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Trademark Registration

In the United States, there are at least three (3) different ways to obtain a trademark to use a particular word or phrase in conjunction with the goods or services that a business provides, specifically: (a) common law trademark via use; (b) state trademark via registration; and (c) federal trademark via registration.

For many businesses, however, the most efficient means of obtaining a trademark is through trademark registration with the federal government in order to obtain trademark protection nationwide.

Federal Trademark Registration Service

If you'd rather not apply for federal trademark registration on your own, you can engage Cook & Cook to do it for you.
STARTING AT $597 plus filing fee
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Trademark Registration Application

In order for a trademark to be registered throughout the United States, a person or business must apply for registration with the United States Patent and Trademark Office ("USPTO").

That said, there are actually a number of steps that should be taken before applying for federal trademark registration:

1. Select A Registrable Trademark

Many, if not most, of my clients are often very surprised when I tell them that there are certain types of trademarks that don't receive much protection under federal trademark law. In particular, people are surprised to learn that trademarks which are merely descriptive of the good or services with which they are associated, are afforded little or no protection.

Think about it this way, if a business was granted a federal trademark for the term "clothing store" and that term was also afforded significant protection, the trademark owner would essentially have a perpetual monopoly for any entire class of stores, i.e. stores that sell clothing.

2. Perform A Full Clearance Search

A trademark should be registered by the USPTO if it is likely to "cause confusion" with any previously registered trademarks.

The examining attorney with analyze this likelihood of confusion and can deny registration if appropriate. Further, existing trademark owners can oppose the registration of marks they reasonably think are likely to cause confusion with any of their existing trademark.

There are essentially two types of trademark searches: a) knock-out searches and b) full searches.

a) Knock-Out Search — Consisting of searches of the USPTO's TESS database.

b) Full Search — Consisting of searches from hundreds of data sources including, state, common law, federal, and international (if appicable) sources.

3. Select Mark Format

Although trademarks need not necessarily be text-based or graphical in nature — colors, smells, etc. can be registered — there are essentially three types of trademark or service mark formats: a) Standard Character Mark; b) Stylized Mark; c) Sound Mark.

a) Standard Character Mark — Consisting of plain text, unstylized characters.

b) Stylized Mark — Consisting of stylized text and/or graphical elements.

c) Sound Mark — Consisting of recorded audio.

4. Select a Class

In the U.S., trademarks or service marks can be registered on one or more of 45 international classes. As a result, it is important to choose the class that is most appropriate for the goods or services that are or will be associated with the mark.

5. Select Filing Basis

One of the many "quirks" associated with the U.S. Constitution requires that a trademark must be "used in interstate commerce" before the USPTO can issue trademark registration.

As a result, many, if not most, trademark applications are filed after a trademark has been used in commerce, often called "actual use" or 1A applications. However, use in commerce is not required before a trademark application can be submitted, rather, applications can be submitted as "intent-to-use" or 1B applications.

This brief overview of some important considerations associated with federal trademark registration is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.

Federal Trademark AttorneySteve Cook is a trademark lawyer at Cook & Cook. Although his main office is located in Mesa, Arizona, he firm represents clients throughout the United States.

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