Originally published by Darin M. Klemchuk *.
Trademark Registration Process and Cost
What Is a Trademark?
According to the U.S. Patent and Trademark Office website, a trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include brand names, slogans, and logos. The term “trademark” is often used in a general sense to refer to both trademarks and service marks.
Unlike patents and copyrights, trademarks do not expire after a set term of years. Trademark rights come from actual “use” in commerce. As a result, a trademark can last forever – as it is used in commerce to indicate the source of goods and services. A trademark registration can also last forever – so long as you file suitable renewals and pay the applicable fees (discussed below).
Executive Summary
In this post, we will discuss the specific steps in the federal trademark registration process as well as average costs to be expected to obtain the TM registration. Specifically, we will discuss:
Trademark Registration Process — The benefits of obtaining a federal trademark registration, trademark searches, preparing and filing a trademark application, prosecution of the trademark with the U.S. Patent & Trademark Office, filing the Section 8 & 15 forms, and trademark registration renewal requirements.
Trademarks versus Other Forms of Intellectual Property (Copyrights/Patents) — The differences between the rights granted by a trademark versus copyrights, trade secrets, and patents.
Common FAQs Regarding Trademarks — Common questions about trademark law and answers
For more information regarding trademark legal services, see our Trademark Services Overview page.
Trademark Registration Process
Benefits of Federal Trademark Registration
The benefits of federal trademark registration are substantial and include:
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Presumption of Ownership of the Trademark — A federal registration provides the registrant with a presumption of ownership of the trademark and further includes claimed dates of first use and first use in commerce.
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Presumption of Validity of the Mark — A federal registration also provides prima facie evidence of the validity of the mark and the registrant’s exclusive right to use the mark.
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Nationwide Priority — One of the most important benefits of trademark registration is the granting of nationwide priority of trademark rights against those who later use a confusingly similar mark.
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Incontestable Status After 5 Years of Use — After five years of exclusive and continuous use, a registered trademark becomes “incontestable.” This prevents certain aspects of the trademark registration from being challenged.
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USPTO May Deny Similar Marks — After a trademark application is filed, the USPTO Trademark Examiners conduct searches for related marks. Because a federal registration creates a record, the registration may result in future third-party trademark applications being denied.
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Right to Use the ® Symbol — Until a trademark achieves a federal registration, the ® should not be used.
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Enhanced Damages Against Counterfeiters — Under the Lanham Act, an enhanced damages are available against counterfeiters of a registered trademark.
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Protection Against Cybersquatters — To prevail in a UDRP proceeding, the trademark owner must prove protectable trademark rights and bad faith registration by the domain name owner. A federal registration for the trademark enhances the success of this proceeding.
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Protection Against Importation of Infringing Product — A trademark owner can register its trademarks with U.S. Customs and Border Protection, which in some cases will monitor, sieve, and detain imported goods that infringe the registered trademark.
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Basis for Registration in Foreign Countries — Under the Madrid Protocol, owners of U.S. federal registrations can extend their trademark rights to other countries that are part of the Madrid Protocol.
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Use in Takedowns for Online Sales/Websites — Certain online sales platforms, like Amazon and eBay, as well as website registrars will consider federal trademark registrations in determining whether to takedown infringing sales or other acts of trademark infringement.
Trademark Symbols — SM, TM, and ®
It is best practice to use a trademark symbol in connection with use of your trademark to communicate ownership of the mark to the public and potential competitors. The TM symbol should be used with physical goods and the SM symbol should be used for services. These designations indicate a claim to common law ownership of the marks. If the trademark is federally registered with the USPTO, the ® symbol should be used to communicate to the public a registered trademark.
Business Name as a Trademark
Often, a business will desire to register its business name as a trademark. While in many cases the business name may function as a source identifier and therefore qualify as a trademark, that is not always the case. To be protectable as a trademark, the mark must be used in commerce to identify a particular good or service. The name of a business does not necessarily meet all of those requirements. Additionally, some businesses have names that are separate and distinct from their services/goods.
