A Brief Overview of Trademarks in the U.S.

So you’ve decided that it’s finally time to get your trademark registered in the U.S.  Well, before you do, there are a few things you should know.

The most important legal requirement when it comes to obtaining and maintaining a trademark in America is that the mark must be used in interstate commerce.  In short, you have to be actively and genuinely be using your mark in the States in order to qualify for federal trademark registration.  Proof of that use must be shown prior to registration in the majority of cases.

It isn’t mandatory that you register your trademark, but it is certainly encouraged and advisable.  When you have finally secured that coveted federal registration, it provides quite a few important presumptions, including ownership, exclusive use, and validity, to name a few.

Application for federal registration does not automatically mean that you will emerge on the other end with a registered trademark.  The United States Patent and Trademark Office (USPTO) – the regulatory body in charge of federally registering marks – can refuse to register a mark for many reasons.  Some of these reasons include:

• Failure to submit the application in the required form.
• Non use of the mark in interstate commerce.
• A non-distinctive mark.
• An immoral, deceptive, or scandalous mark.
• Falsely suggesting a connection with, or tending to bring another or an institution into contempt or disrepute.
• Falsely suggesting a protected geographic designation (for example, Champagne).
• A state or national flag, insignia, or designation.
• Name, signature, or portrait of a living person without authorization, or of a U.S. President.
• Prior use or registration by another of the mark or of a mark that is confusingly similar.

Furthermore even if your mark gets a thumbs up from the examining attorney, your application can always be opposed by a third party during the 30 day period known as “publication”. The grounds on which a trademark application can be opposed by third parties are the same grounds as those that can be used by the USPTO, mentioned just above.

This is why we at Trademarkroom urge you to consider using an experienced U.S. Attorney when filing an application for federal trademark registration.  The process is an intricate one and the slightest misstep can lead to significant delays or hurdles with your application.  Contact us now with any questions you may have.  If we can assist, we will.  No obligation.

By Waheedan Jariwalla

US Attorney

Waheedan@trademarkroom.com