The United States ranks as the second country in terms of trademark applications. The U.S.A. generates over 836,000 applications.
The United States also experienced a 9.1% growth in applications, which easily overtook the low levels observed in the preceding years and even exceeded the linear growth in several classes worldwide.
In the business world, there is a need for laws that will help protect businesses and customers. When it comes to trademarks, people often rely on them to determine whether a product is authentic.
According to trademark law attorney Christopher Mayle, registering a product for a trademark is important for its protection. Aside from protection, receiving a trademark is a must if one wants to enhance the prestige of a brand. Few things are more frustrating than investing time and resources in building your brand, only to see it being used by others without your authorization.
Let’s get to know how exactly the trademark works and how to get a product registered.
What Qualifies as a Trademark
A trademark is a term used to protect the right of a company to use a particular description of goods and services in the course of trade. Trademark covers one or more words and symbols.
Traditionally, recognizable trademarks were based around brand names, trademarks, and slogans. Recently, sound, color, and shape marks have been found to be effective trademarks, but these are subjected to specific limitations.
The mark must be distinctive to be protectable. The law classifies marks according to their level of distinctiveness, which exists on a spectrum.
- Fanciful marks: Invented words with no prior meaning, such as brand names coined specifically for a product. The strongest category provides its users the widest range of protective rights.
- Arbitrary marks: Real words applied to unrelated goods in a way that has no descriptive connection to the product. These are also strong candidates for trademarks.
- Suggestive marks: Words that hint at a quality of the product without directly describing it.
- Descriptive marks: Words that directly describe a feature or characteristic of the goods. These cannot be registered unless they have acquired distinctiveness through long and exclusive use.
- Generic terms: The common name for a class of goods, such as the word ‘apple’ for the fruit itself. “Apple” was allowed to be trademarked in the electronics industry since the term is not generic in that industry. Otherwise, the term will not be accepted as a trademark.
The protection that a mark receives against confusingly similar uses by other parties increases with the level of inherent distinctiveness that belongs to the mark.
Common Law Rights vs. Federal Registration
Under United States common law, trademark rights arise from actual use in commerce. You establish common law rights for a name by selling a product under that name in a specific geographic area.
Most guides miss this distinction, and several brand owners wrongly interpret it. According to the law firm website https://www.petersonwatts.com/, once a trademark is created, whether the business decides to register it or not, federal laws provide those businesses with certain protections.
The United States Patent and Trademark Office federal registration process does not establish trademark rights. The process enhances existing rights while extending them to new areas. Registration provides:
- The registration creates a national ownership notice, which protects your mark from claims of unawareness by others.
- By establishing a legal presumption of ownership rights, the registration protects the mark throughout the country for the designated products and services.
- The right to use the ® symbol.
- The right to block infringing imports through United States Customs and Border Protection.
- The right to bring an infringement action in federal court under the Lanham Act.
- After five years of continuous registered use, the possibility of incontestability status substantially narrows the grounds for challenging the registration.
Common law rights exist in specific geographic zones. A business that operates exclusively in one city possesses rights in that city yet cannot prevent others from using the same mark in different states if they do so without malicious intent. The federal registration process eliminates this risk.
How to Register a Trademark with the USPTO
The registration process begins with a clearance search. Before you submit your application, you need to search the United States Patent and Trademark Office database, state trademark registries, common law use, and domain name records to find existing marks that may cause confusion with your mark.
If you file without a clearance search, the Trademark Center may reject your application. The process requires you to develop a brand that violates the rights of an earlier trademark owner.
The United States Patent and Trademark Office’s Trademark Center handles all application submissions. The basic filing fee starts at $350 for each class of goods or services as of January 2025. The international Nice Classification system offers 45 classification classes.
Most products can enter one class, most services can enter another class, and applicants can select multiple classes. Applicants who opt for multiple classes will be made to pay additional fees.
Two main filing bases exist that apply to trademark registration:
- Use in commerce (Section 1(a)): Filing occurs after the mark has been put to use in commerce. The applicant should provide specimens illustrating the mark as it appears on the goods and/or services.
- Intent to Use (Section 1(b)): This filing ground covers a trademark that the applicant has not used but intends to use. The applicant has to file a Statement of Use after receiving the Notice of Allowance, and extensions can take up to three years for completion.
Once submitted, an examination attorney from the United States Patent and Trademark Office evaluates trademark applications and publishes them for 30 days. The purpose of publishing the application is to invite any objections. In the absence of opposition, registration will normally take place after a few months. The entire process may take up to 12 to 18 months.
What Trademark Registration Does Not Do
Trademark laws in the United States do not extend beyond the borders of the country. To secure trademarks internationally, firms have to apply individually in each country or utilize the Madrid Protocol that allows filing in over 130 countries in one application.
The process of registration does not provide absolute protection for usage rights. A later registrant may still have a prior user with common law rights in a specific territory who can challenge use in that market.
The principal register provides assumptions about ownership rights, which other parties must disprove by showing evidence of their prior existence.
The registration should be maintained for the entire time. The Declaration of Use as mandated by Section 8 of the Lanham Act must be filed along with the specimen proving the current operations during the fifth and sixth years from the date of registration.
Renewal is carried out between the ninth and tenth years after registration. The next renewal will occur every ten years from that point onward. Registration is terminated if the maintenance documents are not filed.
Image Credit: August de Richelieu