Many states and local jurisdictions allow for the registering of business names, either as part of obtaining a certificate to do business or as an assumed name filing often referred to as a “dba”. In Texas, an applicant can apply to form a LLC, partnership, or corporation and as part of that process, the Secretary of State will conduct a name search to determine if any other registered entities have names that conflict or are deemed too similar. If the search is clear, the Secretary of State will allow the name to be registered. In addition, a business can also file a dba in a Texas county. But the registration name and the dba name do not normally constitute trademark rights by themselves since trademark rights require use in commerce of a source identifier.
Trademark Checklist
Before filing a U.S. federal trademark application, you should gather the information and documents necessary to support filing the application. We recommend the following at a minim to prepare the application:
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Mark to be Protected (word or design mark)
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Owner of the Mark (individual or entity)
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Owner Address (not a PO Box)
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Goods and/or Services (describe the product or service the mark will be used in connection with and attach samples of how it is actually used, if already in use)
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Use-Based Application/Intent-to-Use Application
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Dates of Use/Use in Commerce (anywhere and in commerce)(if not yet in use, an intent to use trademark application could be filed)
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Samples of Use
A simple trademark application checklist is a helpful tool to ensure the proper information and documents are gathered for the application. After the application is filed, we recommend adding to the file copies of dated documents establishing use in commerce of the trademark. These documents will be helpful in the event you wish to enforce the trademark in the future.
Trademarks Versus Other Forms of Intellectual Property
Trademarks vs Copyrights
A copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. The duration of copyright protection depends on several factors. For works created by an individual, protection lasts for the life of the author, plus 70 years. For works created anonymously, pseudonymously, and for hire, protection lasts 95 years from the date of publication or 120 years from the date of creation, whichever is shorter.
While trademarks act as source identifiers and copyrights are creative expression of ideas, there can be significant overlap between the two rights. For example, a logo can be protected by both trademark law and copyright law. Trade dress is a special type of trademark that protects the distinctive features of a product’s packaging or in some cases the non-functional aspects of the product itself. These features can sometimes be protected by copyright registrations.
Trademarks vs Patents
A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. Patentable materials include machines, manufactured articles, industrial processes, and chemical compositions. The duration of patent protection depends on the type of patent granted:
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Design Patents – 15 years from issuance for applications filed on or after May 13, 2015 (14 years from issuance if filed before May 13, 2015)
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Utility patents and plant patents – 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed.
As discussed above, unlike the limited duration of patents, trademark rights can be forever as long as there is continued use in commerce. For more information on the patent process and costs, see our post, Have an Invention — What are the Next Steps to Get a Patent?
Trademark Registration FAQs
The following is a commonly asked set of questions regarding trademark registration and trademarks in general:
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Why should I register my trademark?
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Do I need a trademark to sell my product or services?
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What do the different trademark symbols mean and why/when do I need to use them? (® TM SM)
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Is trade dress different than a trademark? What about a copyright? How do I know what I need?
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Do I need to do a trademark search? – If we have a blog post about trademark searches, you can link it in the answer.
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What will I need to file a trademark?
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Once I file for my trademark, when can I start using it?
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How long is the registration process?
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What is the lifespan of a trademark? Do they expire?
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Do I have to file for a trademark in the U.S. before applying for one internationally?
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When creating a new business, when should I apply for a trademark? What happens if I wait too long?
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What if someone else is using my trademark? What are my rights to get them to stop?
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What are damages available for trademark infringement? Generally, a successful trademark owner can collect its lost profits plus the profits of the infringer, For more information, see our trademark infringement damages post.
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What is trademark counterfeiting? For additional information on counterfeiting, please see our trademark counterfeiting post
Additional Trademark Services
Our trademark law clients receive the full range of the firm’s services: litigation, intellectual property, transactional, and international law. Our trademark attorneys offer comprehensive trademark and brand development services including:
trademarks
Curated by Texas Bar Today. Follow us on Twitter @texasbartoday.
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