German Speaking Attorney in New York

FAQ Trademark Registration

Disclaimer Notice: This information is provided as a public service to highlight matters of current interest and does not imply an attorney-client relationship. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. 

Where can I register a trademark in the USA federally?

The U.S. Patent and Trademark Office (USPTO) is the agency responsible for registering trademarks.

Must I file my federal trademark application online?

Yes. The USPTO made electronic filing mandatory as of February 15, 2020. Generally, paper-based trademark applications are no longer allowed.

How much does it cost to register a trademark in the USA?

That depends on how many classes you register your goods or services in. Goods and services are divided into individual classes containing the names of goods and services so that their scope of protection can be circumscribed. The respective good/service should be registered in more than one class if possible because this extends the scope of protection. Currently (as of 2022) the fee per class ranges from $250 to $350 within the framework of an initial application. Not included in these fees is the working time of the lawyer commissioned with the registration.

How long does it take for a U.S. trademark to be registered?

That depends on how smoothly the trademark application goes. If you have already used the trademark in U.S. business transactions and no objections are raised to its registration, it may be possible that the trademark will be registered within approx. ten to twelve months. However, if the USPTO or third parties raise any objections or if there is any other need for clarification, the procedure will be extended. In such cases, the process may take 24 months or more.

What are the benefits of a U.S. trademark registration with the USPTO?

Probably the most important advantage is that the law treats the holder of the federal registration (the registrant) of the U.S. trademark as its rightful owner. If disputes arise in this regard, it is then up to the opposing party to prove that the registrant is not the rightful owner of the trademark. Therefore, in the event of unauthorized use of the trademark by third parties, it is easier for the registrant to enforce U.S. trademark protection and claims for damages. In addition, the registrant can register his or her trademark with the U.S. customs authorities to prevent trademark infringement through imported goods.

Once I have registered my trademark in the USA with the USPTO, no one else can use it. Correct?

No. Trademark protection can also arise in the USA through use of the trademark in commercial transactions without registration with the USPTO (“common law trademark”). Therefore, if someone has already commercially used the mark in the USA before you registered your mark with the USPTO, then that prior use may take precedence if there is any likelihood of confusion. There is a likelihood of confusion if the mark refers to the same or similar goods or services within the same geographic area. However, the law presumes that the holder of a federal trademark registration rightfully owns the trademark. Therefore, in the above example the previous (non-registered) user would have to prove that he or she is the legitimate trademark owner if a dispute arises. In order to avoid such disputes, a thorough US trademark search should be carried out before filing an application.

Intent to use: I have not used my trademark in U.S. commerce yet but want to use it in the future. Can I still register it with the USPTO? What are the benefits?

A trademark can be registered not only if it is already being used but also if the trademark has not yet been put to use in U.S. commerce. However, the use of the trademark must be intended in the future, namely within 6 months after the USPTO has approved your trademark for future registration without current use in business (“Notice of Allowance”). Therefore, the USPTO will not register your trademark until you establish that you are using it in U.S. commerce. If you don’t use the trademark in U.S. commerce within these 6 months, you can purchase additional extensions of 6 months each up to a total of 3 years. Only submit an intent to use application if you have the serious intention of using the trademark in the future.

The intent to use procedure has the advantage that the law treats the filing date (as opposed to the date of the actual registration) as the date of the first use of the trademark in US commerce (“priority date”).

Duration of U.S. trademark protection: How long does U.S. trademark protection last?

Trademark protection in the USA is valid for 10 years from the date of registration. Thereafter, it can  be renewed every 10 years. In principle, however, trademark protection only exists as long as the trademark is actually being used in U.S. commerce. You must regularly demonstrate use throughout the life of your trademark if you want to maintain your registration and keep its benefits. For example, between the fifth and sixth years after the registration of the trademark, you are required to file a certain maintenance document (“Declaration of Use and/or Excusable Nonuse”) with the USPTO.

Can a U.S. trademark application be based on a foreign application or registration?

Yes, but the following situations must be distinguished:

– Application based on foreign application (registration in the foreign country still pending): If you applied for registration of your trademark in a foreign country that has a relevant agreement with the USA, you can also apply for registration with the USPTO within six months of the foreign application. However, the trademark will not be registered in the USA until you establish that you either use the mark in U.S. commerce or that the mark was finally registered in the foreign country. However, the law treats the date of the foreign application retroactively as the date of the first use of the trademark in U.S. commerce (“priority date”).

– Application based on foreign registration: If your trademark has already been registered in a foreign country, you can also register it with the USPTO without having to provide proof of use in the USA. However, there is no retroactive effect here; the foreign filing date is therefore not considered the priority date with regard to the first use of the mark in U.S. commerce.

– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol): Finally, the USA can be designated as one of the protected countries within the framework of an international registration pursuant to the Madrid Protocol. The Madrid Protocol is a treaty administered by the World Intellectual Property Organization (WIPO) based in Geneva, Switzerland. It offers a centralized procedure for obtaining trademark protection in multiple Protocol member countries by filing one international application with the WIPO. However, the Madrid Protocol does not effectuate automatic registration in the designated countries but merely serves as a basis for requesting extension of protection. In the case of the United States, it is still the USPTO deciding alone if a trademark can be afforded protection there.