To register a trademark with the U.S. Patent and Trademark Office (USPTO), the registrant must be using it in commerce already. The trademark must be used for a product or service that crosses state, national or territorial lines, or affects commerce crossing such lines. Even if the owner of the mark files an intent-to-use (ITU) trademark application, the trademark will not be registered until it is used in commerce.

A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.

Once the USPTO receives a trademark registration application, they will answer the following questions:

If the answer to each question is NO, the trademark is eligible for registration and the USPTO will process the application.

The USPTO will not register any marks that contain:

The federal trademark law (Lanham Act) creates two registers for marks, the Principal Register and the Supplemental Register. Registration of a mark in the Principal Register conveys the important substantive rights that most people associate with federal registration and it is the preferred method of federal trademark protection. Registration in the Supplemental Register does not convey the bundle of rights and protections granted in the Principal Register. Registration in the Supplemental Register is not evidence of the owner’s exclusive right to use the mark in connection with the goods or services, and the owner of a mark in the Supplemental Register cannot utilize the power of the Customs services to stop importation of infringing goods.

The Supplemental Register is the register that grants the use of the ® symbol. Some businesses consider the right to use the symbol as a substantial deterrent against infringement. Another distinction of the Supplemental Register is that a descriptive mark may be registered after only one year of use. This 1-year requirement may be waived upon showing sufficient sales and advertising expenditures. A trademark owner in the Supplemental Register may sue in federal court, and in some circumstances, the PTO will permit an application made in the Principal Register to be converted to the Supplemental Register.

Duration of the trademark

Once a trademark or service mark is placed on the principal register, the owner receives a Certificate of Registration good for an initial term of ten years. The registration may lapse before the ten year period expires, unless the owner files a statement within six years of the registration date (called a Section 8 Affidavit) stating that the mark is still in use in commerce.

The original registration may be renewed indefinitely for additional ten year periods if the owner files the required renewal applications (called a Section 9 Affidavit) with the U.S. Patent and Trademark Office. Failure to renew a registration does not void all rights to the mark, but if the owner fails to re-register, the special benefits of federal registration will be lost.

How to apply for a trademark

The Trademark Electronic Application System (TEAS) features two tracks for registration: eTEAS (for online filings) and prinTEAS (in which you complete the application online, print it, and mail it to the USPTO).

Go to the USPTO web site at http://www.uspto.gov/.  Click the “Trademark” button, and on the next screen, under “Trademark Registration,” click the link “File for a Trademark Online (TEAS). Make sure you can:

You’ll need to include:

In some cases, the use of an attorney is necessary. For some reason it seems to help to have the assistance of an attorney who files for you. Trying it yourself may prove to be a waste of time, since there seems to always be a reason to decline the registration.

Contributed by JD at 6:24 pm under Legal issues.