the source of goods and services in the market, provides legal brand protection and helps to avoid fraud.

Trademark benefits

In the U.S., individuals are not required to register their marks to obtain protectable rights. You can establish “common law” rights in a mark based solely on the use of the mark in commerce, without registration. However, owning a federal trademark registration provides several advantages, including:

• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide in connection with the goods and services listed in the registration;
• Public notice of your claim of ownership of the mark;
• Listing in the USPTO’s online databases;
• The ability to record the trademark registration with the U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol “®”;
• The ability to bring an action concerning the trademark in federal courts;
• The possibility to use the U.S. registration as a basis to obtain registration in foreign countries.

Word mark v. design mark

One of the most common questions regarding trademark registration we hear is “what exactly should be registered as a trademark and what is the scope of protection upon registration?”.

You may apply for trademarks for all features of your brand: the name, the logo, and even the slogan. To protect multiple elements of your brand, however, you would have to submit a separate USPTO application for each element, pay a separate USPTO fee for each application, which, if the applications are approved, would result in several separate registered trademarks.

The two main types of trademarks that you may register with the USPTO are a standard character mark (a word or a combination of words) and a special form mark (a design, drawing or mark in another special format).

Standard character mark

Example: “Word”

A trademark of a word / combination of words protects that word / combination of words itself – that becomes the mark of your company in providing specific goods or services. A standard character mark prevents others from using the same (or similar) word / combination of words in providing same (similar) services.

Special form mark (design/logo)

Example: 

A trademark of the design of your logo protects the unique look of your logo, including the font and position of all elements of the logo – such trademark prevents others from using your logo (or elements / design thereof) in providing same (similar) services. A special form mark may include a design or logo, alone or with wording, or may be a word / combination of words in a particular style of lettering or particular color(s). Trademark of a design that includes a word / combination of words does not provide the same protection for the word / combination of words when used in standard characters as a standard character mark would.

Only one design can be attached to each trademark application, therefore it should be the mark that you use most often with your services. You may register the design in color or without a color claim (grayscale). In simple terms, grayscale provides broader protection, because you can use your design in various colors, and others may not use a similar design for similar goods or services in any color. However, if the color in the mark is a distinct feature of your brand, you may want to register it in color. Registering both in color and grayscale is also an option, but that would require two separate design mark applications, as it would result in two separate trademarks.

If possible and available, we always recommend registering both, the word mark and the logo. However, in such case two separate USPTO applications are necessary, and the application fee must be paid to the USPTO twice. If you prefer limiting the number of applications to one, we recommend starting with a standard character mark. If you register your mark in standard characters, you will receive the broadest form of protection for your mark because your registration will encompass the wording itself, without limiting the registered mark to a specific font, style, size, or color. If you register your mark in special form, your mark will be protected only for the particular depiction you provided.

The application

Before applying for a U.S. trademark, you should be able to answer the following questions:

1. What mark do you want to register?
2. Are you currently using the mark in commerce?
3. What goods or services do you offer in connection with the mark (or plan to offer in the future)?
4. What is the date of your first use of the mark anywhere (date the mark was first published or used, even before you started offering goods or services using the mark)?
5. What is the date of your first use of the mark in commerce (date when you first started using the mark in connection with offering goods or services)?

Once we know the answers to the above listed questions, we can help you figure out the rest.

Please note that the USPTO trademark application can be submitted online. There are several filing options available, but the most common is TEAS Plus – an application that has some prerequisites, but also results in lower filing fees.

Classes of goods and services

In the USPTO trademark application, you must list the specific goods and/or services you are selling or are planning to sell in connection with the mark. Protection of a registered trademark is provided only in the classes of goods / services selected in the USPTO application. The general process of selecting goods and services in a trademark application consists of:

1. Selecting a class (or classes);
2. Selecting appropriate goods or services listed in the USPTO Trademark ID Manual within each selected class. You may select from two categories of entries: those that are acceptable as written and those with a fill-in feature (the latter help you specify the goods or services in more detail). The trademark will be protected only with regard to the specific goods and services listed within each class, not with regard to the whole broad class.

