How Long is a Trademark Good For: Everything You Need to Know
Trademarks help keep your brand protected from competitors who may want to pirate your ideas. But how does one go about obtaining a trademark?8 min read
Trademarks help keep your brand protected from competitors who may want to pirate your ideas. But how does one go about obtaining a trademark? When should a company get one? How long are they good for? These, as well as many other questions, are all ones that you should know the answers to as a business owner or the business's lawyer. Read on to learn more about the laws and rules surrounding trademarks.
What is Federal Trademark Registration? How Do I apply?
What is federal trademark registration and how long is a trademark good for? Federal trademark registration is a way to gain benefits for the use of a mark on goods and services, including but not limited to, the ability to recover damages from use of the mark by competitors, the right to sue for infringement on a mark, as well as the ability to recover fees for attorneys over infringement suits.
You can apply online for a trademark at the website for the United States Patent and Trademark Office (USPTO). There are two ways to apply for a trademark. The first is the Trademark Electronic Application System, which costs $325 per class. The second is an abbreviated application, this system is known as TEAS PLUS and costs $275 per class.
Another way to get a trademark is to send the application through mail. This paper form also costs $375 per class. Any application you send in needs to include your name and address, as well as some kind of drawing or depiction of the requested trademark.
Once registered, you are presumed to own the trademark. Generally, trademark registration goes through in a straightforward matter.
Once you've finished the application make sure to do the following:
- Describe your service mark or trademark (in these cases, the terms are usually shortened to "mark")
- State the first use of the mark
- Make a suggestion for mark classification out of the 40 or so classifications for goods and services.
Make sure to accompany your application with the following:
- The depiction or drawing of your mark. If you're trademarking a word, simply write or type the word. For graphics, make sure to include a photo of the exact design.
- Examples of how you propose the mark be used.
- The registration fees.
Include all this, and your application should be ready to process.
What Types of Trademarks Are Not Eligible for Federal Registration?
The following cannot be registered trademarks:
- Any name of a living person that has not given their consent to the trademark.
- The United States flag.
- Any other government insignia, local or federal.
- The name of any deceased United States President without the consent of their widow.
- Any word or symbol that belittles any person living or deceased, or denigrates any national symbols, institutes, or beliefs.
- Anything that the USPTO considers scandalous, deceptive, or immoral. Though this rarely is used as grounds for refusal of trademark registration.
- Anything used in only one state. Trademarks must be used in more than one state to offer goods or services to qualify for federal protection.
What Happens After the USPTO Decides That a Mark Is Eligible for Federal Registration?
Once a mark is deemed eligible, it gets published in the Official Gazette, a USPTO online publication. This simply states that the trademark is eligible while giving the public the chance to object to registration. If no objections arise, it should take about a year for the USPTO to respond. Though it can take up to several years based on whether or not any legal issues arise during the application examination. Once it's registered, the owner must file a continued use statement as well as a renewal application at a later date to keep the trademark on file.
What Are the Benefits of Having a Trademark on the USPTO's Principal Register?
There are two different registers: the first is the Principal Register. The second, the Supplemental Register.
Principal Registers convey the most important rights that most people would associate with federal trademark registration. The biggest benefit of having a mark on the Principal Register is that anybody who infringes on the trademark becomes liable for large sums of money in damages.
The Supplemental register does not grant the same rights and protections as the Principal Register. In fact, the Supplemental register does not even grant the owner exclusive right for use of the mark. The Supplemental Register also omits the ability to stop the importing of any goods that infringe on the trademark.
Registration does provide an exact date, which helps to fight any infringement incidents that may have happened around the time of registration or soon after.
How Long Does Federal Trademark Registration Last?
Five years, or 10 years with the filing of a Declaration of Continued Use. Although, registrations can be renewed as many times as the owner wants. All they need to do is file renewal applications, or Section 9 Affidavits, with the USPTO. However, even if the owner does not renew a registration, that does not void all rights for the mark.
The more you use your mark, the stronger the rights. Even without renewal, continued use of a specific phrase, design, or symbol by a specific manufacturer designates a trademark. Though lack of renewal does cost the owner special benefits.
Can a Business Register Its Trademark at the State Level?
Yes. This would be the route to take if a trademark shall only be used in one state, because it would not qualify for federal registration. You do not need to state register if you already have federal registration.
With a state registration, you will not get the same level of protection as a federal registration. The main benefit of this registration is the ability for others to check and see that your trademark is already in use and owned by you.
How Does a Trademark Qualify for Federal Registration?
