Category: Trademark Protection

The USPTO reviews trademark applications and determines whether the applied-for mark meets the requirements for federal registration. USPTO employees will answer general questions about the application process at no charge. Contact the Trademark Assistance Center (TAC) at TrademarkAssistanceCenter@uspto.gov or 1-800-786-9199. Note: The USPTO cannot provide any sort of information in the nature of “legal advice.” For legal advice, please consider contacting an attorney who specializes in intellectual property.

Each time you use your mark, it is best to use a designation with it. If registered, use an ® after the mark. If not yet registered, use TM for goods or SM for services, to indicate that you have adopted this as a trademark or service mark, respectively, regardless of whether you have filed an application with the USPTO. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration. However, no specific requirements exist as to the precise use of the “®” symbol as to placement, e.g., whether used in a subscript or superscript manner. Note: Several foreign countries use “®” to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.

No. In the United States, parties are not required to register their marks to obtain protectable rights. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides a number of significant advantages over common law rights alone, including:

• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);
• Public notice of your claim of ownership of the mark;
• Listing in the USPTO’s online databases;
• The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol “®”;
• The ability to bring an action concerning the mark in federal court; and
• The use of the U.S. registration as a basis to obtain registration in foreign countries.

The USPTO’s Law School Clinic Certification Program allows law students enrolled in a clinic program to practice intellectual property law before the USPTO under the strict guidance of a law school faculty clinic supervisor.

The American Bar Association posts a list of Pro Bono IPL Resources in the United States.

The International Trademark Association (INTA) has also established the INTA trademark pro bono clearinghouse pilot program.

To find an attorney who can represent you before the USPTO, consult U.S. telephone listings or the internet. You can also contact the attorney referral service of a U.S. state bar or U.S. local bar association (see the American Bar Association’s Consumer’s Guide to Legal Help for more information). Make sure that any attorney you hire has experience prosecuting trademark applications before the USPTO. The USPTO cannot help you select an attorney or recommend one.

A U.S.-licensed attorney who specializes in trademark law can provide valuable legal advice about many important issues and help you before, during, and after the trademark application process.

Before you file your application with the USPTO, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks to determine if your chosen mark is available for use and if it is eligible for federal registration. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to your chosen mark, even though they are not federally registered. Such unregistered trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database, but could still ultimately prevent you from using your chosen mark even if the USPTO registers your mark.

When you file your application, an attorney can help you navigate the registration process to provide optimal protection of your trademark rights. For example, an attorney can determine the appropriate filing basis for your application, accurately identify and classify your goods and services, select an appropriate specimen that shows your mark as used in commerce, and prepare responses to any refusals to register your mark that a USPTO examining attorney may issue. Although a USPTO examining attorney can provide information about the federal registration process, USPTO employees cannot give you legal advice.

An attorney also can help you understand the scope of your trademarks rights and advise you on the best way to police and enforce those rights. For instance, if other trademark owners challenge your application or registration, or allege that you are infringing on their marks, an attorney can advise you on what to do and defend your case.

You are required to have a U.S.-licensed attorney represent you in trademark matters at theUSPTO if your domicile is not located in the United States or its territories. A person’sdomicile is the place the person resides and intends to be the person’s principal home. Abusiness’s domicile is the location of its headquarters where the entity’s senior executives orofficers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled.

Only an attorney who is an active member in good standing of the bar of the highest court of any U.S. state (including the District of Columbia or any Commonwealth or territory of the U.S.) can represent you in a trademark matter at the USPTO. Foreign attorneys who are not licensed to practice law in the U.S. and non-attorneys cannot represent you (including preparing, signing, or filing submissions for you) in a trademark matter at the USPTO.

Once you hire an attorney, the USPTO will only communicate with your attorney about your application, registration, or TTAB proceeding.

When you engage in the trademark application process or bring matters before the Trademark Trial and Appeal Board (TTAB), you are involved in a legal proceeding. These proceedings require you to comply with U.S. trademark laws and rules. An attorney who is licensed to practice law in the United States and specializes in trademark law can help you navigate these proceedings.

The USPTO offers a free search system known as TESS (Trademark Electronic Search System), available 24-7 . The TESS Help Page[14] includes information, with some sample search strategies,on how to search the USPTO’s database of registered and prior pending applications to helpdetermine whether any marks therein could prevent registration of your mark due to a likelihoodof confusion. The USPTO will not search your mark for you prior to your filing an application.After filing and as part of the examination of your application, the USPTO will conduct a searchof your mark and will let you know the results of that search. If the USPTO finds anotherregistered mark or earlier-filed pending mark confusingly similar to yours for related goods/ services, it will refuse to register your mark.

Alternatively, you can search the TESS database at a Patent and Trademark Resource Center (PTRC). The USPTO website contains information about PTRC locations in your state.

Be aware that any searches you conduct on TESS are limited to the USPTO’s database of federaltrademark applications and registrations and do not include the marks of other parties who mayhave trademark rights but no federal registration. These rights, known as “common law” rights,are based solely on use of the mark in commerce within a particular geographic area. Commonlaw rights may be stronger than those based on a registration, if the common law use is earlier than the use that supports the registration. Therefore, it is critical to learn whether superior common law rights exist, by searching the Internet for websites and articles that reference similar marks that are related to your goods and services. You should also search state trademark databases and business name databases. Because searching is very complex, you should seriously consider hiring a trademark attorney to assist you with a “full” or “comprehensive” trademark search, as discussed below.

Conducting a complete search of your mark before filing an application is very important because the results may identify potential problems, such as a likelihood of confusion with a prior registered mark or a mark in a pending application. A search could save you the expense of applying for a mark in which you will likely not receive a registration because another party may already have stronger rights in that mark. Also, the search results may show whether your mark or a part of your mark appears as generic or descriptive wording in other registrations, and thus is weak and/or difficult to protect.