Register a Trademark in the US
US trademark registration process is probably one of the most complex. We know all the little tricks to register your US trademark quickly with the lowest risk of getting a complex objection. With the multitude of forms to navigate, you can trust our firm’s experience for your US trademark filing needs.
Important highlights about the US trademark registration process:
- Your trademark is reviewed on absolute and relative grounds and it can be refused if there is a similar mark or if the mark is descriptive or decepitve
- There is a Supplemental Register in the US so if your trademark is descriptive you can still register (unlike in many other countries)
- You need to submit proof of use for your products/services before your trademark registers; however, you can filed based on “future use”
- Opposition period is only 30 days
- Trademark registration process is about 8 months if everything goes well.
Kaiko Shimura is a graduate of Boston College Law School (class of 2010). Kaiko is barred in both Massachusetts and New York states. She has extensive experience drafting litigation documents such as motions and briefs, and trademark objection responses. Kaiko loves legal writing and research and uses both to structure strong arguments for all of her clients.
Thomas Caraco is a well-versed attorney based in New York. He specializes in business law and business contract drafting of all types and the drafting of all litigation documents. Thomas graduated from Vermont Law School in 2012 and has been practicing law since then.
Pricing of Our Packages
The prices are in USD$ for the US
- Covers filing your application and reporting the progress all the way to registration. 2 classes included. This is our entry-level package.
- Covers full trademark registration, including reporting and responding to non-substantive examiner’s objections and free re-filing.
BELLS AND WHISTLES
- Covers all aspects of trademark registration, including responding to all examiner’s objections and free re-filing. More free extras.
Details about pricing packages
Government fees are not included in our packages and are extra
- Upgrade “SAIL THROUGH” package to “ALL IN” package
- Upgrade “SAIL THROUGH” package to “BELLS AND WHISTLES” package
- Upgrade “ALL IN” package to “BELLS AND WHISTLES” package
What is the difference between company name, business name, domain name and brand or trademark?
What are different types of company, domain, business or brand names? Let’s get the names straight to avoid confusion.
- Company name: Legal name of the company, either registered federally or in a certain state (or province in Canada).
Example: Microsoft Corporation
Note: one company may own more than one brand and may do business under more than one name
- Business name or doing business as: Name under which you conduct your business.
- Domain name: Name of your address on the Web.
Example: www.skype.com (Microsoft owns Skype)
- Trademark: A trademark may be one word, a combination of words, or logos (or even sounds and smells!) used to distinguish/differentiate your products or services from those of other entities.
Example: MICROSOFT, , or a combined mark:
Let’s take another example of a giant retailer Kraft Foods.
Company name: Kraft Foods Inc.
12 of Kraft Foods brands are sold worldwide: Cadbury, Jacobs, Kraft, Maxwell House, Milka, Nabisco, Oreo, Oscar Mayer, Philadelphia, Trident and Tang.
For each brand Kraft Foods has a website: cadbury.co.uk; cadbury.com.au; oreo.com; oscarmayer.com, etc.
Not everyone knows that these 12 famous brands are owned by the same giant! It doesn’t really matter, what matters is that everyone knows where do buy their favorite Cadbury chocolate or Oreo cookies and everyone knows how the Oreo cookies package looks like!
To open in a new tab, click: What are different types of names? Company name vs business name vs domain name vs trademark?
If you simply incorporate or register a corporate name , it doesn’t mean that the government approved for you to use the name as a trademark.
If we take a US LLC, as an example, every state has its own laws about business names.
You can register your LLC name in Delaware but the business name registration has no impact on the other 49 states.
In plain English, if you register Coolapples LLC in Delaware, another entity may register Coolapples LLC in Indiana. If you plan to expand nationwide or worldwide, trademark registration will provide that protection. A federal US trademark will give you exclusive rights to use your brand name for your products across the US. Likewise, a Canadian or Australian trademark will give you country-wide rights to use your chosen brand in your country and will make it easier for your to sell or license your trademark later.