Interstate commerce is required before applying for a federal trademark registration. All this means is that the mark must be used either with a service or on a product that crosses state lines. This includes internet business. The following questions must all have a "no" answer:
- Does the trademark closely represent another mark used in similar services or goods?
- Does the trademark describe the service or goods themselves, and not the source?
- Does the trademark over or under describe the service and therefore become too generic?
Make sure none of these questions apply to your mark before submitting an application.
Declaration of Continued Use
Maintaining a federal trademark registration requires filing a maintenance document before the beginning of the sixth year of your registration. The time period begins on the date of registration. This document is called a Declaration of Continued Use. By signing this, you are swearing that the mark is currently being used in commerce. Failure to file this document results in the cancellation of the trademark by the USPTO. If accepted, your registration will continue until 10 years after the registration date.
Declaration of Excusable Non-Use
It is possible to retain a trademark without using it. You can do this by filing a Declaration of Excusable Non-Use. This must be done between five and six years after the registration date. It is a sworn statement, just like the Declaration of Continued Use. With it, you are declaring that the non-use is only temporary and out of your control. You also must lay out your method of fixing the situation in the declaration. Reasons the USPTO commonly accept include sale of a business, natural disasters, and illness.
Ten years from the registration date, one can file an application to renew the trademark. This document is called an Application for Renewal. You can renew your trademark an unlimited number of times.
Even without registration, you can use a TM or SM designation on your services or goods, as long the trademark does not already exist, and you are the first to use it in commerce. This is another way to let the public know that you are claiming ownership over the mark. Once registered, then you can use the ® symbol.
Loss of Trademark Rights
It is possible to lose rights over a trademark even if it has been registered and renewed. Failure to use the mark is considered abandonment. Marks must be in continual use to be protected. Improper licensing can also lead to a loss of rights. Even valid trademarks, if, over time, they become generic, can lose rights. A good example of this is aspirin. Once a trademark of Bayer company, this word can no longer be protected by trademark rules in the United States (though it still remains a valid trademark in Canada and many European countries).
Can I assign Trademark Ownership to Another person or Business?
Yes. Trademarks are transferable as long as they have been applied for registration. This is called an "Assignment." Most often you must have a written contract for the transfer which can be recorded for a fee at the USPTO.
What is a Trademark Specimen?
A trademark specimen is any example of how you use the mark in the real world, as opposed to just a picture of the trademark. Examples: Labels, packaging material, instruction manuals, tags, and containers with the trademark displayed on them.
How Do I Electronically Sign My Trademark Document?
Make sure to carefully review the document to be sure the information is correct. Then type your name into the box.
What is the Section 15 Trademark Declaration of Incontestability?
This declaration allows one to request the highest status of protection available under U.S. federal law. Basically, you are protected against many of the potential legal challenges that might be thrown at your company over the use of your mark. You can file for a Declaration of Incontestability as long as it's on the Principal Register and has been used for five years consecutively since the registration date.
Will an Examining Attorney Search for Conflicting Trademarks?
Yes. They will do this to find any existing conflicts between your application's trademark and any other trademark that is registered or pending registration. They must do this because the USPTO does not provide these searches before you file an application. A good search would look for the following areas to make sure there's no confusion:
- Mark similarities.
- To what class of goods or services the trademark is being applied.
- Any conflict between your trademark and another registered trademark.
What Are the Differences Between My Business Filings and My Trademark Rights?
There are no trademark rights involved in any business filings. The only way to get trademark rights is to use a trademark to sell or advertise services or goods. Federal trademark rights can only be obtained by filing and getting approved for federal trademark registration by the USPTO.
How Do I Register My Company Name?
The same way you would any other trademark. Apply for registration through the USPTO. Make sure the name is not already in use. It is unlikely that your state will register your business name if it is too similar to another already registered business including corporations, LLCs, and partnerships.
What is a Basic Federal Direct-Hit Search?
A basic federal direct-hit search is a way to search for conflicting trademarks through the USPTO database.
How Do I Know If I Need Trademark or Copyright Protection?
It's not always clear whether to go for a trademark or copyright. Each one is a means of protecting the rights of intellectual property. Copyrights are usually reserved for works of authorship; that is, anything that is written or creative works like literature, drama, music, and art. Trademarks generally protect less tangible work, like single words, symbols, logos, phrases, or names that are used to distinguish the goods and services provided by one company from others.
What is an Allegation of Use?
An Allegation of Use is basically a statement claiming that you actually use your trademark and is required for registration. This statement must also include a demonstration of the trademark use.