What are the U.S. Trademark Registration Requirements?

By Josh Gerben, Esq.

As an individual or business considering a trademark application, it is important to understand all of the basic requirements that must be met prior to submission. There are several motivations behind applying for a federal trademark registration, and regardless of what your initial intent may be, investing in a trademark can be one of the most efficient ways for you to protect your company against unfair competition. This can prevent other brands in your industry from infringing on your ideas and provides lasting protection within the marketplace. To learn more about the benefits of a federal trademark registration, click here.

Before filing a trademark application and achieving that protection, however, there are specific requirements that must be met to ensure that your application has the best chance of success.

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• The applied-for trademark must be distinctive and unique. Because the purpose of a trademark is to prevent consumer confusion, a trademark’s distinguishing features that set it apart from competitors within like industries are the key for obtaining a federal registration. If the mark is deemed too generic or descriptive, it will likely be refused.
• Applications must be based on use or an intent to use the trademark in commerce. For applications that represent goods or services that are currently being offered in the marketplace, evidence of these sales is known as ‘specimens’ and must be submitted as part of the application. If the application is based upon an intent to use the trademark, a later statement of use filing demonstrating that the trademark has begun functioning in commerce must be made before the trademark can be registered.
• If the trademark application claims that the mark is currently in use, the application must supply additional details such as the date of first ever use, class designations for the goods and services offered under the trademark, and a detailed description of the specimens provided.
• Trademarks must be filed accurately under the owner’s name. While the application can be owned by an individual citizen or an organized company, among other designations, it is imperative that the owner is correctly identified within the application. This includes an individual’s citizenship, a corporation’s American home state, or the specific title of an international business’s entity.
• While you do not need to be an American citizen or have an American business to file a trademark in the United States, an international trademark applicant must be represented by a US-licensed attorney if they are not domiciled within the United States. Our law firm offers a US trademark registration for clients from around the world.

Many applicants struggle to determine what their applied-for trademark should be–selecting a word or symbol that represents the core being of your brand or company that also is able to stand out in the competitive marketplace is no small feat. Applicants must also keep in mind the distinctiveness requirement that federal registrations demand. While they are not a required part of the application process, trademark clearance searches are helpful tools when determining the likelihood of success for a prospective trademark; these searches will scan the federal register and look for possible conflicts within existing registrations. While the most in-depth searches typically require the assistance of an attorney, they also offer peace of mind or a nudge in a different direction for a company looking to make an investment into their intellectual property portfolio.

Additionally, applicants who are domiciled within the United States are not required to have attorney representation in order to file a trademark application. However, it is strongly advised–even by the USPTO itself–that anyone seeking a federal trademark registration utilizes the services of an intellectual property lawyer. Trademark applications are highly technical legal documents, and to those who are unfamiliar with their legalities, it can be very easy to make a costly error that may bar your trademark from registering. If an Office Action is issued in response to your trademark application, it must be properly addressed in order for your application to continue in the application process. Failure to respond in a timely manner or to correct the citations within the Office Action may result in the ultimate refusal of your application; therefore, while it may not be a mandated requirement, having a trademark attorney who has extensive knowledge of the application process and understands how to properly respond to refusals places the applicant in the best position for successfully obtaining a trademark registration.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.