US Trademark Registration: All You Need to Know

A trademark represents a brand, name, logo or symbol associated with the goods, products or services of a company. It traces the source of the goods and services and protects the company’s identity. Third parties or competitors cannot use a company’s trademark without their permission, or else it will result in trademark infringement. 

However, the trademark protection is territory-based, i.e. the trademark protection extends within the country of its registration. Thus, if the trademark is to be used internationally, it must be registered in that country. Find out how to get trademark registration in USA.

Is Trademark Registration Mandatory?

Registering the trademark is not mandatory. A trademark can be used without registration, and the owner can obtain certain rights even without registration. However, trademark registration offers several benefits and rights for the trademark owner.

The owner gets the statutory right against trademark infringement when a trademark is registered. Registration acts as proof of ownership before courts in infringement cases. The owner gets the right to its exclusive use and can even sell the trademark. The trademark owner can use the Ⓡ symbol next to the trademark asserting ownership and warning others about its unauthorised usage.

United States Patent and Trademark Office (USPTO)

Every country has trademark law and a trademark office which regulates the trademark registration process and infringement cases. The US trademark registry is the USPTO (the United States Patent and Trademark Office). It governs the trademark registration process in the USA.

The USPTO accepts trademark registration applications for traditional marks (design, words and combination marks), non-traditional marks and visual marks (shape, configuration, colour, scent, touch, sound and motion marks). It also accepts registration applications for certification marks and collective marks.

Filing Basis of Trademark Registration in USA

A trademark owner who wants to apply for trademark registration in the USA must specify the filing basis, i.e. the legal reason why the owner wants to register the trademark. There are many filing basis, and the trademark owner must satisfy the legal requirements for the filing basis. Below are the different types of filing basis that a trademark owner can select in the registration application:

• Use in commerce basis: When the trademark has been in use for the goods in the USA and out of state or used in providing services to customers living in the USA or outside the state, the trademark owner can select this filing basis.
• Intent-to-use basis: When the trademark owner has not started using the trademark but has a bona fide intention of using it in commerce with their goods and services in the near future or the next 3-4 months, they can select this basis. 
• Foreign registration basis: When the trademark owner owns a foreign registration of the same mark for the same services or goods in the country of origin, they can select this filing basis. The foreign registration application should have been filed in the country of origin, and the registration should have been done within six months.
• Foreign application basis: When the trademark owner has filed a foreign application, i.e. trademark registration application in the county of origin, within six months of applying in the USA, they can select this basis. However,  the foreign application must be filed for the same mark and services or goods. This basis is also known as foreign priority basis because the owner is requesting a priority filing date for the US application, i.e. the same date as the foreign application filing date.

Process of Trademark Registration in USA

A trademark owner wanting to obtain a trademark registration in the USA can file it online on the TEAS website (Trademark Electronic Application System). The steps to apply for trademark registration application is as follows:

Step 1: Check trademark availability

A trademark owner needs to check if the trademark is available to be registered in the USA. The owner must conduct thorough research of the US trademark registry database to see if there are similar or identical registered trademarks. If there are similar or identical registered trademarks, the owner must change the trademark else it will be rejected.

Step 2: Application filing

The trademark owner must file the registration application with the USPTO on the TEAS website. On the TEAS website, an owner can choose one of the following two options for filing an application:

• TEAS Plus filing: This option has more requirements when the initial application is filed. As a result, the owner can pay a lower fee per class of services/goods.
• TEAS Standard filing: This option has less requirements when the initial application is filed. However, the owner must gradually meet all the application requirements and pay a high fee per class of services/goods.

Step 3: Trademark examination

After the registration application is filed on the TEAS website, the USPTO will determine if the owner has met the minimum filing requirements. When it meets the requirements, an application serial number is assigned and forwarded to the examining attorney. The examining attorney examines the application and checks whether it complies with the applicable rules and statutes.

Step 4: Publication of trademark

When there is no objection to registration from the examining attorney or the trademark owner overcomes the objections, the examining attorney will approve the trademark publication in the ‘Official Gazette’. An Official Gazette is a weekly publication of the USPTO. The USPTO will send the owner a publication notice stating the publication date.

Step 5: Trademark opposition 

After the trademark is published in the ‘Official Gazette’, any third party can file an objection for registration within 30 days of the publication date. When the opposition is unsuccessful or no opposition is filed, the application is forwarded for registration.

Step 6: Trademark registration

When the trademark is published based on the applicant’s bona fide intention to use the trademark, and no person files an opposition, the USPTO will issue a notice of allowance after eight weeks of the publication of the mark. The applicant has six months from the issue of notice of allowance to use the mark and submit a Statement Of Use (SOU) or request a six-month extension to file an SOU.

When the SOU meets the minimum filing requirements, the examining attorney will review it to determine whether it is acceptable for registration. The USPTO issues registration within two months after the SOU is approved.

When an Indian company files for US trademark registration, it is mandatory for the trademark to be registered in India. The US trademark registration of an Indian company mark is based on the Indian trademark registration.

Documents Required for USA Trademark Registration

The following documents should be submitted for the US trademark registration:

• Name, signature, address, and entity type of the applicant.
• The type of services and goods under which the brand is registered.
• The filing basis.
• The digital image or drawing of the trademark/logo to be registered.
• Description of the trademark.

Validity of Trademark Registration

After a trademark is registered in the USA, it is valid for ten years. A trademark owner can renew the trademark registration before the expiry of ten years for another ten years of protection.

Cost of Trademark Registration in the USA

The trademark registration fees in the USA depend on multiple factors. The initial application fee depends on the application filing form option and the classes of goods/services. After the trademark application, the owner may need to pay additional costs depending on the filing basis. The initial application fee for electronic filing is as follows:

• TEAS Plus: $250 per class of services/goods.
• TEAS Standard: $350 per class of services/goods.

The possible additional fees for intent-to-use applications are as follows:

• Request for an extension of time to show the use of mark: $125 per class.
• Showing the use of mark: $100 per class.

Benefits of USA Trademark Registration

The US trademark registration has the following advantages:

• Getting legal ownership of the brand across the USA.
• Protection of the brand across the USA.
• Exclusive rights for usage of the trademark.
• Legal actions can be taken against parties trying to copy the marks.

Disclaimer: The materials provided herein are solely for information purposes. No attorney-client relationship is created when you access or use the site or the materials. The information presented on this site does not constitute legal or professional advice. It should not be relied upon for such purposes or used as a substitute for legal advice from an attorney licensed in your state.