Understanding Trademark Registration in the US

The authority that governs the laws and processes regarding trademarks in the US is the USPTO (the United States Patent and Trademark Office).

All goods and services fall under one or more of the 45 international trademark classes. These classes are generally defined using the 1957 Nice Agreement, and are used by roughly 90 nations around the world. When you register your trademark with the USPTO, you'll have to submit the application for each product or service class your brand falls under (one application can include multiple classes).

The USA is a "first-to-use" jurisdiction, which means that the rights to a trademark are granted to the person or entity that first uses it in the territory of the USA. While this leads some to question whether they have to register their trademark, it is still highly advisable as it grants presumption of ownership and is also necessary in case legal actions for trademark infringement need to be undertaken.

If you want to register a trademark for your business, the USPTO requires that a US-licensed attorney represent foreign-domiciled applicants. This rule was implemented in 2019 with the goal of increasing USPTO customer compliance with U.S. trademark law, improving the accuracy of trademark submissions to the USPTO and safeguarding the integrity of the U.S. trademark register.

If you’ve already registered your trademark in your country, you can base your U.S. trademark application on that foreign registration. This may speed up the application process and increase your chances of approval.

For a trademark to be eligible for registration, it has to meet specific criteria, one of them being distinctiveness. As the purpose of a trademark is to signal a recognizable source of goods or services to the customer, only a distinctive-enough trademark can achieve this purpose without consumer confusion. The more generic or descriptive a name, logo, or any other brand elements are, the less likely they will be registered by the USPTO. You can learn more about registration requirements and the distinctiveness of trademarks by visiting our Trademark Academy.

Another important step in the process of registering a trademark is making sure that it is not too similar to already registered brands. Many starting businesses that tried to register their trademarks without prior research have either suffered rejection directly from the USPTO or received opposition from their competitors who registered before them. Trademark law strongly prioritizes companies that file trademark applications first, even if the registration process was not yet completed. As a result, the USPTO, in general, recommends searching their trademark filing database prior to starting with the registration.

In your application, you must send details of your trademark and the goods or services you want to use your trademark on to the USPTO. It should also include the trademark classes and terms you wish to register. 

You must also specify the legal reason for why you are allowed to register your trademark, the so-called filing basis. The most common filing bases are “use in commerce”, for when you already genuinely use the mark in the course of business when filing the application, or “intent to use”. The difference between the two lies in that in case of the former, you have to submit evidence of use of the mark (specimen) already together with the application, whereas in case of the latter you will be required to do so later in the proceedings. Either way, the trademark will not be registered until evidence of genuine use is presented to the USPTO. 

After you send the application, the USPTO will:

After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration. A complete review includes a search for conflicting trademarks and an examination of the written application, the drawing, and any specimen.

If the examining attorney raises no objections to registration, or if you overcome all objections, the examining attorney will approve the trademark for publication in the "Official Gazette," a weekly publication of the USPTO. The USPTO will send you a notice of publication stating the date of publication. After the trademark is published in the "Official Gazette," any party who believes it may be damaged by registration of the trademark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.

If your application is based on use in commerce, then your trademark will register provided that no opposition is filed. However, if your application is based on an intent to use the trademark in commerce, your trademark will not register yet. Instead, the USPTO will issue a notice of allowance about eight weeks after the date the trademark was published. The applicant then has six months from the date of the notice of allowance to either: 

A statement of use (SOU) must meet minimum filing requirements before an examining attorney fully reviews it.

Within approximately two months after the SOU is approved, the USPTO issues a registration.

The USPTO charges a flat fee of either $250.00 (TEAS Plus) or $350.00 (TEAS Standard) per class of goods and services. This means that the USPTO doesn’t charge the applicant, per trademark, but rather according to how many different types of goods/services the applicant intends on selling under the trademark. There is also a TEASi, which enables applicants to file international protections. If the international application is based on one basic application or one basic registration, the fee is $100 per class based on the total number of classes in the international application.

Under the TEAS Plus trademark application, the trademark applicant is required to select the goods/services from a pre-approved list of goods/services from the Trademark Identification Manual (TIM). Conversely, under the TEAS Standard trademark application, the trademark applicant can draft his/her own unique description of the goods services. Therefore, depending on the complexity of sold goods and services the applicant might either rely on the TIM or customize their description. The final selection of goods and services will affect the cost of a trademark. 

In the USA, trademark opposition proceeds in a similar manner as a legal trial, and as such it is filed with the Trademark Trial and Appeal Board (TTAB). While in 2021, there were 6,669 oppositions filed, there were 6,638 oppositions disposed of before a hearing or briefing.

Time: The Notice of Opposition must be filed within 30 days of publication. Then, an answer from the applicant must be submitted within approximately 40 days of the Notice of Opposition. A failure to file an answer will result in the trademark application being abandoned. Once an answer is filed, next comes the period when both sides can present their evidence for the case, which can take up to 2 months. Once all evidence is submitted, and any oral arguments have occurred, the TTAB will usually issue a decision within six months. The losing party has the right to appeal.

Cost: The Notice of Opposition filing fee is $600 per class. All applications carry a 30-day opposition period. Extension requests can be made for 90 days or for a 30-day extension followed by a 60-day extension. Each extension request carries a $100 fee or $200 for the final 60-day extension. The losing party will bear all costs of the opposition. Opposition processes that take up to 2-3 years can add up to the total cost of tens of thousands of dollars.

Seeking expert support from an experienced trademark lawyer will certainly give you the help you require to give your business the necessary protection if you’re considering making a move into the EU market. Team Trama is here to support you along the way. Endorsed by 7,400+ brands across the world, trademark one-stop-shop Trama offers an elegant solution to protect the heart & soul of your business!

Need more clarification before you are ready to proceed? No problem at all! Please schedule a free consultation with us and our representative will gladly walk you through the process, addressing any concerns you might have!