Trademark Requirements

---

2 requirements for USPTO registration:

1. Use of the trademark in interstate commerce
2. Distinctiveness of the trademark

Use in Commerce

• must be used in interstate commerce
• A person uses a trademark in interstate commerce when:
  • it is placed on goods or services and sold to the public in several different states
• registration application must state when the trademark was first used in commerce
• may still register the trademark even if it is not used in interstate commerce at the time that the registration is filed
  • must show good faith intent to use the trademark in commerce in the future
• person must begin using the trademark within 6 months after the USPTO approves it
  • can extend this period up to 2.5 years
• must notify the USPTO once it begins to use the trademark

Distinctiveness

• USPTO has two methods of registering trademarks:
  • Principal Register
    • strong trademarks, registered quickly
    • inherently distinctive
    • main way of registering trademarks
    • gives a trademark owner the greatest amount of rights under federal law
  • Supplemental Register
    • Weaker trademarks
    • not inherently distinctive
    • The only federal right granted is the owner may sue in federal court for trademark infringement
    • After 5 years of using the trademark
      • owner may submit proof of trademark use and evidence that it has achieved secondary meaning
      • will then move the trademark from the Supplemental Register to the Principal Register