Trademark FAQs | The Complete Guide to Trademark Law

What is a Trademark?

A trademark is a source identifier – it may be a word, logo, slogan, sound and or design that when attached to a good or service, enables a consumer to identify the company which produces the good/service.

How Do I Register a Federal Trademark

To obtain a federally registered trademark, the applicant is required to fill out and submit a trademark application to the United States Patent and Trademark Office, or USPTO. The trademark application will contain information about the applicant, the desired trademark, and the nature of the goods/services to be protected under the trademark. The USPTO examining attorney will then first evaluate the distinctiveness of the applicant's mark vis-a-vis the goods/services (if the trademark is not sufficiently distinct, it is not eligible for trademark protection) and then search the USPTO database to see if there are any trademarks which are too sufficiently similar to the applicant's, which would result in a conflict. In the event that the examining attorney approves the application, it will proceed to the Official Gazette for a 30 day period of “publication” upon which any third party with a legitimate claim against the filing can submit an “opposition” to the application. If no oppositions are submitted, the applicant's trademark application will be cleared for final registration.

Do I Need to Sell a Good/Service to Obtain Trademark Rights?

Yes. If the aspiring owner of a trademark is not actually selling anything in conjunction with the clever name or slogan, the owner does not actually have a trademark – just a clever name or design. To obtain trademark protection, one must have first made a meaningful number of sales of the product/service under the banner of the trademark.

Do I Need to Sell My Goods/Services Throughout the Entire Country?

To obtain a Federal Trademark from the United States Patent and Trademark Office (USPTO), one must demonstrate that he/she has made bona fide sales (what qualifies as bona fide is unfortunately not so clear) in Inter-state commerce. This means that simply selling your product within your home-state is not good enough - you must be selling it across state lines.

How Many Sales Do I Need to Make to Satisfy the "In Commerce" Requirement?

Unfortunately, the USPTO has not to date provided an exact number of sales/money earned necessary to satisfy the In-Commerce requirement. Instead, the law provides that a "Bona-Fide" number of sales must have been made. Ultimately, use your judgment. A token sale of one t-shirt to a friend does not count as "Bona-Fide sales" but 100 t-shirts to multiple parties most likely would.

Do I Need to Have a Registered Trademark Before I Start Selling My Goods/Services?

No, however, it might very well be the prudent thing to do. Conducting business without the protection of a registered trademark may render you vulnerable to a third party using and preemptively registering the trademark in the USPTO before you get a chance to file! If you are serious about your business, it is worthwhile to first register your trademark and protect your business against infringement.

What is a "Specimen" and When Do I Need One?

A specimen is an illustration of how the trademark applicant is actually using the trademark in commerce. A specimen may consist of a picture of a label, tag, packaging material, etc. which bear and display the trademark. Simply, the specimen is the proof of the actualization of the "Use-In-Commerce" requirement. In the event that a trademark is used in conjunction with a service, rather than a good, permissible specimens include brochures, flyers, advertisements, etc.

Can I File a Trademark Application if I'm Not Currently Selling Any Products?

Yes, with an Intent-To-Use trademark application. Section 1(b) of the Lanham Act, 15.U.S.C. § 1051(b) states that “…person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark.” Once the ITU Trademark Application has been accepted and you have been issued a Notice of Allowance (NOA), you have six months to either submit your Statement of Use or file a petition to extend your submission of a Statement of Use. Each extension request will allow the applicant an additional six months to provide the Statement of Use. The applicant has the right to 5 extension requests.

What Does it Mean For Trademarks to be "Used" in Inter-State Commerce?

In order to obtain a registered trademark, the trademark must be attached to a good or service that has been sold in Inter-State Commerce. What precisely does this mean? Well, in the case of goods, simply that the goods must be sold over State Lines and for services, simply that the service must be offered in multiple States.

Is There a Difference between a Trademark and a Service Mark?

Not really. A trademark is a word, logo, slogan, sound and or design that when attached to a good, enables a consumer to identify the company which produces the good. A Service Mark is a term used more specifically to refer to word, logo, slogan, sound and or design that when attached to a service, enables a consumer to identify the company which produces the service.

