general trademark questions
What is a trademark?
A trademark is any word, phrase, symbol, design, and/or element of design that identifies your brand and differentiates your goods or services from somebody else’s.
What is the difference between the TM, SM, and ® symbols?
The “TM” (trademark) and “SM” (service mark) symbols are used to put the public on notice that you are the rightful trademark owner and that you intend to enforce your trademark rights.
The “TM” and “SM” symbols are used before a trademark is registered with the USPTO, or while it is in the process of being registered. They are also used on marks that cannot be registered.
The ® symbol serves the same purpose but, you can only use it if your trademark has been registered with the USPTO.
What makes a strong trademark?
Not every name makes for a good trademark. Unique names are afforded much more protection under trademark law and are generally much easier to register.
trademark clearance questions
Is a clearance search legally required?
Nope, there is no law that requires us to clear your mark before registering it.
But clearance is very important for two reasons:
You don’t want to spend the time and money trying to register a mark that can’t be registered.
You can unknowingly end up infringing on somebody else's rights and having to rebrand, or worse, get sued for infringement.
Can I do the clearance search myself?
Absolutely! You can check various databases to see if your trademark and similar looking and sounding trademarks are already in use in connection with similar goods and services.
For federal trademarks you’d need to search the USPTO’s TESS database, for state trademarks you’d need to check each individual state’s trademark registry, and for common law trademarks you’d need to check each state’s corporate records, the internet, social media, and domain registries.
However, your manual trademark search will never replace a professional Comprehensive Trademark search.
Manually searching for all similar looking and sounding marks in so many different databases is incredibly time consuming and hard, even for the most seasoned trademark professional.
But even if you’re a search expert, the results alone won’t give you the information you need. These results would need to be analyzed for “likelihood of confusion”, which is the legal analysis that the USPTO does before it decides whether to allow your mark to register.
So, unless your search skills are comparable to an AI robot, you have extensive knowledge of trademark law, and you’re highly skilled at legal analysis, a professional comprehensive clearance search is the only way you'll be able to make an informed business decision about whether you should use or register your trademark.
What is a comprehensive trademark search report?
When conducting a Comprehensive Clearance Search, we hire an independent search company that uses a proprietary algorithm to comb through hundreds of databases and millions of data points.
The results are then presented to us in a 1000+ page Comprehensive Trademark Search Report, which includes both identical -and- similar federal trademarks (registered and pending registration), state trademarks, and common law trademarks.
What goes into an opinion letter?
Once a Comprehensive Search Report is generated, the results are reviewed and analyzed for “likelihood of confusion” – how similar is each mark to your mark and how similar are the goods and services to your goods and services. This is the same analysis that the USPTO does when deciding whether to allow your mark to register or not.
The report also gives us a birds eye view of other things that may cause issues for your registration.
Once the analysis is done, it’s presented to you in an Opinion Letter, which:
Flags all the potentially problematic federal, state, and common law results.
Analyzes your trademark’s ability to function as a trademark (which also has an effect on registrability and the level of protection afforded to your mark under the law).
Outlines the risks associated with using a trademark that conflicts with any similar common law trademark.
Gives you the risk associated with attempting to register your trademark with the USPTO.
If any other mark poses issues for your use or registration, provides for potential workarounds.
The Comprehensive Search Report paired with the professional analysis in the Opinion Letter empowers you with the information necessary to make an informed decision on how to proceed with your trademark.
trademark registration questions
Do I need to register my trademark with the USPTO to own the trademark?
Nope. Under the US Trademark law, you own a common law trademark in your mark just by using the mark in commerce. However, there are limits to what you can and can’t do with a common law trademark.
What are the benefits of having a registered trademark?
A registered trademark pre-emptively keeps your competitors and infringers at bay because:
Your mark is entered into the USPTO database, where everyone can find it and be put on notice that you are the owner of the mark.
Your right to use the ® mark also puts the public on notice of your registration.
The USPTO examiners may block identical or similar marks from being registered.
You can notify US Customs and Border Patrol of your registration, and they will keep an eye out for goods that infringe on your mark that are imported into the US from overseas.
A registered trademark boosts your profits and brand value because it:
Gives you (and nobody else!) the exclusive, nationwide right to use the mark (in connection with specific goods or services).
Enhances your brand’s goodwill by limiting customer confusion and brand dilution.
Provides the basis to obtain a trademark in other foreign countries (even if you’re not in those countries yet), which makes global expansion that much easier.
Allows you to license your brand assets to other businesses or individuals who may want to use them (and pay you for it!).
A registered trademark makes enforcing your trademark rights cheaper and easier because:
It makes it easier to remove infringing content online and on social media.
It makes it easier to remove maliciously infringing domain registrations.
