By Michael Kondoudis, Small Business Trademark Lawyer
This is our EASY guide to the trademark requirements.
Trademarks are the foundation of every successful brand. Knowing how to protect them with federal trademark registrations is essential.
If you need to know the requirements for trademark protection, then this guide is for you.
Let’s get started!
CONTENTS
I. TRADEMARK REQUIREMENTS DEFINED
Trademark requirements are the criteria that must meet to be eligible for trademark protection. These trademark requirements dictate whether a trademark is eligible for trademark protection. The U.S. Patent and Trademark Office (USPTO) uses trademark requirements to determine whether to approve or reject a trademark application. When you satisfy the trademark requirements, the USPTO will grant you a federally registered trademark. Trademark requirements come from Federal Trademark Statute.
II. THE FOUR REQUIREMENTS FOR ALL TRADEMARKS
There are four main trademark requirements.
First, your mark cannot conflict with any other trademark because of confusing similarity. Second, your mark must be distinctive. Third, you must use your mark in commerce. Fourth, your mark must be a source identifier for your products or services. So, getting your Federal trademark comes down to meeting the same four trademark requirements:
Here is what all this means for you and your brand.
Trademark Requirement #1 – No Conflicts
The first of the four trademark requirements is to show that a trademark does not conflict with existing registrations or pending applications. Your trademark cannot conflict with any other Federal trademarks. The U.S. Patent and Trademark Office (or “USPTO” for short) says that this is the most common reason to refuse registration. This is the most important of the requirements for a trademark.
After your application is filed, the USPTO searches the Federal trademark database to look for conflicts between your mark and any other Federal trademarks. When there is a conflict, the USPTO will reject your application.
This search extends to other Federal trademarks that are close enough that confusion is “likely.” The USPTO bases this decision on (1) similarity between the marks in appearance, sound, or meaning, (2) similarity between the goods/services, and (3) how those goods/services are purchased.
Arguments that you disagree, without much more, will not change an Examiner’s mind.
You’ll need to apply the same multi-faceted 12-factor analysis the Examiner is using. This is where a trademark lawyer comes in. A trademark lawyer is far more likely than you to do this effectively.
Trademark Requirement 2 – Trademark Distinctiveness
The second of the four trademark requirements is to show that the trademark is “distinctive.” In a trademark sense, distinctiveness is a measure of how well a mark identifies the source of a product. The more distinctive your mark, the stronger it will be, and the easier it will be to register. That makes distinctiveness an important one of the requirements for a trademark.
To be considered distinctive, a trademark must be either inherently distinctive or have acquired distinctiveness through use. Inherently distinctive trademarks are those that are not descriptive and are not similar to other marks in the same field. Acquired distinctiveness is when a mark has become distinctive through prolonged and exclusive use in commerce.
How The U.S. Patent and Trademark Office Measures Distinctiveness
The USPTO measures trademark distinctiveness on a spectrum and in view of the goods and/or services you list in an application.
The Strongest Trademarks are “Fanciful”
The strongest and most distinctive marks are “fanciful.” Fanciful marks are invented words with no dictionary like KODAK, PEPSI, and EXXON.
Fanciful = distinctive
“Arbitrary” Trademarks are Strong
The next strongest and very distinctive marks are “arbitrary.” Arbitrary marks are words with dictionary meanings that have no association/relationship with the goods/services of an application. APPLE for computers is an example of an arbitrary mark.
Arbitrary = Distinctive
Suggestive Trademarks are “Protectable”
Next on the distinctiveness continuum are “suggestive” marks. Suggestive marks require a mental step – imagination, thought, or perception – to reach a conclusion as to the nature of those goods or services of an application. CITIBANK for financial services, GREYHOUND for bus lines, and JAGUAR for automobiles are examples of suggestive marks.
Suggestive = Distinctive
“Descriptive” Trademarks are Weak
The least distinctive marks are “descriptive” trademarks. Descriptive marks immediately convey an ingredient, quality, or characteristic of the goods or services of the application. No mental step is required. For example, the mark CREAMY would be merely descriptive for yogurt.
