Federal and State Trademark Registrations

Our attorneys practice extensively before the United States Patent and Trademark Office (USPTO), the federal agency that issues trademark registrations. We have obtained state trademark registrations on behalf of many clients as well. We handle all aspects of the trademark registration process, from the preliminary trademark search and drafting of the application to the maintenance of the registration once the certificate of trademark registration is issued. It is often necessary for us to make creative arguments before the USPTO or a state agency in order to successfully register a trademark, and we have a strong track record of obtaining impressive results in this area.

The federal trademark registration process and answers to some frequently asked questions concerning trademark registrations are outlined below. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific questions about trademark law should be directed to an attorney in our Trademark Practice Group.

Federal Registration Process

A party can apply for federal registration of a trademark in the United States if it is using the mark in commerce or has a bona fide intent to do so. The trademark registration process can be generally summarized as follows:

  1. Application filed in the United States Patent and Trademark Office (“USPTO”)
    • Intent-to-Use (“ITU”) application, or Use application
  2. Application examined by a trademark examining attorney at the Patent and Trademark Office
    • Application approved for publication, or
    • Application rejected (the applicant has 6 months to respond to the rejection, after which the rejection may be withdrawn and the application approved for publication).
  3. Application published for opposition in the Official Gazette
  4. Parties wishing to do so have 30 days to oppose registration of the trademark, or to seek an extension of time in which to do so (up to 120 days from publication)
    • If there is no opposition to the Use Application, a Certificate of Registration is issued
    • If there is no opposition to the ITU Application, a Notice of Allowance is issued and the applicant has up to three years (in six-month periods) to file a Statement of Use, after which time a Certificate of Registration is issued
    • If an opposition is filed, the case is transferred to the Trademark Trial and Appeal Board for resolution
  5. Registrant must submit an affidavit of continuing use between the fifth and sixth anniversary of registration, and may submit an affidavit of incontestability at the same time
  6. Certificate of Registration is valid for a ten-year period, and must be renewed every ten years, by submitting an application for renewal and an affidavit of continuing use.

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Benefits of Federal Registration

Priority and Constructive Use on Nationwide Basis

Perhaps first and foremost among the benefits of a federal registration is the nationwide priority date afforded by filing an application with the USPTO. Historically, trademark rights in the United States arose solely from actual use of a mark in connection with goods or services, and priority in those rights dated from the actual date of first use, and depended upon the geographical extent of the use. Now, however, the filing of a federal application—even an ITU application—gives the applicant the benefit of “constructive use” on a continuous and nationwide basis, as of the date of filing, against everyone except those with prior rights. Constructive use is contingent upon actually obtaining the registration. This benefit is extremely useful where the goods or services are distributed in only a limited geographical area, or where use is not continuous in any one particular geographic area (but is continuous vis-à-vis the U.S. as a whole). It is also very useful in the case of intent-to-use applications, where a priority date can be established even before actual use.

Presumption of Validity

A registration carries with it a presumption that the registration is valid, and that the owner has the exclusive right to use the mark.

Incontestability

Once an affidavit of incontestability has been filed (after the registration has become five years old), a registration becomes “incontestable,” which means that certain attacks can no longer be made against the registration. Although the actual effect of this status in any given case can be determined only after a thorough and technical consideration of all the available facts, it is without question that incontestability can be an important defensive advantage.

Discouraging Potential Infringers

An important practical benefit of a registration is the fact that the USPTO may rely upon a registration to reject a third party’s application for a similar mark, thus discouraging potential infringers from proceeding with their plans. Where a third party chooses to conduct a trademark search prior to filing an application, a registration makes it more likely that the potential infringer becomes aware of a blocking registration, likewise discouraging infringers.

Use and Intent-to-Use Applications

Before November 1989, U.S. applicants could not file an application for federal trademark registration until they had actually used a trademark in commerce. Upon filing a “Use application,” an applicant informs the USPTO of the date the mark was first used in commerce. This presents problems where a company might expend great effort in preparing to use a mark, only to have a third party leap ahead in priority by actually using the mark first. Intent-to-Use applications available since November 1989 allow for the filing of an application based upon an intent to use the mark in commerce, with priority generally dating from the date the application is filed. However, although one can proceed through the entire trademark application process based solely upon an intent to use a mark, an actual Certificate of Registration will not issue until the mark is actually used. As noted above, an applicant has up to three years from the Notice of Allowance in which to use the mark and obtain a registration. One may file either an ITU or Use application, and may convert an ITU application into a Use application.

Section 44 Basis For Registration For Non-U.S. Nationals

Non-U.S. nationals, in addition to relying upon the ITU and Use applications described above, can rely upon Section 44 of the trademark statute, which allows non-U.S. nationals to file an application based solely upon ownership of a foreign trademark registration in their home country and an intent to use the mark in the United States. In the case of a Section 44 application, a registration may issue without any use of the mark in the United States, although use must eventually be made of the mark, or the resulting registration may be subject to cancellation for non-use. A Section 44 basis for registration can be combined with a regular ITU or Use application.

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Costs

The costs associated with obtaining trademark applications are quite reasonable. USPTO fees for trademark applications are based upon an international classification system, which classifies goods and services according to 45 classes, including classes such as “Chemicals” and “Paper Goods.” The application fees, which are based on the number of classes in the application, are set forth on the USPTO web site at www.uspto.gov, and in 37 C.F.R. sec 2.6; the fees are periodically changed by the USPTO. No fee is charged for registration, although in the case of ITU applications, there is a fee to convert the application to a Use application, a fee to file a Statement of Use (necessary to obtain a registration), and a fee for each of five possible six-month extensions for filing a Statement of Use. Other miscellaneous fees may apply in particular cases.

As noted above, between the fifth- and sixth-year anniversaries of registration, an affidavit of continuing use must be submitted. In addition, under certain circumstances, an affidavit of incontestability may be submitted. Renewal of the registration is required at 10-year intervals. The fees for affidavits of continuing use and incontestability, and renewal applications, like the application fees, are based on the number of classes in the registration.

State Registrations

In addition to federal registrations, it is also possible to apply for state registrations of trademarks. The benefit of such registrations varies from state to state, and is limited to the particular state in which the registration is obtained. In some states, there is no stringent examination of applications, such as is done in the case of federal registrations. Where there is a direct conflict between state law and federal law, federal law will control. For these reasons, federal registrations are much preferred to state registrations.

However, in some cases, such as where a federal registration cannot be obtained, state registrations are desirable, as they may enhance trademark rights on a state-by-state basis, and may discourage potential infringers by appearing in trademark search reports. State registrations typically involve only minimal fees.

Secretary of State Filings

Businesses may register to do business, or may incorporate or form a partnership, in one or more states, thus “registering” the name of their business with the secretary of state in these states. Such registrations do not constitute trademark registrations, and should be considered wholly apart from federal or state trademark registrations. While many states do check for name conflicts, there is no direct or substantial trademark significance to such secretary of state filings. Unfortunately, many businesses do not realize this lack of trademark significance, and fail to take appropriate steps to protect their trademarks solely because they believe they are already protected by these secretary of state filings. It is highly recommended that formal trademark protection be obtained, in the form of a federal or state registration, whenever a secretary of state filing is made.

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