How Long Does the Trademark Application Process Take?

From the time of submitting the trademark application, the applicant may expect to hear back from the USPTO within 3-6 months. Then, depending on whether or not the trademark was found to be an eligible trademark for registration or ineligible for registration (the reason/s for which will be addressed in an office action), the process will take an additional number of months. Therefore, the total time for an application to be processed, from beginning to end, maybe anywhere from (nearly) 8 months to 1 + years. However, it is critical to file the trademark application as soon as possible so as to obtain the earliest possible filing date.

Is There a Way to Speed Up The Process?

Typically not, however, there are certain circumstances underwhich the trademark application process can ber expedited. Specifically, in matters of litigation, the possibility of trademark infringement, or when there exists a unique need to obtain a U.S. trademark to procure a foreign registration. The applicant must demonstrate a substantial need for the application to be expedited. Still, even if the applicant manages to gain an expedited review by the USPTO, the registration process will still takes around 4 to 6 months..

Do I Need to Conduct a Trademark Search Before Filing My Application?

While there is no rule or law which mandates first conducting a trademark search before submitting a trademark application, it is undoubtedly wise and important to do so. The purpose of the trademark search is to uncover any sufficiently similar trademarks, which may bar the admission of your trademark.

What is TEAS?

The USPTO provides applicants with the opportunity to submit a trademark application through the Trademark Electronic Application System (TEAS). The purpose of TEAS is to allow applicants to easily submit trademark applications online and indeed pay the required fees online.

What Kinds of Trademarks May be Submitted through TEAS?

TEAS is a robust system and allows applicants to submit names, logos and even applications for sound marks and motion marks.  To submit an application for a sound trademark, TEAS requires the sound file to be a WAV, WMV, WMA, or MP# and may not exceed 5 MB in size.  To submit a sound mark file;

1. Upon arriving at the “Mark Information” stage of the new application, please select the “Sound Mark” option by engaging the radio button.

2.  Select the “Browse” button to find the sound file on your computer.

3. Locate the sound file on your computer and click toe “Upload File” button to attach it to your application. 

4. Verify that the sound file has been uploaded and provide a description of the sound in the relevant input box.

To submit a motion trademark, please submit a drawing containing several freeze frames which illustrate different stages of the motion in order to convey to the USPTO examiner the commercial impression of the mark.

To submit drawing and image files, TEAS has a number of requirements;

1. Image must be in JPG format

2. The image must be 5 MB or smaller

3.  The name o fthe file itself cannot exceed 256 characters long

4.  The trademark image must not also include trademark registration symbols including the “Circle R”.

5.  If the applicant is not claiming color as a feature of the trademark, the image should be submitted in black and white or grayscale.

6.  The submitted image may not be zipped or compressed

7.  The submitted image should be a high-quality version of the image with a high resolution.

Does the TEAS Web Application Have a Time Limit When Filling Out a Trademark Application?

TEAS monitors the duration of time the applicant spends on the form and imposes a 60 minute time limit to complete the trademark application. At the 54-minute mark, TEAS will automatically notify the applicant through a pop-up window that the session will expire at the end fo the 60 minutes and if TEAS does not detect any activity during the 60 minutes, it will automatically end the session.

Can an Applicant Submit a Trademark Application on TEAS at Any Time of the Day?

Officially, the Trademark Electronic Application System (TEAS) allows trademark applications to be worked on 24/7 (although credit card payments are not accepted on Sundays from 2 AM to 6 Am). The reality, however is that TEAS is not always working properly and may very well be down unexpectedly, or for a scheduled maintenance session so that technicians at the USPTO fix bugs. As dates are so important to the trademark process (along with setting priority dates), it is critical to appreciate that forms submitted through TEAS are date and time stamped at the moment of receipt on the USPTO server.

What is the USPTO Filing Fee for Trademark Applications Submitted on TEAS?

