Trademark-RegistrationFederal Trademark Registration Overview

Federal trademark registration on the Principal Register is reserved for marks that qualify in all respects for trademark protection – that is, trademarks that are arbitrary, fanciful, or suggestive, or in very rare cases descriptive marks that have acquired secondary meaning.  The Principal Register confers all the benefits associated with federal trademark registration. There are two general basis to file a federal trademark application, use based or an intent to use based application.

Use-Based Trademark Applications

Generally, a business can only establish federal trademark rights by using the mark in commerce.  A trademark application filed after commercial use of the trademark is commonly called a “use-based” application.

Intent-To-Use Trademark Applications

A small business or individual entrepreneur may file a federal trademark application to register a mark before commercial use of the trademark, so long as the business or individual can allege a bona fide intent to use the mark in commerce on specified goods or services.  This basis for application is commonly called the “intent-to-use” or “ITU” application.

Filing on an ITU basis establishes constructive use of the mark as of the filing date, and covers upon the applicant a nationwide right of priority to use the mark on the goods or services identified in the trademark application that is superior to all subsequent users.  This nationwide right, however, is contingent upon the eventual federal registration of the mark.  The USPTO will not issue a registration until the applicant files a Statement of Use or Amendment to Allege Use demonstrating that it has commenced use of the mark in commerce.

A trademark must be used in interstate commerce to properly be federally registered. A federal trademark registration allows the owner to benefit from nationwide trademark protections.

Federal Trademark Registration Procedure

After selection of the appropriate Trademark classes, and following the filing of the trademark application with the USPTO, the USPTO issues a filing receipt to the applicant, and the application is assigned to a trademark examining attorney.  The examining attorney evaluates the trademark application substantively to verify that:

  • the trademark functions as a mark and meets the substantive requirements for registration;
  • the trademark does not conflict with any registered mark or any prior application;
  • the trademark application otherwise satisfies all technical requirements

If the trademark or the trademark application is found not to comply in some respect, or if the trademark examining attorney requires more information, the trademark examining attorney will generally issue a trademark office action to the applicant.  The trademark applicant will have six months from the date of the office action to respond to the trademark examining attorney’s requests.  If the response is inadequate, the trademark examining attorney may issue further office actions.  Failure to respond in a timely manner will result in the abandonment of the application.

If the trademark is found to be eligible for registration, the trademark examining attorney will approve the mark for publication in the Official Gazette, in which the USPTO publishes marks determined to have met all the requirements for registration.  The day the mark is published in the Official Gazette, the thirty-day opposition period begins.  During this period, any party who believes it will be damaged by the trademark registration may file a notice of opposition with the Trademark Trial and Appeal Board.

If no oppositions are successfully filed during the opposition period, the USPTO will issue a registration for the mark within twelve weeks of the publication.