How does a trademark qualify for federal registration?

To register a trademark with the PTO, the mark’s owner first must put it into use “in commerce that Congress may regulate.” This means the mark must be used on a product or service that crosses state, national or territorial lines or that affects commerce crossing such lines – for example, a catalog business or a restaurant or motel that caters to interstate or international customers. Even if the owner files an intent-to-use (ITU) trademark application (ITU applications are discussed in the previous set of questions), the mark will not actually be registered until it is used in commerce.

Once the PTO receives a trademark registration application, the office must answer the following questions:

Is the trademark the same as or similar to an existing mark used on similar or related goods or services?

  • Is the trademark on the list of prohibited or reserved names?
  • Is the trademark generic – that is, does the mark describe the product itself rather than its source?
  • Is the trademark too descriptive (not distinctive enough) to qualify for protection?

If the answer to each question is “no,” the trademark is eligible for registration and the PTO will continue to process the application.

I know the PTO won’t register a trademark if it’s not distinctive or already in use. But are there other types of marks that are ineligible for federal registration?

Yes. The PTO won’t register any marks that contain:

  • names of living persons without their consent
  • the U.S. flag
  • other federal and local governmental insignias
  • the name or likeness of a deceased U.S. President without his widow’s consent
  • words or symbols that disparage living or deceased persons, institutions, beliefs or national symbols, or
  • marks that are judged immoral, deceptive or scandalous

As a general rule the PTO takes a liberal view of the terms immoral and scandalous and will rarely refuse to register a mark on those grounds.

If the PTO decides that a mark is eligible for federal registration, what happens next?

Next, the PTO publishes the trademark in the Official Gazette (a publication of the U.S. Patent and Trademark Office). The Gazette states that the mark is a candidate for registration; this provides existing trademark owners with an opportunity to object to the registration. If someone objects, the PTO will schedule a hearing to resolve the dispute.

Is it possible to federally register a trademark made up of common or ordinary words?

Yes, if the combination of the words is distinctive. But even if the entire mark is judged to lack sufficient distinctiveness, it can be placed on a list called the supplemental register whereas marks that are considered distinctive (either inherently or because they have become well known) are placed on a list called the principal register. Marks on the supplemental register receive far less protection than do those on the principal register. The benefits granted by each type of registration are discussed in more detail in the next question.

What are the benefits of federal trademark registration?

It depends on which register carries the mark. Probably the most important benefit of placing a mark on the principal register is that anybody who later initiates use of the same or a confusingly similar trademark may be presumed by the courts to be a “willful infringer” and therefore liable for large money damages.

Placing a trademark on the supplemental register produces significantly fewer benefits, but still provides notice of ownership. This notice makes it far less likely that someone will use that identical mark; the fear of being sued for damages should keep potential infringers away. Also, if the trademark remains on the supplemental register for five years – meaning that the registration isn’t canceled for some reason – and the mark remains in use during that time, it may be moved to the principal register under the secondary meaning rule (secondary meaning will be presumed).

Even if a mark is not registered, it is still possible for the owner to sue the infringer under a federal statute which forbids use of a “false designation of origin” (Title 15 U.S.C. Section 1125). It is usually much easier to prove the case and collection large damages, however, if the mark has been registered.

How long does federal trademark registration last?

Once a trademark or service mark is placed on the principal register, the owner receives a certificate of registration good for an initial term of ten years. The registration may lapse before the ten year period expires, however, unless the owner files a form within six years of the registration date (called the Sections 8 and 15 Affidavit) stating that the mark is either still in use in commerce or that the mark is not in use for legitimate reasons.

The original registration may be renewed indefinitely for additional ten-year periods if the owner files the required renewal applications (called a Section 9 Affidavit) with the U.S. Patent and Trademark Office. Failure to renew a registration does not void all rights to the mark, but if the owner fails to re-register, the special benefits of federal registration will be lost.

What happens if there is a conflict between an Internet domain name and an existing trademark?

To establish a website, the owner must first register the site name with a domain name registry, such as As a general rule, you can register any name that isn’t already registered, without regard to whether the name is in fact a trademark owned by a different company. This has led to a number of instances where companies with famous marks have initially not been able to use these marks when establishing websites because someone already used the name to identify another site.

Courts have generally sided with the trademark owners in these disputes and ordered the domain name user to stop using the offending name, even when no goods or services were being offered on the website.

See also…

Copyright, Trademark, Patent

Intellectual Property and Internet Law

International Law Issues