Trademark FAQs

What is a trademark?
A trademark (or “mark”) is any word, phrase, symbol, or design that identifies and distinguishes your goods from those others. The term “service mark” is also sometimes used in the context of trademark rights but it means the same thing except that it identifies or distinguishes services instead of goods.
How is a trademark different from a copyright?
A trademark is a word, phrase, symbol, or design that identifies and distinguishes your goods from those others. A copyright is used to protect original works of authorship such as books, paintings, songs, and even computer software.
Copyright registrations are handled by the US Copyright Office, you can learn more about copyright registration here.
Do I need to file a registration with the USPTO to have trademark rights?

No. Trademark rights in the US are established as soon as you start using the mark in commerce to identify your goods or services. The rights you have simply by virtue of using the mark are called “common law” trademark rights because they are not based on registration but on use in commerce. Common law rights are usually limited to the geographic area where you operate. Common law rights also protect your trademark from trademark infringement by similar marks used for similar goods/services that started in use after your use of the mark.

What do I need to do to register a trademark with the USPTO?
A USPTO registration requires filing an application with the USPTO that identifies the trademark, the owner, the goods or services covered by the trademark, a specimen showing the mark in use, and payment of a filing fee.
How long does it take to register a trademark?
It depends. In an application based on “use” of the mark in commerce, assuming there are no initial refusals or other obstacles, you can expect a registration in 7 – 12 months. An application based on “intent to use” is similar in length of time to a “use” application. It will also require a showing of the mark in use before the application can proceed. From the point that you can show the mark in use, you can expect a registration in 2 months.
What’s the difference between “use” and “intent to use” trademark filings?
As the name implies, a filing based on “use” means that you are currently using the mark on your goods or services in commerce. “Intent to use” means that you have a “bona fide intent” to use the mark in commerce at a later date. The USPTO allows you to file a trademark application based on intent to use as long as you genuinely intend to start using the mark. The USPTO cannot grant a registration until you submit proof of use, but will grant you up to 5 extensions of 6 months each to give you time to start using the mark in commerce. If you cannot show use of the mark within that time, the application will be deemed abandoned.
What are the benefits of a trademark registration with the USPTO?

There are several benefits to a trademark registration. Among the most important are:

Notice to competitors throughout the US of your legal ownership of the mark
Prevents others from using a similar mark for similar services
Jurisdiction of federal courts may be invoked, also allows you to collect treble (3X) the amount of damages and attorney’s fees if you win
Registration can be used as a basis for obtaining registration in foreign countries
Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods
You can use the ® symbol after your mark

How much does a trademark application cost?
Current filings fees are between $225 – $325 per class of goods. You can see a full table of USPTO filing fees here.
What are trademark classes?
Trademark classes are descriptions of your goods or services that are classified by category and number, based on USPTO guidelines. The classes describe in detail the actual goods or services you are providing (or intend to provide) under the mark, and are used as the basis to determine if another similar mark is infringing yours (or vice versa).
You can see the list of USPTO classes here.
What is an Office Action?
An Office Action is an initial refusal by the USPTO to register your mark. Office Actions can be based on minor issues, like not providing all the required information in an application, or major issues like a determination that your mark is confusingly similar to another registered or pending mark.

Office Actions must be resolved before your mark is allowed to proceed to registration. The USPTO generally gives you 6 months to respond to an Office Action. Failing to respond can result in your application being deemed abandoned. In many cases, it helps to consult with a trademark attorney who can review the Office Action and determine the most appropriate way to respond.

What is a cancellation or opposition proceeding?
A cancellation proceeding is an administrative proceeding before the USPTO’s Trademark Trial and Appeal Board (TTAB) where one party tries to cancel the registered trademark of another. An opposition proceeding is when one party opposes the registration of another party’s trademark during the opposition period, before the mark is registered. Either proceeding can be initiated by any party who believes it will be damaged by the registration of the mark.

Cancellation and opposition proceedings take place before the TTAB. Both proceedings are similar to civil litigation proceedings but TTAB proceedings are only limited to determining whether or not a mark can be registered. Non-trademark claims cannot be decided by the TTAB.

What’s the difference between the Principal and Supplemental Register?
Trademarks can be registered on the Principal or Supplement Registers. Strong, distinctive marks are registered on the Principal Register while weaker trademarks, such as merely descriptive marks, or marks that are no inherently distinctive, can be registered on the Supplemental Register.

