There are essentially two manners of registering a trademark, section 1(a) (use in commerce) or section 1(b) (intent to use). The trademark registration process slightly differs depending on whether or not you have already begun using your desired mark in commerce or whether you file with the intention to eventually use it in commerce.

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Choose Strong Trademarks

When choosing a trademark, it is essential to select a strong and distinctive trademark. A strong trademark is easier to protect and enforce, and it offers better legal protection. Generally, the more distinctive the trademark, the stronger it is.

There are several categories of trademarks, and each offers a different level of protection. The strongest trademarks are those that are fanciful or arbitrary, such as “Google” or “Apple.” These types of trademarks are entirely made up and have no relation to the product or service they represent.

The next strongest trademarks are suggestive trademarks, which suggest the product or service without describing it explicitly. An example of a suggestive trademark is “Netflix.” It suggests entertainment, but it does not describe the service.

The weakest trademarks are descriptive trademarks, which describe the product or service. These types of trademarks are difficult to protect because they are commonly used in the industry. Generic terms cannot be registered as trademarks because they are too common.

For example, Nike’s “Swoosh” logo is an excellent example of a strong trademark. It is a distinctive and memorable logo that represents the brand’s values of athleticism and performance. The Swoosh logo is one of the most recognizable logos in the world and is protected by trademark registration.

Once you have chosen your preferred mark, it is essential to conduct a comprehensive trademark search to ensure that your proposed trademark is unique and not infringing on someone else’s trademark rights. Failing to conduct a comprehensive trademark search can result in rejection of your trademark application or a costly legal battle in the future. The trademark search can be conducted using several online tools, such as the USPTO’s Trademark Electronic Search System (TESS) or other commercial databases.

In 2015, Coca-Cola tried to trademark the term “zero,” but it was rejected because another company had already registered “ZEVIA ZERO” for a similar product. If Coca-Cola had conducted a comprehensive trademark search, they could have avoided the costly legal battle.

How to Apply to Register a Trademark

File the Trademark Application Correctly

Filing a trademark application can be a complex and lengthy process, but it is essential to do it correctly. The trademark application must include a clear and accurate description of the product or service, a specimen of the trademark, and a fee. It is essential to provide all the necessary information accurately and completely to avoid rejection of the application. Read about the costs to trademark.

For example, in 2019, the United States Patent and Trademark Office (USPTO) rejected a trademark application from the clothing brand “FUCT” because the application did not include a specimen of the trademark. The brand had to file a new application with the correct information.

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Use in Commerce

In many jurisdictions, including the United States (U.S.), trademark rights are typically granted to the first entity to use a particular mark in connection with specific goods or services in commerce. For this reason, it is recommended to begin using your desired mark in commerce as soon as you settle on it. In the U.S., if your desired mark is going to be used for products, your trademark is considered to be in use in commerce if both of the following requirements are met:

  1. Your mark is placed on a product itself, product packaging, labels or tags attached to products, and/or documents distributed with purchase of a product (invoices, instruction manuals, etc).
  2. The products have been sold and/or transported within the U.S. or any U.S. territories.

Put simply, a product with correspondence to the desired mark must have been purchased in the U.S. in order for a section 1(a) trademark application to be valid and granted. Products only being sold in a foreign market generally will not be accepted as use in commerce. Taking orders for a product or advertising a product that is not yet available also will not be considered use in commerce. 

If your desired mark is going to be used for services in the U.S, your trademark is considered to be in use in commerce if both of the following requirements are met:

  1. Your mark is used for marketing and promotion of services such as brochures, flyers, or advertisements on a website, the radio, or tv.
  2. The services have been provided within the U.S. or any U.S. territories.

The marketing and advertising of the services you provide does not constitute use in commerce alone. The services listed in your trademark application must have had been rendered in the U.S.

Intent to Use

A section 1(b) trademark application indicates that the mark has not yet been used in commerce, but you have bona fide intent to do so. This type of trademark application issues a notice of allowance to approved marks. A notice of allowance indicates:

  1. The USPTO has approved your application on the Principal Register,
  2. Your application was published for opposition; and
  3. A third party did not file an opposition for the registration of your trademark.

