While common law trademarks enjoy local protection in case of infringement, the best approach is to register a trademark at the state or federal levels. Obtaining a federal trademark requires applicants to file with the United States Patent and Trademark Office (USPTO).
What are the requirements for a federal trademark? Read on to find out.
What Are the Requirements for a Federal Trademark? – Understanding USPTO Registration
No statutory regulations require federal trademark applicants to work with an attorney to handle the forms and submit them to the USPTO. However, trademark applications are highly technical by nature.
Applicants who are not familiar with the relevant legislation and technical procedures involved in the process may inadvertently incur failures that will result in time-consuming appeals or costly denials.
The best strategy to avoid an unpleasant outcome is to rely on the guidance of an experienced trademark attorney to conduct the application process.
Uniqueness is the Foundation
Before applying with USPTO, the applicant must identify the level of distinctiveness and uniqueness of the proposed mark. The purpose of a trademark is to distinguish the source of goods or services in the marketplace and prevent consumer confusion.
Demonstrating that your trademark sets your business apart from competitors within the same industry is crucial to federally registering the trademark. If an applied-for trademark is considered too generic, descriptive, or has a “likelihood of confusion” with other marks, the chances of refusal increase exponentially.
USPTO defines that a “likelihood of confusion” happens when “the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.”
Active Use of Trademark
When submitting an application for registration with USPTO, the application must be based on the use or intent to use the trademark in commerce. Hence, the trademark must have been actively used on goods or services.
It is crucial to remember that trademark rights derive from their use in business, not necessarily from registration. As part of the application, the applicant must submit evidence of trademark use, such as samples or “specimens.”
It is possible to apply for a trademark registration based on an intent to use. However, it requires a later statement of use showing that the trademark is already functioning in commerce before the official registration.
The applicant must also provide additional details such as the first date of use, the accurate class designation for the goods or services, and a detailed description of each specimen submitted with the document package.
A federal trademark must be registered in the name of an individual or a legal entity. It is imperative the application correctly identify the owner of the mark. Depending on the applicant’s status, it may require information like:
- Proof of the applicant’s US citizenship (if applicable)
- Business registration (if applicable)
- Specific business title (for international companies)
If the applicant is not a US citizen or a company registered in the United States, trademark law requires the representation of a licensed US attorney.