USA Trademark Registration Requirements
Registering a trademark is a necessity for protecting the brand of a business, as it offers protection against third-party infringement of the company’s branding.. Business owners who are planning to apply for a federal trademark should be aware of a few key requirements and make sure that they have met all criteria before filing their applications. Mistakes during the registration process can cause unnecessary delays that may leave the applicant’s branding vulnerable to infringement. Many trademark applicants seek legal assistance to ensure that the registration process goes smoothly. Consulting with an experienced trademark attorney can help ensure that all legal requirements are met and that no unnecessary roadblocks develop due to procedural issues.
The Distinctiveness of the Trademark
The United States Patent and Trademark Office (USPTO) requires a trademark to be distinctive. If an t application is to be accepted, the trademark must “identify and distinguish” a good or service.
Five categories are established to determine if a trademark is distinctive:
- Generic—A trademark will be deemed generic if it uses a common word for the product or service offered. For example, a trademark filed for the brand name “Software” for a software company would be considered generic.
- Descriptive—Descriptive trademarks merely describe the product or a specific quality of the product. A descriptive trademark is not inherently distinctive. However, there are certain scenarios in which the USPTO will accept a descriptive trademark. For example, the hotel chain Holiday Inn has a descriptive name that is trademarked.
- Suggestive—A suggestive trademark is either a hint or suggestion regarding the nature of the offered product or service or one of its characteristics. Suggestive marks are considered distinctive and, thus, eligible for trademark registration
- Arbitrary—Arbitrary trademarks apply to existing words that are unrelated to the product or service, such as Camel cigarettes. An arbitrary trademark is considered inherently distinctive and qualifies for strong legal intellectual property protection.
- Fanciful—Invented words or phrases are considered fanciful trademarks, which are the most distinctive of the five categories. Many famous trademarks fall under the fanciful classification, such as Kleenex, Microsoft, and Google.
Trademarks Must Be Registered Under the Owner’s Name
Applying for a trademark can only happen if filed under the name of the actual owner. Legally, the owner is the person in control of the nature and quality of the services provided or goods sold under the trademark. An owner can be a person, a partnership, a corporation, or an association. For trademarks owned by a corporation, the application should be filed under the name of the corporation. The application should also identify the type of entity of the owner and the owner’s address.
Use or Intent To Use in Commerce
The USPTO requires trademark applicants to establish that their product is in use or, if not in use, to file an official Intent to Use application. A trademark will be considered in use if the product associated with the trademark is already on the market. Applicants must also include what products have already been sold with the trademark in order to meet the USA trademark registration requirements.
The owners of trademarks that have not been used on products or that have not been sold may file an intent-to-use application, making a good faith statement regarding their intent to use the trademark on the market.
Common Reasons Why Trademarks Are Denied
There are several grounds for refusing a trademark registration, including:
- Likelihood of confusion—When an applications is examined, the USPTO will search for conflicting marks. If they find a mark that is similar enough to cause confusion regarding the source of the mark, the application may be denied.
- Merely descriptive—Trademarks that fall under the “descriptive” category of distinctiveness will be denied.
- Deceptively Misdescriptive—A deceptively misdescriptive trademark inaccurately describes a quality of the trademark.
- Primarily Geographically Descriptive—Trademarks that are primarily based on a known geographic location can be denied if customers will likely believe that the products or services originated in that place and if the trademark pinpoints the location where the goods or services are produced.
- Primarily Geographically Deceptively Misdescriptive—This type of trademark meets the same criteria as the previous category with the added caveat that the products or services do not actually originate from the geographic location depicted in the trademark.
- Primarily Merely a Surname—A trademark with a surname as its main significance will be refused registration.
- Ornamentation—A trademark registration may be refused on the basis of ornamentation, which means that the trademark in the application is only a decorative part of the goods, without adequately identifying or distinguishing the mark.