The Supplemental Register does not offer the same level of trademark protection as the Principal Register, but it does have some advantages for marks that would not otherwise qualify for registration on the Principal Register. Often the USPTO will refuse a mark on the Principal Register for being descriptive, but allow the owner to move the mark to the Supplemental Register.

In short, the Supplemental Register is a weaker form of trademark protection, but may be the best alternative if registration on the Principal Register is not possible.

A brief summary of the benefits of the Principal v. Supplement Register can be found below:

Benefits Principal Register Supplemental Register
Right to bring an action in federal court for infringement of the mark (3X damages, attorney’s fees if successful X X
Use the ® symbol X X
USPTO will prevent registration of confusingly similar marks X X
Listing of the mark in the USPTO’s online database X X
The registration may serve as the basis for a filing in a foreign country X X
Possibility that the mark may become incontestable after five years of registration X
Legal presumption of validity, ownership, and exclusive rights to the mark X
Ability to record the mark with U.S. Customs and Border Protection to stop the importation into the United States of infringing or counterfeit goods X
How do I know when I can use other people’s trademarks?
Generally, trademarks exists to identify particular sources of goods or services and allow their owners to prevent others from using them to confuse the public as to the source of the goods or services. However, there are circumstances when it’s ok to use others’ trademarks – these circumstances are called “fair use.”

Fair use is an exception to trademark infringement. It generally arises in two circumstances: (1) when a trademark is used in its ordinary descriptive sense to describe a product or service (called “descriptive” fair use); and (2) using the trademark to refer to the trademark owner’s and the actual goods and services associated with the mark (called “nominative” fair use).

What’s the different between the TM and ® symbols?
The ® symbol can only be used after registering the mark with the USPTO. The “TM” symbol can be used as soon as you start using the mark to provide goods or services.
What’s the difference between a state and federal trademark registration?
Both state and federal registrations protect your trademark from competitors using a similar trademark for similar goods or services. State trademark protection is limited to the state of registration, whereas a federal registration protects your trademark throughout the US. The costs and procedural hurdles are lower for a state registration than for a federal one.
If I register my business name/logo/slogan as a trademark, does that mean no one else can use it?
Not necessarily. Trademark law is intended to protect businesses from unfair competition and consumers from confusion about the source of goods or services. Trademark rights only protect your mark in relation to the specific goods or services that you provide. The USPTO often registers seemingly similar marks when the goods or services are different and there is no likelihood that consumer would be confused as to the source of the goods or services provided by the marks.

For your business, before you consider a trademark infringement claim, consider that not only does the potentially infringing trademark have to be similar in sight, sound, appearance, and connotation, but the goods and services must be similar as well.

I have a business, when should I register my name/logo/slogan as a trademark?
When you have a unique word, phrase, symbol, or design that identifies your goods or services, you should register it as soon as possible. While you may still have trademark rights simply by using the mark (see “common law” rights, discussed above), federal trademark registration provides many critical protections. These protections help deter competitors, strengthen your brand with consumers, and prevent counterfeiters.
How long does a trademark registration last?
A trademark registration lasts as long as the mark continues to be used. The USPTO requires certain maintenance documents to be filed between the 5th and 6th years, between the 9th and 10th years after registration, and between every 9th and 10th year after that.

You can find more information about the USPTO’s post-registration requirements here.

Can I use a trademark to fight a cyber-squatter?
In some cases yes. A trademark owner can bring a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), which if successful, can result in canceling, suspending, or transferring a domain name.

A UDRP proceeding requires filing a complaint before an administrative tribunal. UDRP complaints are determined based on the following criteria:

i.) the domain name is identical or confusingly similar to a trademark or service mark in which the trademark owner has rights;

ii.) the domain name owner has no rights or legitimate interests in the domain;

iii.) the domain name was registered or is being used in bad faith.

You can find more information about UDRP proceedings here.

Is there an international trademark?
No. Trademark rights are territorial, meaning they apply only within the borders of the country where the mark is used. But it is possible to register your trademark in several different countries by filing one international application through the USPTO. This filing is done under an international agreement called the Madrid Protocol and can protect your trademark in over 97 countries and organizations. You can learn more about international applications and the Madrid Protocol here.