To open in a new tab, click: Do I need to register a trademark if my business incorporated?
In the US, use is not required prior to filing. However, a trademark must be put to use prior to registration unless a foreign applicant relies on a foreign registration as the filing basis. To register a trademark one must file a Statement of Use together with specimens of use.
Use is mandatory after registration. In fact, a mandatory Affidavit of Use must be filed between the 5th and the 6th year after registration. If no affidavit is filed, the trademark is cancelled automatically.
In addition, trademarks that are not in use after registration may be cancelled by filing a petition to cancel.
To open in a new tab, click: Do I have to use my trademark in the US prior to filing? Do I have to use my trademark after registration?
It’s perfectly legal for you to use your trademark without registration. However, if you are using a trademark that is similar to another name that was adopted before you adopted your trademark, you may be liable for trademark infringement.
To minimize the risk of choosing a trademark that’s similar to another name, you should do a trademark search of the Trademark Office database of the country where you plan to use your brand and of the marketplace (check on Internet for similar names usage).
To open in a new tab, click: Can I use my trademark if it isn’t registered?
In different countries trademark opposition process is different.
In the US, trademark opposition period is only 30 days, so you have to be pretty fast if you plan to oppose.
In Canada, one has to file a trademark opposition within a 2-month period.
In the UK, an opposition period is 2 months but can be requested to 3 months upon a request made by a party that intends to oppose.
In the European Union, a notice of opposition must be filed within 3 months following the publication.
In Australia, the opposition period is 3 months from the date of publication.
To open in a new tab, click: How long is a trademark opposition process?
It takes a minimum of 8 months to register trademark in the US. If there are office actions (objections from the Trademarks Office), then registration will be delayed. It’s not uncommon for a registration to take a year or longer.
It takes 20 months to register a trademark in Canada. It’s painfully slo-o-ow. Don’t ask us why. We don’t know the answer. We feel your pain though. Hopefully, once Canada joins Madrid protocol things will improve.
You will have to wait for about 7.5 months to register a trademark in Australia.
In the European Union, the registration process is about 6-7 months. Not so bad, but the government fees are very high. If your application is filed using “fast-track” method, then the whole process may take about 4-5 months.
The winner is the United Kingdom, where it takes about 4 months from filing to registration. Added bonus is low government fees.
To open in a new tab, click: How long does it take to register a trademark?
Trademarks can last forever if they are renewed on time. Keep in mind you will have to continue using your trademark to keep it in good standing.
In the US, you must renew your trademark every 10 years. In addition, between the 5th and 6th year after the registration date, you must file an “affidavit of use” to keep the registration alive.
In Canada, a trademark has to be renewed every 15 years (the renewal period will be changed to 10 years soon).
In Australia, European Union and the United Kingdom, you have to renew your trademark every 10 years.
To open in a new tab, click: How long are trademarks valid for?
A specimen of use is an example of how your trademark is used on goods and services in the marketplace. Goods means products.
To show use for goods, your trademark should be affixed/attached on the actual product or packaging of the product. A photo, mockup or drawing of the mark is not enough.
A person can submit tags, instruction manuals, containers, labels, or packaging materials. It may be the easiest to take a photo of your product and/or the packaging and ensure that the trademark is clearly visible.
Advertising materials are generally not acceptable as a specimen for goods.
If you offer services, the easiest way to prove use is to provide a screenshot of your website so that the trademark is clearly visible in the website header. You can also provide flyers, directory listings, and brochures. A business card or a photos of your business signage could be an acceptable specimen of use for services if the card displays your trademark along with the services the mark is associated with.
It is important to submit the right specimens of use in order to avoid trademark refusal. If you are not sure which specimens will be acceptable, call Trademark Angel.
To open in a new tab, click: What is a specimen of use?
In this video, we will discuss some examples of acceptable specimens of use for your trademark application.
First, we’ll discuss acceptable specimens for products.
A photograph of the product showing the mark the actual product.
Examples: metal plate on a bag or wallet; barbecue grill.