It creates a legal presumption that you are the owner of the mark, that the mark is valid, and that you can enforce your rights, which could offer a big advantage in court.
It automatically creates a basis for a federal trademark infringement lawsuit in federal court, which potentially provides for significantly higher monetary damages and reimbursement of litigation fees.
If you’ve had a registered trademark for five years, your mark could become “incontestable”, which would make it much more difficult for someone to challenge the validity of your registration.
Can I register my own trademark?
Yes. If you are domiciled in the US, you can register your own trademark. Foreign applicants are required to have a US-based licensed attorney.
If I apply, is trademark registration guaranteed?
No, it’s an application process and registration is never guaranteed.
Will registering my trademark prevent others from registering the same mark?
Maybe. You only own your trademark in connection with how you use it.
So, if someone tries to register the same or similar trademark for the same goods or services as you, then yes, the USPTO will likely prevent them from registering it.
However, if the goods and services are not similar (or in any way related) to yours, then it can be registered (unless, of course, it conflicts with another registered mark).
That’s why “Delta” is a registered trademark for both Delta Airlines and Delta Faucets are both registered trademarks.
Do I need to be using my trademark before I register it?
Even though trademark rights in the US attach only when a mark is used in commerce, one other advantage of registration is the ability to essentially call "dibs" on a mark that you have a legitimate intent to use in the future.
By filing on an "intent to use" basis, you can start the application process before you officially use the mark, and as an added bonus, your application filing date can then later be used as your "first use" date.
However, you will need to actually start using the mark before it can be registered, and you'll need to provide proof of this use to the USPTO.
How long does trademark registration take?
The registration process can take anywhere from 10 months to 3+ years, depending on the circumstances.
Currently, there’s a huge application backlog at the USPTO and it is taking at least 7 months for an Examining Attorney to even take a first look at an application.
What does the registration process look like?
The process is a little bit different depending on what type of application is being filed:
What is the role of the Examining Attorney?
The Examining Attorney works for the USPTO and is assigned to review your application. The Examining Attorney doesn’t represent you; they are not there to help you navigate the registration process and they will not be able to help you understand trademark law.
The Examining Attorney will (in most cases) decided whether your trademark registers or doesn’t, so tread carefully when interacting with them.
What’s the difference between the principal register and the supplemental register?
The Principal Register is the USPTO database where the strongest trademarks are registered. If you recall from the “Trademark Spectrum of Distinctiveness” (see FAQ on “what makes a strong trademark”), certain trademarks are offered stronger protection under the law, so fanciful, arbitrary, and even most suggestive marks are registered on the Principal Register. You can think of this as the gold standard.
If the USPTO finds that your trademark is descriptive, sometimes they will give you the opportunity to still register the trademark on the Supplemental Register. This means that you still have a registered trademark (and can use ®, the USPTO will still prevent similar marks from registering, and you’ll get many of the other perks that come with registration), but because your mark is descriptive, you may not have the exclusive right to use that mark.
However, if your mark remains on the Supplemental Register and after enough time and use the name becomes highly recognizable (i.e.: you’re able to demonstrate “acquired distinctiveness”), you can submit proof of the same to the USPTO and the mark can be registered on the Principal Register.
What is an international class?
Since trademarks can only be registered in connection with the specific goods or services you’re using the trademark on, the USPTO has 45 classes that goods and services are categorized by. To make registration uniform throughout the world, many countries use the same classification system, hence, the classes are referred to as the “International Class(es)”.
Depending on how you’re using your trademark, you may need to register it in more than one International Class.
What is the difference between a 1(a) (in use) filing basis and a 1(b) (intent to use) filing basis?
A 1(a) filing basis is used when you’ve begun to use your mark in commerce.
A 1(b) filing basis is used when you haven’t begun to use your mark in commerce yet; however, you have a “bona fide” (i.e.: actual) intention to do so. This means, you’re filing the application because you actually want to use the mark for yourself in connection with specific goods and services and not for any other reason (e.g.: trying to stop someone else from registering it).
What is a specimen?
A specimen is a digital sample provided to the USPTO that shows how you are using your trademark in the real world in connection with the goods or services you are seeking to register. The specimen should reflect what consumers see when they are considering whether to purchase the goods or services you provide.
What is an office action?
If there’s something wrong with your application, the Examining Attorney will issue a formal letter known as an “Office Action”.
A Non-Substantive Office Action is issued when the Examining Attorney has a technical problem with your application (e.g.: amendments of descriptions of goods and services, need for additional information or disclaimers, etc.). These Office Actions typically require a simple response or amendment to the application and no other significant legal research or response. However, if you believe that the Examining Attorney is wrong (which, in many cases they are), then these Office Actions can become more contentious and a lot more involved.