Important Note: The USPTO issuing a notice of allowance does not equate to trademark registration. 

If and when the USPTO sends you a notice of allowance, you have 36 months to use the mark in commerce. Within 6 months of receiving the notice of allowance, either a Statement of Use or a Request for Extension of Time must be filed. These documents must also be filed every 6 months during the 3 year period. There is a maximum of 5 Requests for Extension of Time that can be filed.

Important Tip: If you are unsure whether you should file section 1(a) or section 1(b), it is safer to file an intent to use trademark application (section 1(b)). 

Publication Period

When an application is published for opposition, it is placed online in the Trademark Official Gazette (TMOG), released every Tuesday. The purpose of this publication is to allow third parties to object the registration of your desired mark. The publication period lasts 30 days and is open to the world. An extension of up to an additional 90 days of the publication period can be filed by potential opponents if they pay the applicable fees. 

To oppose, one would have to file a Notice of Opposition with the USPTO. The applicant is notified and has the chance to respond to the opposition. If no oppositions are filed, then the USPTO will issue a Certificate of Registration. 

Supplemental Register

The Supplemental Register is a secondary registry maintained by the USPTO for trademarks that do not meet the requirements for registration on the Principal Register. If the USPTO places your trademark application on the Supplemental Register, the mark is still considered to have some distinctive character or potential for acquiring distinctiveness.

Trademarks registered on the Principal Register are considered inherently distinctive or have acquired distinctiveness through use. On the other hand, trademarks on the Supplemental Register may have less inherent distinctiveness. Marks may be descriptive, generic, or have weak distinctiveness at the time of registration.

Trademarks registered on the Supplemental Register must still be used in commerce in connection with the goods or services specified in the registration. Use in commerce is a requirement for maintaining the registration and eventually seeking registration on the Principal Register if the mark acquires distinctiveness.

Trademarks on the Supplemental Register do not receive the same level of legal protection as those on the Principal Register. With weaker rights, owners of these marks are often unable to defend their mark in cases of infringement. However, marks on the Supplemental Register still hold certain advantages. These include the ability to use the “®” symbol, which informs potential competitors conducting clearance searches that your mark has obtained “registration” without specifying the registration is on the Supplemental Register. The use of the “®” symbol has the potential to enhance the mark’s distinctiveness over time, influencing the chance of registration on the Principal Register.

Important Note: If you are looking to expand your brand into foreign markets, generally the Supplemental Register is sufficient to obtain a priority filing date in foreign countries.

Respond to Office Actions

An office action is a letter from the USPTO that requests additional information or clarification about the trademark application. It is essential to respond to office actions promptly and accurately. Failure to respond to office actions can result in rejection of the trademark application.

For example, in 2014, Taylor Swift applied to trademark the phrase “This Sick Beat.” The USPTO rejected the application, citing a likelihood of confusion with another trademark. However, Swift’s legal team responded with a detailed explanation of the trademark’s intended use, and the trademark was approved.

Monitor Your Trademark

Trademark monitoring is the process of monitoring your trademark for potential infringement. Monitoring can be done manually or through automated software. Trademark monitoring helps identify potential infringement and allows you to take action to protect your trademark.

For example, in 2015, Starbucks filed a lawsuit against a small Missouri brewery called Exit 6 for trademark infringement. The brewery had created a beer called “Frappicino,” which Starbucks claimed was too similar to their “Frappuccino” trademark. Starbucks won the lawsuit, and Exit 6 had to stop using the name.

Renew Your Trademark

Trademark registration is not a one-time process. Trademarks must be renewed periodically to remain valid. In the United States, trademarks must be renewed every ten years. Failure to renew your trademark can result in loss of protection. 

For example, in 2018, the USPTO canceled the trademark registration for the Washington Redskins football team because the team’s name was deemed offensive to Native Americans. The team had to rebrand, losing the trademark protection for their previous name.

Trademark registration is an essential aspect of protecting your brand. By following these trademark registration best practices and learning from examples, you can ensure that your brand is adequately protected and avoid costly legal battles. Remember to conduct a comprehensive trademark search, choose a strong trademark, file the trademark application correctly, respond to office actions, monitor your trademark, and renew your trademark periodically to maintain its protection.

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