United States Trademark Registration

The expense of filing a trademark application in the United States depends on various factors, such as the kind of trademark and the number of classes it includes.

For more details and a comprehensive pricing breakdown, please see our Price List.

When you register a trademark in the United States, you gain these rights:

• Exclusive rights to use the trademark.
• The legal power to take action against others who infringe on your trademark.
• The right to ask for the seizure of fake goods.

You can request to cancel a registered trademark if any of the following issues are present:

• The owner applied for the trademark with dishonest intentions
• The trademark is offensive or goes against public morals
• The trademark misleads consumers
• The trademark merely describes the product or service
• The trademark is generic or serves a functional purpose
• The trademark cannot distinguish the product or service

A specimen or proof of use is a real example showing how your trademark is used in business with the goods or services listed in its description. It provides concrete evidence of your trademark's use in the market.

The USPTO's criteria for acceptable proofs of use include:

• It must be a real representation of your trademark as used in business (not a mock-up, printer’s proof, digitally altered image, intended packaging design, or a draft website).
• The specimen should show the trademark with the goods or services specified in your application.
• It must match the trademark as shown in your application's drawing.
• The proof must show your use of the trademark, not someone else's (e.g., press releases for media).
• The type of specimen should be suitable for the category of goods or services. For example, advertising material is suitable for services, but not for goods.
• The trademark should be used in a way that directly links it with the goods or services.
• It should act as a trademark, indicating the source of the goods or services.
• For web-based specimens, include the URL and the date of access or printing.

Examples of proof of use for goods might include photos or printouts showing the trademark on the goods, labels, packaging, sales displays, or webpages selling the goods with a clear link to the trademark, including URL and access date. For software, screenshots of the software launch screen or download page are suitable.

For services, acceptable proofs include online or printed advertising, commercials, marketing materials, signage at service locations, or invoices, all showing a direct link between the trademark and the services offered.

To better understand these examples, you can refer to the "Specimens" section on the USPTO's website.

Given the USPTO's increasing scrutiny of proofs of use, it's crucial to closely follow these requirements. Examiners may visit websites from which specimens are sourced to confirm the availability and authenticity of the associated goods and services to the American consumer.

When you apply to register a trademark that includes words in a language other than English, you must provide an English translation of those words. This rule also applies if the trademark is a combination of words where at least one is non-English and can be clearly identified. The translation should be a commonly understood English phrase that matches the meaning of the non-English term. For example, the French phrase "mais oui" should be translated as "why, certainly" or "why, of course," instead of the literal "but yes."

If the trademark uses non-Latin characters, you also need to provide a transliteration, which means spelling out the non-Latin words using Latin letters. For instance, the Chinese character "文" is transliterated as "Wen," which translates to "culture" or "writing" in English.

When deciding whether to include color in a logo application in the USA, think about how much protection you want and how important the colors are to your brand.

If you don't claim color, your logo will be filed in black and white, meaning it's protected in all colors. This gives you more flexibility to use your logo in different colors while keeping it protected. This is a good choice if the colors aren't essential to your brand.

However, if your logo's colors are key to your brand, claiming them can be helpful. This limits protection to those colors but strengthens it against similar marks using the same colors. If you claim color, specify where each color appears in the logo. Black, white, or gray can be claimed or used for non-mark elements like backgrounds or shading.

For the best protection, like some big companies do, consider filing two applications: one in black and white for broader protection, and another with color to protect the specific hues.

"Claiming priority" is a process under the Paris Convention, an international agreement that allows trademark applicants to use an earlier filing date from one member country in another member country. If you file a trademark application in one member country, you can use that filing date for a new application in another member country, as long as you file the new application within six months of the original.

You can claim priority for a trademark in the United States if you've filed an application in another Paris Convention member country within the last six months. This means your US application will be considered as having the same filing date as your original application, which can help in cases of competing applications or trademark disputes.

The number of trademark applications you should file depends on your mark's features, your budget, and the level of protection you desire in the United States.

If your trademark has unique text and design elements (like graphics or logos) and you want to protect both, we suggest filing two trademark applications: one for the text alone (a "Word Mark") and another for the combined text and design (a "Combined Mark").

Filing two applications offers several benefits:

• Wider and stronger protection: If someone else files a "Combined Mark" with similar text but a different design, their mark might be registered if you only filed a "Combined Mark" and not a "Word Mark." This is because their mark is seen as different overall.

• Protection for logo changes: Companies often change their logos. If you only file a "Combined Mark" and not a "Word Mark," your updated logo won't be protected. You must use your trademark exactly as registered, or it could be canceled.

• Complete text and design protection: A "Word Mark" application allows more flexibility in using your mark in different styles or designs (as long as they don't closely resemble other registered trademarks). At the same time, a "Combined Mark" protects your design elements.

If your trademark includes a slogan or a unique design symbol, consider filing separate applications for each to ensure extra protection.

When you apply for a trademark in the U.S., you need to select a "Filing Basis." There are four main choices:

• "Use in Commerce" Basis: Choose this if you're already using your trademark in the U.S. You'll need to provide the date you first used it and show evidence, like website pages, ads, brochures, or product labels.

• "Intent to Use" Basis: If you haven't used your trademark in the U.S. yet, select this option. After your application is accepted (usually in about 10 months), you'll need to submit a "Statement of Use" to show proof. If you need more time, you can request extensions every six months, up to three years from acceptance.

• "Foreign Registration" Basis: If your trademark is registered in another country, you can apply in the U.S. without showing proof of use. You'll need to provide a copy of the foreign registration and a verified translation.

• "Foreign Application" Basis: If you applied for your trademark in another country within the last six months, you can apply in the U.S. under this basis. Once accepted, you'll need to provide additional information, like the foreign registration or proof of use in the U.S.

For all options, you must submit a Declaration of Use between the 5th and 6th year after registration.

The process of registering a trademark in the United States includes several key steps, all covered by our "Trademark Application Filing" service:

Your trademark is valid for ten years from the registration date and must be renewed every ten years to maintain protection. We will remind you when renewal is due.

There are different reasons why a trademark might be cancelled, and each has its own solution:

An abandoned trademark application is one that has moved from active to inactive status. This can happen for several reasons, such as not responding to an Office action, missing the deadline to file a Statement of Use, or submitting an incomplete response.

During the application process, an examining attorney might send an Office action letter that requires a response within six months from the mailing date. If you don't respond within this time, the application will be considered abandoned. However, if the lack of response was unintentional, you can file a Petition to Revive the application.

Similarly, if the application was abandoned because you didn't file a Statement of Use, you can file a Petition to Revive and pay the required fee, as long as the failure to submit the necessary documents was unintentional.

If an examining attorney considers an application abandoned due to an incomplete response, the trademark owner can file a petition. This petition should show that the decision to consider the application abandoned was incorrect.