Federal trademark registration does not create trademark rights, but it does expand them. In fact, this expansion of existing rights is quite valuable. So how do you register your trademark?

The first thing is to determine whether your trademark even qualifies for registration. A trademark must distinguish the goods or services of the applicant from the goods or services of others. Trademarks likely to cause confusion, cause mistake, or deceive with respect to existing trademarks will be refused registration.

In addition, you cannot register trademarks that are immoral, deceptive, or scandalous; that disparage another; that falsely suggest a connection with another; that are national symbols (flags, coat of arms, the Statute of Liberty); that include the name, portrait, or signature of a living person without that person’s consent; that includes the name, portrait, or signature of a deceased president without consent of the president’s widow; that is merely descriptive; that is deceptively misdescriptive; that is primarily geographically descriptive; that are primarily geographically deceptively misdescriptive; or that are primarily merely surnames. However, you can register some of the otherwise excluded types of trademarks – like those that are descriptive, or geographic, or a surname — if your trademark has become distinctive or attains secondary meaning.

Once you determine that your trademark is not disqualified from registration for any of the reasons listed above, you next need to identify all of the goods and/or services that will be offered under your trademark.  All goods and services are classified by the Trademark Office into one of 45 classifications; your trademark must be associated with at least one of these classifications.

Once the classification(s) for your trademark is established, a prior art search of the Trademark Office database is performed to determine the availability of your trademark for registration. Your trademark may be deemed unavailable for registration if it is the same as an existing registered trademark (or a previously filed trademark application) or confusingly similar to an existing registered trademark (or a previously filed trademark application).

However, your trademark may be available for registration if the goods and/or services have a different classification from that of the prior trademark and thus would not be likely to lead to confusion. Other factors are also considered, including how the goods and/or services are sold, the type of customers who purchase those goods and/or services, and the relatedness of the goods and/or services even if they have different classifications.

If the prior art search results in a likelihood that your trademark will be registered, the next step is to prepare the appropriate filing forms and file them with the Trademark Office. This can be done by printing and filling out paper forms, or by filing an electronic application. The Trademark Office prefers electronic applications and so there is a fee discount for doing so.

The application form will identify the trademark, the owner of the trademark, any graphical elements if it is a logo trademark when the trademark was first used (anywhere, and in commerce – if it has not been used yet in commerce, an “intent-to-use” application may be filed), and (if it is currently in use) an example of that use in commerce (like a label, a business card, a website for ordering product, etc.). The filing fee is based upon the number of classifications designated.

Once a federal trademark registration is on file, the Trademark Office examines it. This may not occur until several months have passed from the filing date. The examination is to ensure that the application meets the criteria, and looks for the same things as described above with regard to the prior art search.  A trademark examiner may require an amendment to the trademark registration application in order to make it allowable. A trademark examiner may also refuse registration because the criteria for registration were not met.

If the application is allowed by the examiner, it then is set for publication. This involves the Trademark Office listing the application in something called The Official Gazette and setting a 30-day window for the opposition. During this period, anyone believing that they may be harmed if the application is allowed may oppose the registration. This is done through an administrative lawsuit and may take months or even years to resolve.

If no opposition is filed during the 30-day period, the application goes to registration. If the trademark was not in use in commerce at the time the application was filed, you will have an opportunity to demonstrate actual use at this time. There is a six-month window for making this showing. If you cannot do so, you can extend the window for an additional six months by paying a fee. This can be done up to five times. If you still cannot make the required showing after all extensions elapse the application will go abandoned.

After a federal trademark registration issues, you will be able to use the ® symbol. You can also bring lawsuits in federal court for infringement. Trademark registration can last indefinitely, as long as you continue to use the trademark for the goods and/or services listed in the classification, and as long as you maintain the registration. Maintenance requires that every 10 years you pay a renewal fee and submit evidence that you are still properly using the trademark. There is also a one-time renewal that occurs between the fifth and sixth years after initial registration.

Anthony A. Pellegrini, Attorney at Law, Rudman Winchell
Anthony Pellegrini, Esq
Rudman Winchell

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