May 2005
Volume 1, Number 3
Table of Contents

Registering a Federal Trademark
By Debra C. Scheufler

Trademark law originally arose out of the concept of fraud and deceit and its purpose was to protect the public from counterfeit merchants. The concept was that consumers should have confidence that a product sold under a certain name should be of the quality expected of all products sold under that name. This common law concept still protects the public and merchants from unfair competition federally and in most states.

Trademark protection, codified under the federal Lanham Act, has expanded to protect tradenames (under which services are marketed), and trade dress, which applies to the distinctive appearance of product labels.

Trademark will be used herein to mean trademarks and service marks.

Registering a trademark, at first glance, appears to be a relatively simple process. It requires a completed application, a specimen and a statutory filing fee. The specimen is a separate page depicting the printed words, and/or a drawing if the mark is pictorial, sought to be registered. The United States Patent Trademark Office (“USPTO”) website offers an online application process, where credit card payment is accepted, and the necessary specimen is submitted via e-mail. Alternatively the trademark application form and specimen may be printed out and mailed in. The filing fee is only $325.00 per class of goods or services if submitted online and $375.00 per class if submitted by mail.

The process is, however, a bit more complicated than filling out an application and submitting the appropriate fee. The first challenge arises in the choice of applying based upon use in commerce or “intent to use.” The applicant’s mark must either be in use commercially in connection with goods or services, or the applicant must assert an intent to use in commerce.

An application based on use is examined for registrability under the Lanham Act, then published in the USPTO Gazette, and if it is not challenged within 30 days of publishing, it will be registered. This process can take one year at a minimum.

Applicants may wish to reserve a mark for a period of time, prior to use in commerce in order to “reserve” a mark while ramping up development of a product or service. The intent to use application procedure allows this. If the mark is deemed registrable after examination a Notice of Allowance is issued and the applicant has six months to show use in commerce, a necessity for registration. As a practical matter, the USPTO will grant at least one, and often several, six-month extensions upon further application. The result is that the applicant may have as long as four years before it must demonstrate use in commerce. Each request for an extension of time requires an additional $100.00 filing fee.

If the mark is not registered for some reason, the applicant forfeits all filing fees, so it is important to determine whether the mark is protectible to the extent possible before filing an application. Marks will be rejected if they are deemed descriptive, immoral, deceptive, or disparaging to any person, entity or governmental body, or if they are confusingly similar to an existing mark, whether registered or pending registration.

One of the most common reasons for rejection is that the mark is descriptive of the product or service it represents. For instance “The Cook Book Store” is not registrable as it merely describes the product sold, however “Something’s Cooking” is fanciful and not merely descriptive, so it may be registrable as a mark for a cookbook store. As well, names that merely describe the geographic location where the product or service is sold are not registrable unless they have acquired a “secondary meaning” and the products or services are sold in locations other than the one designated in the name. As an example, “Denver Chocolates” would not be registrable as the name of a chocolate candy store located only in Denver, but it may be accepted for registration if it has acquired a secondary meaning, that is if it has been used in commerce long enough for the public to always think of that particular company when the name Denver Chocolates comes up, and if Denver Chocolates has locations other than in Denver.

Even if a mark is fanciful, meaning composed of words or features that are non-descriptive, odd or arbitrary, it will be rejected if it infringes on a senior user. Therefore it is prudent to obtain a comprehensive trademark search before beginning the registration process. Applicants can search the USPTO website for registered or pending marks that may cause infringement problems, but common law senior users can challenge a new applicant as well. A simple internet search can rule out the more obvious common law senior users, however not every name or mark in use can be found on-line. National and international searches may be obtained for a reasonable fee from Thomson & Thomson and other search services. The search results will list any exact match as well as use of components of the desired mark in all 50 states, federally registered or pending marks, and even internationally if desired. When evaluating search results, the standard to keep in mind is “confusingly similar.” Even if the exact mark is not in use, a similar mark, particularly if used in the same or similar class(es) of goods will not be registered. For instance, the mark “New Idea Magazine” would infringe on a senior mark “Idea Magazine.”

If a word or phrase in the mark is too common, the applicant must disclaim the right to use that particular word or phrase out of context of the entire mark. In the example given above, the applicant would disclaim the exclusive right to the word Idea not in connection with the rest of the mark. If this waiver is not included in the application, the assigned examiner will request that such a disclaimer is filed prior to publication in the USPTO Gazette. One way to get a common or descriptive word or phrase registered is to include some kind of graphics or logo with the words, in which case the mark which contains words that might be rejected on their own may be registrable as a whole with the logo.

Once the applicant decides on a name or mark, the application is filed with the specimen depicting the proposed mark and the appropriate filing fee. The applicant must decide how many classes of goods and/or services in which to register the mark. A list of classes is available on the USPTO website. At some point after the application is submitted, often several months, an examining attorney is assigned to the application. During the examination process, an applicant may receive several communications from the USPTO examining attorney. Examining attorneys are typically responsive and accessible by telephone to answer applicant questions. It is important to respond timely to letters from the examining attorney as the registration may be deemed abandoned if the applicant is not appropriately responsive.

When the mark is finally published in the USPTO Gazette, challengers have 30 days to file an opposition to publication. This is an administrative proceeding adjudicated by the Trademark Trial and Appeal Board. The opposition must state why the opposer would be damaged if the opposed mark is registered. If the opposer shows senior use in commerce, that it has expended considerable resources in marketing its name or mark, and that the applicant’s mark is the same or confusingly similar to the opposer’s mark it will likely prevail in its opposition. The applicant must answer the opposition and the Board will set dates for pleadings, discovery and oral argument if appropriate.

Marks that prevail through the examination and publication process will be registered. A trademark is valid for ten years following registration as long as an Affidavit of Use and the appropriate filing fee is filed between the fifth and sixth year following registration, and within the year before the end of every ten-year period after the date of registration.  The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. Additionally the registrant must file a renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.

The USPTO website is a great resource for attorneys filing trademark applications, or dealing with opposition proceedings. The Lanham act is also available in full at






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