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.
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
Initial trademark search
The team at Trademark Angel strives to make the trademark registration process as cost- and time-efficient and smooth as possible. For this reason, we offer to conduct a free trademark search for your proposed mark to give you an idea of how registrable your mark is in the country/countries you’d like to file.
We have talked extensively about benefits of doing an initial trademark search in other articles. In short, failing to search for similar marks prior to registration is quite risky and can result in additional business expenses that could have been avoided. For example, we have aided several clients who came to us after starting the process themselves, without conducting a thorough trademark search. These clients had already paid for products or packaging that displayed a mark that ultimately could not be registered as there were registered marks that were too similar to our clients’. These products and/or their packaging then had to be completely re-branded at great expense. This could have easily been avoided by an initial trademark search.
For more information about trademark searches, feel free to check out this article: Why conduct a trademark search?
Preparing your application
If the search results are positive and the mark looks registrable, we can start preparing your trademark application.
To help us prepare your application, we’ll need to know:
- Who the trademark owner will be
- If we are filing for your word mark or your logo (we usually make suggestions during the search)
- What goods and/or services you’d like to include, and
- If you’d like to file under intent to use of your mark or actual use of your mark
Intent to use vs Actual use
If you are already selling your goods or offering your services in the US, you can file for those goods and/or services under “actual use.” To prove your claim of actual use, you will need to provide what is called a specimen – in other words, an unedited photograph – which clearly shows your mark on the goods and/or services or the product packaging. A specimen is required for each class of goods/services you file for. In addition, you will need to provide the date of your first out-of-state sale if you are a U.S. citizen, or the date of your first sale in the U.S. if you are a non-U.S. citizen.
If you are filing for goods and/or services you plan to sell in the near future, you will file for those goods and/or services under “intent to use.” After your application has received a “Notice of Allowance” (see below), you will be required to file a Statement of Use attesting to the fact that you have started using your mark on all of the goods and/or services listed in your application.
To read what’s required in order to file a trademark application, please check this post: What’s required in order to file a trademark application in the US?
To read more about specimens of use and what specimens are acceptable, please check these posts: What is use in commerce (in the US)?, What is a specimen of use?, When do you need to submit specimens of use?, How do I find an acceptable specimen of use?
The cost to file an application in the US depends on how many classes you would like to include in your application. The government filing fee is $275 per class, and is NOT included in our packages.
Filing your application
Next, your application will be filed with the USPTO and we will email you a confirmation of the filing. At this time, you will also receive a trademark application number. You can check the status of your application at any time on the USPTO website with this application serial number.
Please note, we cannot change the mark that you register for, or the goods listed in your application once you file. For this reason, the goods listed in your application must be an accurate description of your actual products. We will always send you a draft of how your application will be submitted and ask that you approve the draft prior to submission. We ask that you provide us with clarifications regarding your products if the descriptions we list are not accurate.
Approximately three to four months after your application is filed, the application will be assigned to an Examining Attorney at the USPTO. This Examining Attorney will make decisions whether your application can move on to the next step of the process.
If the Examining Attorney finds that changes must be made to your application (for example, the description of your logo must be amended to be more clear, or to clarify certain goods and/or services included in your application), or that your mark is confusingly similar to another prior-filed mark or registered mark, an office action will be issued.
A response to the office action must be filed within 6 months of the date on which the office action has been emailed. The failure to respond to all of the changes required by the Examining Attorney will be considered an “incomplete” response and may jeopardize your application.
To read more about different types of office actions, please check out this article: What are office actions?
After office actions have been responded to and all outstanding issues have been resolved, the Examining Attorney will approve your mark for publication in the Official Gazette. This does not mean that your trademark has registered; rather, your mark will be published for potential third parties to oppose your mark if they believe your mark conflicts with one of their own marks.
Receiving an opposition is quite rare, but if this does occur, we will happily refer you to an attorney with extensive experience in this field.
If no oppositions are filed against your mark within the 30-day publication period, your mark will proceed to the next step in the registration process.
If you filed your application based on an “intent to use,” approximately six weeks after the end of the publication period, your mark will receive a “Notice of Allowance.”
A Notice of Allowance indicates that your mark has been approved to proceed to registration pending the filing of a Statement of Use. The deadline to file this Statement of Use is six months from the mailing date of the Notice of Allowance.
Within this six-month period, you must prove to the USPTO, through the filing of a Statement of Use, that:
- You are using your trademark on all of the goods and/or services listed in your application, and
- Your mark is being used in commerce.
To accomplish this, you must provide:
- Specimens – in other words, unedited photographs – of your product which clearly show the product and your mark on the product or the product packaging. You must provide at least one specimen per class listed in your application.
- The date of your first out-of-state sale if you are a U.S. citizen, or the date of your first sale in the U.S. if you are a non-U.S. citizen. If you listed any services on your application, the relevant date would be the first date you offered those services.
To read more about Statement of Use, please check this article: What is a Statement of Use in a trademark application?
The government fee to file a Statement of Use is $100 per class, per mark. In addition, if, for any reasons, you cannot file a Statement of Use within the six-month period following the issuance of the Notice of Allowance, you must file for an extension. Up to five extensions of six months each, can be obtained for any one mark. The government filing fee for an extension is $125 per class, per mark.
