1. Advantages of Registration. Although trademark rights do not require registration, there are significant benefits provided by federal trademark registration, including:
• Rights are conferred on a nationwide basis without regard to areas of actual use;
• Certain rights in the trademark become “incontestable” after five (5) years of issuance;
• Federal registration provides access to federal court jurisdiction and also allows recovery of certain types of damages unavailable without a federal registration; and
• Federal registration provides constructive notice to those who later adopt similar marks. In other words, the law treats the later user as having been aware of the existence of the registered mark, even if they did not check the records. The effect of this provision is to give the registrant priority rights over anyone who begins use of the same or a similar mark after registration.
2. Procedural Requirements for Federal Registration. A federal registration application is filed in the name of the trademark owner. Applications can be based on actual use of the mark in interstate commerce or on a bona fide or good faith intention to use the mark in the future. An application also can be based on a foreign application or a foreign registration, and must include a description of goods or services with which the mark is used or intended to be used.
Applications can be filed electronically using the Trademark Electronic Application System (TEAS) at www.uspto.gov. After the application is filed with the USPTO, it is examined to, among other things, determine if there is any likelihood of confusion with another trademark, or if the mark is descriptive, or if the identification of the goods and services needs clarification. After the application has passed examination, the mark is published in the Trademark Official Gazette, which starts the 30-day period for any person to oppose the mark. If no opposition is filed, a certificate of registration is issued.
3. Maintaining Trademark Rights
In order to maintain trademark rights once a certificate of registration is issued, take note that,
- The mark must be consistently used so that it does not become generic.
- A Statement of Use, and optionally a Declaration of Incontestability,must be filed between the fifth and sixth year from the date of registration; and
- The registration is valid for 10 years from its stated registration date unless sooner terminated by law and provided that a Declaration of Continued Use is filed between the fifth and sixth year from the date of registration. The registration may be renewed for additional 10-year terms provided that the mark is still in use. The life of a federal trademark registration can be indefinite provided that renewal requests are filed every 10 years.
To find out more please access our IP Primer page.
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