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Introduction
Trademarks are considered intellectual property. They assist consumers in determining the origin of goods and services. If your mark has been used in commerce and you want to establish exclusive rights to that mark across the country, you can register it with the United States Patent and Trademark Office (USPTO). To receive federal trademark registration , you must meet the following requirements:
If you own a business, you can apply for a trademark. If you are an individual, a group of people conducting business together, or an organisation (such as a non-profit or charity), that is also acceptable.
Apply for a trademark
The definition of “person” under the Trademark Act answers the question of who can apply for a trademark to some extent. A person can be an individual, a business owner, a group of persons doing business together, or a combination of these. As an example:
Lana owns and maintains Cake Cottage, a bakery. Because she is an individual conducting business as Cake Cottage, she can seek a trademark on her name and logo. Lana has filed for bankruptcy protection from creditors (Chapter 7). She will be able to continue running her bakery until she receives notice that her release will be effective (determined by court order). If this occurs before she applies for trademarks on Cake Cottage’s name and logos, only Lana—not the new owner of Cake Cottage—will have rights under those marks after discharge; however, if it occurs after she applies but before certificates are issued, both respondents (Lana and whoever purchases Cake Cottage) will have rights under those marks upon issuance.
A person or legal body who is legally competent of possessing property is required.
You must be a person or legal entity with the legal capacity to own property. You cannot, for example, register a trademark on behalf of your pet or favourite sports team. All applicants must be natural persons (i.e., human beings) or corporations, partnerships, and limited liability companies formed in good faith with names that are not clearly false for registration reasons.
Individuals, partnerships, corporations, unions, associations, and other organisations must be allowed to sue and be sued in court.
You must be an individual, partnership, company, union, association, or other organisation capable of suing and being sued in court to register a trademark.
In addition to being a legal entity (a person or collection of persons), you must also be an organisation with the competence to sue and/or be sued in court. This means that if you are a sole proprietorship or partnership and your business is not incorporated into a corporation so that it has separate legal existence from its owners—you will be unable to register your trademark because there is no such thing as a “sole proprietorship” or “partnership” in the world of trademarks.
If filing as a partnership, at least one member of the partnership must be a US citizen or have a genuine and effective commercial residence in the US.
You can form a partnership by forming a business with one or more other individuals or entities and sharing earnings. When two or more people agree to work together in a business and split the earnings, they create a partnership. Individuals, companies, partnerships, and other unincorporated entities can be partners, as can nearly any legal entity that can sign contracts and hold property.
A partnership must have at least one general partner who controls the enterprise’s activities and makes management decisions on its behalf. Limited partners do not run their enterprises; instead, they outsource this task to another partner or an employee (who is called a general manager).
Only if you are the rightful owner of a trademark may you file for federal trademark registration. If it is owned by someone else, that individual must follow a written assignment. If more than one party or entity uses the mark, each must apply separately and pay an extra cost for each distinct application.
If you do not own the mark but want to protect your business in another way, such as a state trademark or unfair competition case, you may still have options without filing for federal registration.
To register a trademark with the USPTO, there must be no chance of confusion with another registered mark already on record. This means that any existing trademarks that are sufficiently similar to your desired registration could potentially prohibit it from being granted (resulting in denial).
Before submitting your trademark application , check the USPTO’s trademark databases to ensure that your intended mark is not already registered or pending. You can do so by going to the USPTO’s Trademark Electronic Search System (TESS). This will help to avoid any delays in registering your mark.
When conducting a search, you may wish to filter it down by include only marks with specific features (e.g., words only), trade channels (retail only), industries (food/beverage), and so on.
If you file an application based on “use in commerce,” you must include dates of first use and first use in commerce, as well as real specimens demonstrating how the mark is used in commerce. More information on this procedure can be found here.
Filing a trademark application does not ensure success.
Don’t be concerned if you are unable to produce a mark that meets all of the conditions. If the USPTO decides that your mark is not unique or is confusing with another registered mark, it may reject your application. If this occurs, you have six months to reply by submitting a modification or requesting a time extension (also known as an “RCE”).
Finally, the USPTO permits anyone to apply for trademark. Before registering a trademark with the USPTO, the applicant must be able to demonstrate that they are the rightful owner of the mark and have been using it in commerce. If you are unsure whether your company qualifies for an application, you should consult with an expert attorney.