The USPTO offers three different types of applications to choose from when registering your trademark; The TEAS Plus filing option which, costs $225 per Class of Goods/Services, the TEAS Reduced Fee which costs $275 per Class of Goods/Services, and the TEAS Regular Filing option which is $400 per Class of Goods/Services.  

Fundamentally, these options vary in the amount of flexibility afforded to the applicant.  The TEAS Plus option is the most restrictive and demands several items from the applicant while submitting an application, all of which may be found in full here: TMEP §819.01. Perhaps most importantly, TEAS Plus applicants may only choose from the list of pre-approved descriptions when designating the goods/services.  Naturally, this means that the rate of refusals for TEAS plus applicants is lower than the other applications. The TEAS Reduced Fee filing is slightly less demanding and entails, first and foremost, the acquiescence of the applicant to submit and file electronically application-related correspondences.  The TEAS Regular filing option is obviously the most expensive and affords the greatest flexibility.  Specifically, the TEAS Regular filing option does not require the application to include an e-mail address and authorization for the USPTO to send application-related e-mail correspondences.  Additionally, the identification of the goods/services may be drafted by the applicant and need not be selected from the pre-filled list provided by the USPTO. 

NOTE: In the event that the applicant proceeds with a TEAS plus or TEAS RF application but fails to meet all of the associated requirements of these applications, the applicant will need to pay an additional processing fee of $12 peer Class of Goods/Services, which will convert the submitted application to a TEAS Regular.

What Happens if the Trademark Application Does Not Convert Into a Registration?

The USPTO views the filing fee as a processing fee and will therefore not return the fee, even in the event that the application is denied and the trademark is not registered.

What Forms of Payment Does the USPTO Accept?

The USPTO accepts payment, external to the trademark registration form and at the end of the process of the applicant submitting the relevant applicant and trademark information. The USPTO accepts three different payment options; Credit Card Payments, Automated Deposit Account payments consisting of a pre-paid account managed online by the USPTO, and an Electronic Funds Transfer option which allows online payments to draw directly from a U.S. bank account.

Why Was My Trademark Application Rejected?

There are a variety of prospective reasons Trademark applications may be rejected. Procedural reasons usually involve relatively minor issues (the name of the applicant is incorrect, the applicant misstates the type of business entity registering the trademark etc.) while substantive reasons (the mark is too generic/descriptive, the mark may create a likelihood of confusion with a senior trademark) are often more challenging to overcome and require legal arguments to overcome to the trademark examiners objections. For a more detailed list of possible reasons for trademark application rejections, please see the following question.

What is a Trademark Office Action?

Upon receiving a Trademark Application, the USPTO Trademark examiner will need to decide if the Trademark is eligible for registration. If the mark is deemed ineligible from registration, or if the examiner feels that he/she requires additional information before deciding whether or not a verdict can be made about the eligibility of TM registration, the applicant will receive an Office Action. Reasons for trademark application rejections include; Disclaimer request, Amendment of the identification of goods/services in an application required (either a change or an addition required), Substitute Specimen required, Refusal on the basis of likelihood of confusion, genericness, descriptiveness, misdescriptiveness, geographic significance, surname, or other substantive objections.

What Should I Do If I Receive a Trademark Office Action?

Contact a Trademark Attorney. Office Actions can be complicated and your trademark lawyer will help you determine the nature of the Office Action (is the problem procedural or substantive) and the likelihood of surmounting it. If the Office Action is merely procedurally oriented, the trademark attorney won't have too much work ahead of him. However, if it is substantive in nature, the trademark attorney will need to draft a legal argument addressing the issues raised in the Office Action. Typically, substantive Office Actions will either consist of claims that the desired trademark is not sufficiently distinct (and therefore ineligible for trademark registration) OR there is a likelihood of confusion between the applied-for trademark an existing trademark.

Trademark Symbols ®, TM, SM; Which One Can I Use?

The circled R can only be used once the applicant has obtained a federal registration - not upon submission of the trademark application. Indeed, in the event that the applicant uses the circle R before receiving the registration, the USPTO may very well decide to cancel the trademark application altogether. Instead, applicants should use the little capital letters of TM or SM before the trademark application registers.