If you filed your application based on “actual use,” and your mark has not been opposed by any parties, you will receive a registration certificate with a new registration number for your mark approximately six weeks after the end of the opposition period.
If you filed your application based on “intent to use,” and you have filed a Statement of Use, and that Statement of Use has been accepted by the USPTO, your mark will proceed to registration. A registration certificate, with a new registration number for your mark, will issue approximately four to eight weeks after your Statement of Use has been accepted.
The whole process takes 8 months to over 2 years!
Best scenario – 8 months Worse scenario – 2 years or longer
Now that your trademark is registered, you can put registered mark symbol ®. Please check these posts and cartoons about proper use of a registered trademark: When and how can I use my trademark symbols? and How not to invalidate your trademark: proper trademark usage rules
After your mark has been registered, you must “maintain” your mark to keep it active. Other than continuing to use your mark on all of the goods listed in your application, you must also file a Section 8 declaration between the 5th and 6th year after your mark has registered.
You may want to also consider filing a Section 15 declaration at this time, although it is not required.
Finally, you must file another Section 9 declaration to renew your trademark between the 9th and 10th years after your mark has been registered.
To read more about Section 8 and Section 15 declarations, please check out this article: What is a Section 8 Affidavit of Use?
It is important to use your trademark properly in order not to invalidate it. Please check these posts and cartoons on the topic: How do I lose my trademark protection?
The government filing fee to file a Section 8 declaration is $125 per class. The government filing fee to file a Section 15 declaration is $200 per class. The government fee to file a Section 9 renewal declaration is $300 per class.
As the trademark registration process in the U.S. can take over a year, we strongly suggest that you consider filing for your mark sooner rather than later. There have been instances where a client has waited to file for a mark until it was in “actual use,” and during that time, a competitor had filed for a similar mark. This forced our client to file for a different mark and to order new packaging reflecting this new mark.
For more information about registering your trademark, please take a look around our site, particularly the FAQ section. If you’re ready to file for your mark and begin the trademarking process, we are available via chat and email and look forward to working with you to protect your brand.
To open in a new tab, click: Steps to US trademark registration
When deciding whether to file for either a word mark or a logo, it is important to keep in mind that a logo must always be used as it is depicted in your application. In addition, if you file your logo in a particular color in the US, you must always use your logo in that particular color.
On the other hand, word marks are somewhat more flexible. When filed in all capital letters, word marks allow the trademark owner to display it in any combination of lower case and upper case letters. For example, if you filed for the word mark TRADEMARK ANGEL ROCKS, you can use it on your goods and/or services as: trademark angel rocks, Trademark Angel Rocks, or TraDeMaRk AnGeL RoCkS.
The flexibility of a word mark ultimately makes it quite appealing as it is not limited to a particular font or color and can be displayed in a combination of upper and lower-case letters. However, filing for a logo can be more advantageous in some situations.
For example, if your mark is found to be descriptive of your goods/services or uses generic words, your mark will generally be limited to the Supplemental Register. A distinct logo, however, can “carry” the mark to the Principal Register despite the descriptive nature of your mark.
Let’s say you want to file for TRADEMARK REGISTRATION CO. for a company that offers trademark registration services. That’s a mark that is descriptive of the services offered, and will therefore would be limited to registration to the Supplemental Register. If this same mark was filed with a distinctive logo, for example:
Then, the logo could provide sufficient distinctiveness to allow registration of TRADEMARK REGISTRATION CO. onto the Principal Register (with a disclaimer for “TRADEMARK REGISTRATION CO.”).
Another situation when filing for a logo is advantageous is when there are similar marks. For example, a client wanted to register the mark HAWQUE with a design element of a flying hawk – for computer software connecting customers to security contractors, in Class 9. We advised that the logo will most likely be registrable but the wordmark alone would be too similar to marks containing the word HAWK providing similar products in the same class. Although we received an office action alleging that the HAWQUE logo mark was confusingly similar to a registered wordmark, HAWQ, that also covered Class 9 computer software, we were ultimately able to overcome the objection. Our client’s logo, HAWQUE, was successfully registered soon after.
In another case, a client wanted to register the mark ESTEEM APPAREL, either the wordmark or the logo. However, in our initial search, we found a very similar, registered mark, ESTEEM CLOTHING. In this case, we advised that the logo would have a greater chance of registration. The client chose to file for the logo instead of the word mark and, although we received a confusion objection based on similarity with ESTEAM and ESTEEM CLOTHING marks, we were able to successfully able to overcome the objection and the mark was successfully registered.
Thus, as can be seen from the above examples, it is important to first determine if your mark is too descriptive to achieve registration in the Principal Register, and whether you intend to consistently display your logo on all of your products, prior to making a decision regarding whether to file for a word mark or a logo. Also, in case there are similar marks, filing for the logo may help to differentiate and ultimately achieve registration of your mark.
To open in a new tab, click: Which trademark should I File? Word Mark or Logo?
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 business 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?
- What is Section 8 trademark declaration of use? When do I file Section 8 affidavit of use?