The three primary legal
requirements for federal trademark registration are:
(1) Interstate
Commerce. Congressional
power to regulate trademarks arises under the
Commerce Clause of the Constitution (U.S. Const.
art. I, § 8, cl. 3), and, thus, only trademarks that
have been used in interstate commerce may be
federally registered.
(2) Written
Application. Federal
trademark registration requires filing a written
application with the U.S. Patent and Trademark
Office (PTO). A form for the written
application is attached as part of this program. The
specifics of the application depend on whether the
mark has actually been used in commerce, rather than
being the subject of a bona fide intent-to-use. However,
in either case, the written application must
include:
a) A
description of the goods or services the mark was or
will be used to identify; the manner of use or
intended use;
b) A
statement that to the best of the applicant's
knowledge, no other person has the right to use the
mark;
c) A
drawing of the mark;
d) Specimens
(the mark as actually applied, affixed or attached
to the goods) or facsimiles of the trademark as
used; and
e) An
application fee of $245 per class (1996).
Use-based applications
must also include:
f) A
statement of the dates of first use.
Intent-to-use
applications must also include:
g) A
statement of a bona fide intention to use; and
h) A
verified statement that the mark is in use in
commerce, filed at least within 30 months after the
PTO issues a notice of allowance.
(3) No
Likelihood of Confusion with Existing Marks. After
receiving the application, the PTO conducts a search
of existing trademark applications and registrations
to determine whether similar marks exist. An
individual may not register a trademark which so
resembles a mark previously used by another where
use of the trademark is likely to cause confusion,
mistake or deception as to the origin of the
product. 15 U.S.C. § 1052. If
the trademark application is allowed by the
trademark examiner, the mark is published to allow
public opposition to registration. Other
mark owners have 30 days to oppose registration of
the mark. If the mark is not
successfully opposed, the PTO issues a certificate
of registration and enters the mark on the Principal
Register for a ten year term.
Between the fifth and
sixth anniversaries of registration, the owner must
submit an affidavit or declaration of continued use
of the mark. Failure to do so results
in cancellation of the registration. 15
U.S.C. § 1058(a). The ten-year
registration is renewable indefinitely.
A trademark application
may be filed by the applicant, without an attorney. The
description of goods or services in the trademark
application, however, can be critical to problems
that may arise during registration. Due
to the complex legal issues involved, consulting a
trademark attorney is highly recommended. Before
visiting an attorney, the applicant should complete
the Trademark Questionnaire attached as part of this
program.
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