Please note that although classes delineate categories of goods and services, the classes are for USPTO administration purposes only, and the selected list of actual specific goods/services within each class is what matters for trademark protection. It is not allowed to select all goods/services within a class, and if a very wide variety of goods within a class is selected, the USPTO may inquire whether the identification chosen accurately describes the actual goods or services.

The basic rule for identifying goods and services in a USPTO trademark application is that the description of goods and services must be accurate. In other words, you must be using (or have a bona fide intent to use) the mark for commerce in connection with all the goods and services listed in the application. Otherwise, the application and resulting registration may be vulnerable to fraud claims.

Use in commerce

As mentioned above, when applying for a trademark, you must either (i) already be using the mark in commerce, meaning, in connection with selling goods or services, or (ii) have a good faith intention to use the mark in commerce in the future. In case of option (i), a specimen is attached to the application showing how the mark is used in commerce (for example, a screen capture of an online store where goods/services are available for purchase). In case of option (ii), the initial application is filed without a specimen, and the specimen must be provided separately at a later time, within a specific timeframe imposed by the USPTO, which also entails an additional USPTO fee charged per class. We always recommend option (i) if possible, as it is more efficient and cost-effective.

Please note that in case of both options, the specimen must show the mark used in commerce in connection with all goods/services listed in the application. Therefore, it is important that only the goods and services actually offered by you in connection with the trademark are included in the application.

Additionally, although the USPTO generally requires only one specimen per class even if there is more than one good or service listed in the application for that class, the USPTO examining attorney may request additional or substitute specimens if the range of goods or services in a class is broad, or the class contains unrelated items.

Fees

The USPTO charges nonrefundable fees for trademark applications. The fees are calculated on a per class basis, therefore the total fee payable to the USPTO for a U.S. trademark application depends on the number of classes included in that trademark application. The USPTO fees also depend on the type of application submitted. The current fee per class in case of the most common online application type (TEAS Plus) is $250.

Timeline

The timeline from the date you file the application and until the USPTO registers your  trademark depends on whether you are already using the mark in commerce, are only planning to use the mark in commerce, have a valid foreign trademark registration, and multiple other factors. Please note that you may check the current trademark processing wait times here.

In case of our recommended and the most common option – applying for a trademark when already using the mark in commerce, the entire process can take up to one year. After submitting the application, you should expect to hear from the USPTO in 4-5 months (after the application is reviewed). Then, if the application is approved, within 1-2 months after the review the mark will be published. If within 30 days after the publication there are no oppositions to registration (or requests to extend the time to oppose), your trademark registration certificate should be issued within 2-3 months.

Likelihood of confusion

Please note that the USPTO is responsible for checking if a new registered trademark could cause a likelihood of confusion between the mark being registered and an already registered U.S. trademark. Likelihood of confusion exists between two marks when the marks are so similar and the goods and/or services for which they are used are so related that consumers could mistakenly believe they come from the same source. In order to find a likelihood of confusion, the marks and the goods and/or services do not have to be identical.  It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.  The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services.

As mentioned above, although the classes delineate categories of goods and services, the classes are for USPTO administration purposes only and are not relevant to the likelihood of confusion analysis. Thus, there may be a likelihood of confusion between marks used in connection with goods in different classes or even between a mark used for goods and another mark for services.

Additional notes

Please note that if your trademark is already registered outside of the United States, the information about the foreign registration will have to be included in the USPTO application.

You may choose to apply for a U.S. trademark via WIPO, however it is likely that after receiving such international application, the USPTO will request additional information or clarifications in connection with the mark. Please note that to respond to any USPTO office action, you will have to be represented by a U.S.-licensed attorney.

Please note that even though likelihood of confusion is one of the most common grounds for refusal to register a U.S. trademark, there are several other reasons why a trademark application might be rejected.