About Trademark Law

How to Register a Trademark

How to Register a Trademark

US Trademarks are registered by the US Patent and Trademark Office (“USPTO”).

The first step to register a trademark is filing an application with the US Patent and Trademark Office, which can be done online at USPTO.gov. The application is then reviewed by a trademark examining attorney to ensure that it meets the requirements for registration. Because unviability due to a prior conflicting registration is common, a trademark clearance search may be a good idea.

If the examining attorney determines that the application meets the requirements for registration, it will be published for opposition. After publication, third-parties have 30 days to file an objection to registration of the trademark.

The trademark registration will issue if no objection is filed during the opposition period and if the trademark was previously used “in commerce.” The term “in commerce” has a particular legal meaning. If the trademark has not yet been used in commerce, the trademark registration will issue after a statement of use (“SOU”) is filed.

The USPTO examines statements of use carefully.

Do you need an attorney to register a trademark?

There are various obstacles to registration of a trademark, which include objection by the trademark examiner and opposition by a third-party. An experienced trademark attorney can draft an application so as to avoid trademark examiner objection, and a trademark clearance search, performed by a trademark attorney, will help avoid third-party objection by prior owners.

An attorney can also advise an applicant as to the legal meaning of questions in the trademark application. If a trademark application contains misstatements, however unintentional, those misstatements can cause invalidation of a trademark registration and loss of some trademark rights. For example, if the owner asserts they used the trademark in commerce,  which has a specific and nuanced legal meaning, the trademark registration may issue, but it can be invalidated in the event of a challenge by a third-party.