A Substantive Office Action is issued when the Examining Attorney has a substantive issue with your proposed trademark and what we try to avoid at all costs because it typically includes a refusal to register the trademark. These are issued for any number of reasons, but mostly because there are conflicting marks that pose a likelihood of confusion with your mark or because your mark fails to function as a trademark (hence, why we do a preliminary search and analyze our trademark before registration). A response to these Office Actions involves a lot of legal research and a formal legal response. These types of Office Actions are often very difficult, if not impossible, to overcome, especially if you are not well-versed in trademark law.
A Suspension Notice is issued when there is a pending application for a mark that conflicts with your trademark and that application has a filing date that is earlier than yours. The Suspension Notice lets you know that review of your application is suspended until that application is resolved. You do not need to respond to the Suspension Notice; however, if the conflicting mark is registered, your suspension will be lifted and the Examining Attorney will issue a Substantive Office Action for a likelihood of confusion refusal.
What happens during the 30-day opposition period?
Once your trademark is cleared for publication by the Examining Attorney, it will be published for 30 days in the Trademark Official Gazette (TMOG). During this time third parties have the right to object to the registration of your trademark by filing an Opposition Proceeding before the Trademark Trial and Appeal Board (TTAB).
Not everyone is allowed to object to your registration, the objecting party actually has to have a real stake in the outcome if your trademark registers.
What happens if someone opposes my registration?
An objecting party has 30 days to start an Opposition Proceeding before the TTAB if they want to object to your registration.
To initiate the proceeding they will either file:
An Extension of Time to Oppose, which extends the 30 day period and gives them time to research you and your trademark, and usually, reach out to you with their concerns. Many times, parties can negotiate a resolution to the issues while the Extension is in effect.
A Notice of Opposition, which is the official document that starts the Opposition Proceeding. It’s similar to the first documents filed in a court case, and it puts you on notice that a claim has been filed, it also outlines the opposers grievances and why they believe that your trademark should not be registered.
What is a notice of allowance?
If your application goes through the 30 day Opposition period without incident, then if your application was a 1(a) (in use) application, your trademark will be registered.
However, if you filed your application on a 1(b) (intent to use) basis, you will receive a Notice of Allowance after the Opposition period. You will then have 6 months to prove to the USPTO that you’ve begun to use the mark in commerce by submitting a Statement of Use and providing a specimen. If you haven’t started to use your mark yet, you’ll be able to file an extension of time at this time. You can file 5 more extensions after that, giving you up to 3 years to begin using the trademark.
Your intent to use trademark will not proceed to registration unless and until you submit a Statement of Use and specimen to the USPTO.
How long does my registration last?
Technically, your registration is good for 10 years. However, during the first 10-year period, you’re required to renew your registration between year 5-6. At this time you’ll need to prove to the USPTO that you’re still using your trademark in connection with all the goods or services listed in your application. Or if you have a valid reason (under the law) for why you’re not using your mark, but would like to still keep the registration, you’ll need to provide a statement to the USPTO.
You’ll then need to renew your registration again between year 9 and 10. After that, you’ll only need to renew your registration every 10 years.
What is incontestability and why do I want my trademark to be incontestable?
If your trademark is registered on the Principal Register, then between year 5 and 6 you can submit a filing (along with your renewal) that would make your trademark incontestable.
An incontestable trademark is generally a trademark that can’t be challenged, if several conditions have been met:
You’ve been consistently using the mark in commerce for 5 consecutive years
The trademark registration was not fraudulently obtained
The trademark has not become generic
Do I lose my trademark rights if I don’t use or enforce my trademark rights after registration?
Yes. Your trademark rights can be taken away for:
Not using your trademark at all
Not using your trademark in connection with all the goods and services listed in your application
Inconsistent use of your trademark
Not enforcing your rights when infringement arises.
There are several ways in which your rights can be taken away:
By the USPTO, if they decide to conduct a post-registration audit on your application (these are done at random!)
By third parties through a cancellation proceeding before the TTAB
Under the new Trademark Modernization Act which the USPTO will be implementing in December 2021, third parties now have a quicker and cheaper way to take your rights away for non-use through new Reexamination/Expungement Proceedings.
So, if you don’t want to lose it, you better use it.
Does the USPTO monitor my trademark for infringement once it’s registered?
No. While the USPTO will prevent a similar mark (in the same or similar international classes) from registering, they will not monitor your trademark for infringement. That is your responsibility.
Does the USPTO enforce my trademark rights once it’s registered?
No. If you discover that somebody has been infringing on your trademark, the onus is on you to enforce your rights.
Your mark is only as protected as you protect it. Registering a mark without the intention of enforcing your rights makes no sense and can lead to potential registration cancellation.