Packaging of the product showing the mark.
Example: tissue boxes; packaged fruit or vegetables; packaging for a toy.
Signage used in a product display in a store.
Example: Photograph of the physical product display.
Product labels and tags showing the mark.
Example: inside label of a t‐shirt; hang tag on a blouse or pants.
A Internet page showing the product near the mark and together with purchasing information.
Example: a website page shows a photograph of headphones, the mark for the headphones appears above the photograph, the price appears below or next to the photograph, and a shopping cart button or other way to purchase the headphones appears on the page.
If your product is downloadable software, you can prove use by showing copies of the instruction manual and screen printouts from the actual program that shows the mark in the title bar, or launch screens that show the mark in an introductory message box that appears after you open the program. A web page showing the mark in connection with the information sufficient to download the software will also be acceptable.
A specimen for services generally shows the mark used in the sale or advertising of the services. A customer should be able to associate your trademark with your services on the specimen.
To open in a new tab, click: How do I find an acceptable specimen of use?
Trademarks may be filed at the state or federal level.
State trademarks protect your mark in a specific state while federal trademarks protect your mark in all the states.
State trademarks generally provide less legal protection than federal trademarks.
Businesses operating in only one state should trademark in that state. Businesses operating in interstate commerce may file for a federal trademark.
For example, if you operate a restaurant or a hair-dressing salon in Florida, you are not eligible for a federal trademark. In this case, you should apply for a trademark in the state of Florida. However, if you have two or more restaurant locations in more than one state, in our case, one in Florida and one in Georgia, you are eligible for a federal trademark.
A business intending on expanding nationally or internationally should conduct a trademark search and file a federal trademark as soon as possible.
To open in a new tab, click: What is the difference between State and Federal Trademarks?
In the US, trademark use is essential to register your trademark and to maintain it. Without use, there will be no registration and without a use after registration, your trademark may not be maintained.
Using for goods (products) is actually selling your products with your trademark being displayed either on the actual products or their packaging during the sale.
Using for services in the US is actually advertising and performing the services in the US in more than one state or in the US and a foreign country.
Use must be “bona fide” – real sales to real customers. “Token use” is not acceptable.
Use must be in the ordinary course of trade – that means that goods and services must be used in a way which is typical in a particular industry.
Note: the US law says you need to use the trademark in interstate commerce. That means that when you sell your products they need to be sold and shipped to another state or to a foreign country.
To open in a new tab, click: What is use in commerce (in the US)?
- The full legal name of the applicant (either your company or your personal name)
- State of incorporation (if filing in your company name) or citizenship (if filing in personal name)
- The full address of the applicant.
- The telephone number and email address (not required).
- The trademark name. If you are filing for a logo, we need to see the logo.
- The products which you sell or plan to sell under your trademark (provide a list).
- The services which you offer or plan to offer under your trademark (provide a list).
- Whether the trademark been used in the US: yes/no. If yes, the date of first use (sale) in the US for each product and service.
- Specimens of use if your trademark is already in use. Specimens of use are photos of your products with your trademark clearly shown either on the products themselves or their packaging. Specimens of use for services can be a screenshot of your website where your trademark is clearly seen.
To open in a new tab, click: What’s required in order to file a trademark application in the US?
- What Every Business Should Know about Trademarks Registration?
- Should I file a trademark now or should I wait
- When should I not file a trademark?
- In Whose Name Should I File My Trademark?
- Choosing and Comparing Business Structures
- What are confusingly similar trademarks?
- When should I claim color for my trademark logo?
- Can I buy someone else’s trademark?
- Taking Advantage of the Trademark Classification & the Trademark Class Systems
- 11 Trademark Tips: how should I list products and services in my trademark application?
- What is a disclaimer in U.S. trademark applications?
- What is a Statement of Use in a trademark application?
- Differences between Canadian and US trademarks
- Principal or Supplemental Register for your trademark?
- Can you trademark a color alone? Can you copyright a color?