Trademarks FAQs

What is a trademark?
What is a service mark?
Do I have to register my trademark?
What are the benefits of federal trademark registration?
Do I have to be a U.S. Citizen to obtain a federal registration?
When is it proper to use the federal registration symbol (the letter R enclosed within a circle -- ® -- with the mark.
What constitutes interstate commerce?
Is a federal registration valid outside the United States?
On what bases can a foreign applicant file an application for registration?
Can the Office refuse to register a mark?
How long does it take for a mark to be registered?
How long does a trademark registration last?
How long does an Intent-to-Use applicant have to allege actual use of the mark in commerce?

What is a trademark?

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

What is a service mark?

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

Do I have to register my trademark?

No, but federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

What are the benefits of federal trademark registration?

Constructive notice nationwide of the trademark owner's claim.
Evidence of ownership of the trademark.
Jurisdiction of federal courts may be invoked.
Registration can be used as a basis for obtaining registration in foreign countries.
Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Do I have to be a U.S. Citizen to obtain a federal registration?

No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration.

When is it proper to use the federal registration symbol (the letter R enclosed within a circle -- ® -- with the mark.

The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. [Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.]

What constitutes interstate commerce?

For goods, "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

Is a federal registration valid outside the United States?

No. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the International Bureau of the World Intellectual Property Organization, through the USPTO.

Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. The laws of each country regarding registration must be consulted.

On what bases can a foreign applicant file an application for registration?

Use in interstate commerce or commerce between the United States and a foreign country.
Bona fide or good faith intention to use the mark in interstate commerce or commerce between the United States and a foreign country.
Ownership of an application filed in a foreign country (if within six months of the foreign filing date).
Ownership of a foreign registration (with a copy).
Extension of protection of an international registration to the United States under the Madrid Protocol, pursuant to section 66(a) of the Trademark Act.

Can the Office refuse to register a mark?

Yes. The Office will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.

Additionally, Section 2 of the Trademark Act (15 U.S.C. §1052) contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as:

The proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
The proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
The proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
The proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
The proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;
The proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;
The proposed mark is primarily merely a surname; and
Matter that, as a whole, is functional.

How long does it take for a mark to be registered?

It is difficult to predict how long it will take for an application to mature into a registration, because so many factors can affect the process. Generally, an applicant will receive a filing receipt almost instantly if filing from the Trademark Electronic Application System (TEAS), or approximately two weeks after filing on paper. The filing receipt will include the serial number of the application. All future correspondence with the USPTO must include this serial number. You should receive a response from the Office within approximately three months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. Current status information on trademark applications and registrations may be obtained through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/.

How long does a trademark registration last?

For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee.

The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.

Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term.

This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.

How long does an Intent-to-Use applicant have to allege actual use of the mark in commerce?

An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the Examining Attorney approves the mark for publication. If an Amendment to Allege Use is not filed, then applicant has six months from the issuance of the Notice of Allowance to file a Statement of Use, unless the applicant requests and is granted an extension of time. If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted.