Overview of United States Trademark Registration Service

LegalForce is one of the Largest Trademark Filers in the world. Filing a trademark application is easy and painless. You can finish your trademark in 5 minutes.

United States Trademark Registration

Standard Package of Trademark Services $199 USD + govt fee

  • In the Standard Package, Filing a trademark application is easy and painless. You will be guided through a simple workflow to fill out the information needed to publish your trademark on Trademarkia or file your trademark with the government. If you select the government option, a licensed trademark attorney will represent you in the filing your trademark after performing a conflict check.
  • Go through a simple workflow

    All information provided will be kept in absolute confidentiality. Centralized, secure access for your brand trademarks.

  • Select which of the 170+ countries you wish to register

    Top Global IP Attorneys - Easy Online Form, Credibility, and Experience!

  • LegalForce does the rest. All processes will be performed in a timely manner

    Your trademark application will be filed correctly. You will be informed periodically about the process.

World Class Global Trademark Attorneys at Leading Law Firm.

LegalForce - one of the Largest Trademark Filers in the world. You can file and register your trademark in 170+ countries in the world through LegalForce Attorneys, including in the United States, China, Japan, the European Union, Korea, and many others. With the Standard Package, you follow step-by-step instructions designed by world class global trademark attorneys at leading law firm.

It's easy and the protection lasts indefinitely in most countries

Trademarks are names, logos, or short slogans that help distinguish a good or service from other goods and services in a particular geographic area. Once a trademark is issued by a government agency, the protection lasts indefinitely in most countries – so long as you use your mark in commerce. Filing for Trademark Protection through LegalForce Trademarkia is easy! See why LegalForce Service is superior to other options >>

Automated reminders keeps you up to date

Trademarkia can also automatically provide you with reminders and keep you up to date of your status after you file your trademark application. Trademarkia's automated reminders help you so that you don’t have to deal with government bureaucracy or forget important dates.

Background

The United States of America (U.S.) began with thirteen colonies that declared their independence from Great Britain in 1776 after the War of Independence. The U.S. was recognized as a new nation following the Treaty of Paris in 1783. The U.S. expanded across North America during the 19th and 20th centuries, adding 37 new states to the original 13. The U.S. now includes several overseas possessions. The U.S. endured a violent Civil War from 1861 to 1865, World War I and the Great Depression during the 1930s. The U.S. entered a period of post-war growth following World War 11. Following the end of the Cold War era, the U.S. remains the world's largest military power, but is continually faced with concomitant budgetary and foreign policy challenges.

Who May Apply?

Any legal person may apply for registration of a mark based on any of the following grounds provided for by the Lanham Act: 1. Use of a mark in commerce; 2. Intent to use a mark; 3. Pending foreign application in a Paris Treaty country; 4. Registration in a Paris Treaty country; 5. Request for extension of protection to the U.S. under the Madrid Protocol. Applicants may amend their basis for registration during the ap plication process. However, while an application may be filed without use, registration requires actual use of the mark in commerce, except for foreign applicants filing under Section 44 (foreign registration or pending foreign application in a Paris Treaty country) and applicants seeking an extension of protection under the Madrid Protocol.

What Can Be Registered?

Generally, any word, name, symbol, or device, or any combination thereof may be registered, if used by a person or for which a person has a bona fide intention to use in commerce to identify and distinguish his or her goods, including a unique product, from those of others and to indicate the source of the goods, even if that source is unknown. The Trademark Act provides for a Principal and a Supplemental Register. Marks that are ineligible for registration on the Principal Register may be registered on the Supplemental Register if they are capable of acquiring distinctiveness with respect to an applicant's goods and/or service.

What Cannot Be Registered?

A mark by which the goods and for services of an applicant may be distinguished from the goods andlor services of others will be refused registration on the Principal Register if it: (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after January 1, 1996. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin that are registrable, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively rnisdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional. Marks that have not acquired distinctiveness may nevertheless be eligible for registration on the Supplemental Register if used in commerce. When distinctiveness is acquired, these marks may then be registered on the Principal Register. Marks may be registered in any language. However, a translation of any foreign wording in the mark must be provided and the application itself must be in English. Marks may not be registered if they disparage a person, institution, belief or national symbol. Owners of famous marks may obtain injunctive relief against a party that uses a mark that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark after it has become famous, whether or not economic harm or actual confusion among consumers has occurred and whether or not the marks are in competition.

Rights

The filing of an application for registration on the Principal Register constitutes constructive use of the applied-for mark. Thus, the resulting registration, if issued, generally provides the registration owner with nationwide priority with respect to the mark for the goods and services named in the registration over any subsequent domestic and foreign applicants and subsequent mark users. However, third parties who used the same or a similar mark prior to an applicant's filing date are not precluded from using their mark and may continue to do so despite a subsequent application and any registration to that issue. Such right, however, may be limited to any geographic scope in which the third party used the mark prior to the application filing date. Also, parties that have priority based on an earlier foreign registration will have rights superior to those of an applicant who subsequently files for registration without the benefit of such priority.

Filing Requirements

Use or intent to use applications filed under the Paris Convention must include the following: (1) name of the applicant; (2) address for correspondence; (3) clear drawing of the mark; (4) list of the goods or services; and (5) filing fee for at least one class of goods or services. Applications that do not include all of the above minimum requirements will not be accepted by the Office and will therefore not be given a filing date and will not be examined. In such instances, the Office will notify the applicant that the application is not acceptable and will refund any fee paid. Additional Requirements: Other requirements for applications are summarized for each filing basis below. Failure to provide these items with the application will not prevent the application from receiving a filing date but will result in the issuance of an Office Action by the examining attorney requiring the missing item(s). Applicants must indicate whether they seek registration on the Principal or Supplemental Register. Applications that allege current use of the mark must include an allegation of use with the date of first use and the date of use in U.S. commerce. These applications must also be accompanied by a specimen showing use of the mark in commerce for each class of the goods or services listed in the application. However, failure to file an acceptable specimen will not result in denial of a filing date. Instead, the examining attorney will issue an Office action requiring submission of the specimen. Applications filed as intent to use applications must include an affirmation that the applicant has a bona fide intention to use the mark in commerce. Applications filed as Paris Convention applications, whether or not claiming priority, must include a certified copy of the foreign registration certificate on which the application is based. If such a certificate is not available at the time the application is filed, it must be provided in order for the mark to be registered. If Paris priority is claimed, the application must include the priority date claimed.

Evaluation & Review

Examining attorneys review the - application for basic filing requirements and eligibility for registration. Examiners also review applications for each of the following general requirements: 1) Acceptability of the drawing of the mark and any necessary character claim, color claims, color description and/or mark description, translation, and agreement between the mark and any required specimen; 2) Completeness of owner and entity information; 3) Acceptability of identification of goods and/or services and proper classification; 4) Correct filing basis and dates of use, if applicable; 5) Acceptability of any required specimen(s) showing use of the mark; 6) Acceptability of the declaration, including the signature; and 7) Acceptability of the mark for registration on all statutory grounds, including both relative and absolute grounds Examining attorneys review the specimen showing use of the mark for applications filed based on use of the mark in commerce. Applications filed under Section l(b), intent to use, must also contain a declaration of a bona fide intent to use the mark in commerce. If the mark is approved for publication by the examining attorney, the Office will publish the mark. If no oppositions are filed, the Office will issue a notice of allowance. The applicant will then have six months to file a statement of use with a specimen showing use of the mark in commerce for each class of goods and/or services listed in the application.

Duration

Registrations issued before November 16, 1989, are effective for 20 years and may be renewed for 10-year periods. Prior to November 16, 1989, these registrations could be renewed for periods of 20 years. Registrations issued after November 16, 1989, are effective for 10 years and may be renewed for 10-year periods. To remain in effect for the full duration provided by the statute, registrants must file an affidavit of continued use or an acceptable excuse for failure to use the mark in commerce during the sixth year of the registration, measured from the publication date. Failure to file this affidavit within six months after the due date will result in the cancellation of the registration if the application was filed with a use or intent to use filing basis. A similar affidavit must be filed every 10 years during the last year of each registration term. No grace period exists for filing of the six-year affidavit of use for registrations based on an extension of protection to the United States under the Madrid Protocol. Filing of the ten-year affidavit of use may be made within a three-month grace period after the expiration of 10 years upon payment of a penalty fee. Documents Required: The items required for the filing of an affidavit of use generally include: (1) an application containing a verified statement and setting forth the goods and/or services that are in use or for which there is excusable nonuse, along with an acceptable explanation of the special circumstances for which such nonuse is excusable, if applicable; (2) specimen(s) showing current use of the mark in commerce; and (3) the applicable fee. The documents required for renewal include: (1) a renewal request signed by the registrant or the registrant's representative; (2) a fee for each class to be renewed; (3) an additional fee if the renewal application is filed during the six-month grace period; and (4) a list of the goods or services to which the renewal applies, if less than those included in the registration. Registrations under the Madrid Protocol must be renewed through the World Intellectual Property Organization's International Bureau. Registrants of marks on the Principal Register who wish to allege that their registration is incontestable must file an additional affidavit asserting that the mark has been continuously used for the five years following registration. This affidavit is not required and may not be filed for marks on the Supplemental Register. However, there are benefits to claiming incontestability. The affidavit of incontestability may be combined with the affidavit of use.

Use

Use of the applied-for mark is required for use-based applications filed under Section l(a). Use applications must be accompanied by a verified statement of use providing the first date of use anywhere and the first date of use in commerce that may be regulated by the U.S. Congress, as well as a specimen showing use of the mark as it appears in the drawing and showing use in connection with the applied for goods and service. Specimens for trademarks may consist of, for example, a label, tag, container for the goods or a display associated with the goods at their point of sale, or screen displays (for computer programs, movies, television programs ). Specimens for service marks may consist of, for example, brochures, signs, and letterhead if they show the mark used in connection with the services identified in the application. Applications filed with an intent-to-use basis under Section l(b) need not be accompanied by a specimen showing use. However, the applicant must file a verified statement that the applicant has a bona fide intent to use the mark. Thus, after the application is filed, the applicant must either file an amendment to allege use or a statement of use accompanied by a specimen. An amendment to allege use may be filed at any time before the examiner approves the application for publication. If the applicant has not filed a specimen before publication of the mark, she must wait until after the publication period. If no opposition to the mark is filed, the applicant must file a statement of use accompanied by an acceptable specimen. Thus, either an amendment to allege use or a statement of use is required of Section l(b) applications, depending on the stage that processing of the application has reached. However, both documents serve as an allegation of use and proof of use. Applications filed under Sections 44 (Paris Conventionlforeign registration applications) and Section 66 (Madrid applications) require the filing of a verified statement indicating a bona fide intent to use the mark but do not require a specimen showing use of the mark in cornmerce. The verified Statement is filed with the International Bureau and the Office does not require that this statement be re-filed in the U.S. Use of a mark by a related company inures to the benefit of the registrant. A related company includes any person whose use of the mark is controlled by the owner of the mark in relation to the nature and quality of the goods or services for which the mark is used." If this applies, the applicant should note this fact in the application.

Domain Names

The country code top level domain or ccTLD for the United States is .US. The current authorized administrative organization is NeuStar Inc. in the State of Virginia. Disputes concerning domain names may be arbitrated according to a variation of the international uniform dispute resolution policy or UDRP through several authorized providers. These include the American Arbitration Association and the National Arbitration Forum. The Anticybersquatting Consumer Protection Act prohibits bad faith registration of domain names. Owners of marks that are adversely affected by a bad faith registration may file in rem actions against the domain name(s) based on claims of infringement and/or dilution under the Act.

Enforcement

Any person who uses any word, term, name, symbol, or device, or any combination thereof in commerce in connection with any goods or services, or any container for goods, or who engages in any act, trade, practice, or course of conduct in commerce likely to cause confusion, mistake or deception as to the affiliation, connection, or association of such person with another, or to the origin, sponsorship, or approval of goods and/or services or commercial activities by another, is liable for infringement. A party will also be liable for any misrepresentation of the origin, nature, characteristics, or qualities of his or another party's goods and/or services, commercial activities or their geographic origin. A prevailing plaintiff may recover actual damages, (or treble damages in the case of willful infringement), profits, attorney's fees and costs.