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USA vs. Europe

July 16, 2025

How to Obtain Trademark Protection in the US

In the United States, trademark protection can be obtained through common law rights or by registering the trademark with the United States Patent and Trademark Office (USPTO). While common law rights offer limited protection, federal registration with the USPTO provides stronger and broader legal protections.

Steps to Obtain Trademark Protection

1️. Choose a Distinctive Trademark

Select a trademark that is unique and distinctive.
Strong trademarks fall into the following categories:
- Fanciful: Made-up words (eg, Kodak, Xerox).
- Arbitration: Existing words with unrelated meanings (eg, Apple for computers).
- Suggestive: Indirectly describes the product or service (eg, Netflix).
Weaker trademarks include:
- Descriptive: Directly describes the product (eg, Cold and Creamy for ice cream). These can be harder to register unless they gain secondary meaning.
- Generic: Common terms (eg, “Laptop” for computers) cannot be trademarked.

2️. Conduct a Trademark Search

Before filing, conduct a comprehensive trademark search to ensure the mark is not already in use. This includes:

USPTO Trademark Electronic Search System (TESS): Search for similar or identical marks.
Common law search: Check business directories, domain names, and social media for unregistered marks.
Professional search services: Consider hiring a trademark attorney or search firm for thorough clearance.

3️. Determine the Filing Basis

You must choose one of the following filing bases:

“Use in Commerce” (§1(a)): If you are already using the mark in the US for goods or services.
“Intent to Use” (§1(b)): If you plan to use the mark in the future but haven't yet. You will need to file a Statement of Use (SOU) later, showing actual use.

4️. File a Trademark Application with the USPTO

You can file your trademark application online through the USPTO's Trademark Electronic Application System (TEAS).

TEAS Plus: Lower filing fee, but requires stricter compliance with USPTO guidelines.
TEAS Standard: Higher fee but allows more flexibility in the application.

Required Information:

Owner's information: Individual or company name and address.
Trademark description: A clear description of the mark (including colors, design elements, etc.).
Goods and services classification: Identify the class under the Nice classification system.
Specimen of use: For “Use in Commerce” applications, provide evidence of the mark being used (eg, product packaging, website screenshot).
Filing fee: Typically $250–$350 per class of goods or services.

5️. USPTO Examination Process

The USPTO reviews the application to ensure it meets all requirements.
If there are issues, the examiner may issue an issue Office Action, outlining objections or refusals (eg, likelihood of confusion with existing marks).
You must respond to Office Actions within 3 months (extendable by 3 additional months for a fee).

6️. Publication and Opposition

If the USPTO approves the mark, it is published in the Official Gazette.
During the 30-day opposition period, third parties can challenge the registration if they believe it conflicts with their rights.
If no opposition is filed, or the opposition fails, the trademark proceeds to registration.

7️. Trademark Registration

Once approved:
- Use-based applications: The USPTO registers the mark.
- Intent-to-use applications: You must file a Statement of Use to show the mark in commerce before receiving registration.
Registration provides:
- Nationwide protection and public notice of ownership.
- The right to use the ® symbol.
- Legal presumption of ownership and validity.

Maintaining Your Trademark

To keep your trademark active:

First renewal: File a Declaration of Use (§8) between the 5th and 6th year of registration.
Subsequent renewals: File a combined Declaration of Use and Application for Renewal (§8 and §9) every 10 years.
Monitor and enforce: Regularly check for infringing marks and enforce your rights through cease-and-desist letters or legal action.