Trademark Registration

must submit a trademark registration application to the USPTO to register a trademark
- USPTO encourages trademark applications to be filed electronically

Application Contents

application must contain the following:
- Name and contact information for the owner of the trademark
- drawing of the trademark
- technical listing of the goods or services that the trademark represents
- Filing fee

after filing, it is forwarded to an examiner:
- reviews the application for completeness
- reviews proof that the trademark is used in commerce
- reviews to make sure that it is inherently distinctive
- reviews other trademarks to search for conflicts
Examiner can reject for several reasons:
- is a generic name for goods or services
- is descriptive of the applicant’s goods or services and there is no secondary meaning
- is similar to another trademark already registered and is likely to cause customer confusion
- contains immoral, deceptive, or scandalous matter
- may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols
When approved, it is published in the Official Gazette
- USPTO’s official publication
- published every week
- includes listing for trademarks and patents
- gives public notice of new trademarks
  - any party who has concerns about the trademark may contest it
  - have 30 days from the date of publication to file an opposition
    - is a proceeding before the Trademark Trial and Appeal Board that hears trademark disputes
- if no oppositions, USPTO issues a Certificate of Registration, if used in interstate commerce
- if not used in interstate commerce, must begin using it in 6 months
  - must notify once beginning to use the trademark
  - USPTO will then register it

registration period for a trademark is 10 years
- between 5th and 6th year after registration, must submit an Affidavit of Use
  - document shows that the person or business is still using the trademark
- must be filed again right before the end of the 10-year registration period
must pay a maintenance fee
must re-register the trademark every 10 years to maintain protection of the mark