To register a descriptive trademark, you need to show that it as acquired some “secondary meaning” with buyers through extensive use over several years.
Descriptive + Secondary Meaning = Acquired Distinctiveness
In the end, there are four categories of trademarks: generic, descriptive, suggestive, and arbitrary or fanciful. Generic marks are those that describe the goods or services they are used on and cannot be registered. Descriptive marks are those that describe a feature or quality of the goods or services they are used on. Suggestive marks are those that suggest a quality or feature of the goods or services they are used on. Arbitrary or fanciful marks are those that have no relationship to the goods or services they are used on.
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Trademark Requirement #3 – Use in Commerce
The third of the four trademark requirements is use. Trademark rights are based on commercial use. So, it should be no surprise that another of the trademark requirements is to show that a trademark is actually used in commerce. This requirement for a trademark can often be difficult to show.
The USPTO will let you apply before you begin use, but you will still need to show that you are using your mark to complete the process.
The use must be of a type that the U.S. Congress can regulate. This means use with a good or service that crosses State, national, or territorial lines, or that affects commerce crossing such lines (e.g., an Internet business) or that caters to interstate or international customers.
Trademark Requirement #4 – An Identifier of Source
The fourth trademark requirement is that a mark is capability of identifying the source of a product or service. Not every word, name, symbol, or device adopted as a trademark is registrable. Some marks are simply not capable of distinguishing and identifying the source of a product. Others are precluded by Federal law. The following are a few examples:
Ornamentation: The USPTO will refuse registration of the applied-for mark when it is a feature or part of the “dress” of the goods. Such matter does not serve the trademark function of identifying the source of a product.
Deceptive: Marks containing a term that misdescribes the character, quality, function, composition, or use of a product will be refused registration. It is not impermissible for a mark to be technically misdescriptive so long as prospective consumers would not be likely to believe that the misdescription is true. For example, the mark BLACK FLEECE for clothing items would be deceptive while the same mark for cheese would not.
Protected by statute: Federal law reserves the use of certain particular national and international organizations such as Boy Scouts of America and Peace Corps. Also reserved are names, symbols, seals, and medals adopted by the United States Federal government, including agencies. For example, SECRET SERVICE, COAST GUARD, and SMOKEY BEAR are all reserved by the Federal government.
Generic terms: Any term that identifies a type of product instead of the source is not registrable. Aspirin, Jetski, Bubblewrap, and Jacuzzi are examples of generic terms. A generic term can never distinguish a brand because consumers use it to refer to a category of goods/services.
Remember, to register a trademark, a trademark distinguishes a product from the competition. Only devices (names, logos, colors, catchphrases) that consumers recognize as a brand are protectable trademarks. This is the last of the four requirements for a trademark.
III. TRADEMARK PROTECTION REQUIREMENTS
A trademark is only eligible for trademark protection when specific trademark requirements are met. There are two trademark requirements, and you must meet them to qualify for trademark protection. There are two basic requirements for trademark protection:
(1) the mark must be distinctive
(2) the mark must be in use
Trademark Protection Requirement #1 – Distinctiveness
The first requirement, distinctiveness, means that the mark must be distinctive enough that consumers associate it with a particular source of goods or services. This requirement focuses on a trademark’s ability to communicate that specific goods emanate from one producer or source, not another. There are four categories of distinctiveness:
- Arbitrary
- Fanciful
- Suggestive
- Descriptive
Trademark Protection Requirement #2 – Use
The second requirement, use in commerce, means that the mark must be used in connection with goods or services. This requirement arises because trademark law is constitutionally grounded in the congressional power to regulate interstate commerce.
IV. REQUIREMENTS FOR TRADEMARK APPLICATIONS
There are six basic requirements for filing a trademark (or service mark) with the U.S. Patent and Trademark Office (USPTO):
1. The application must be filed in the name of the actual owner of the trademark.
A trademark owner is the individual or entity that applies the mark to goods they produce or uses the mark in the advertising or rendering of services they perform. The owner can be an individual or an LLC, corporation, or partnership. The application must specify whether the applicant is a person or a business formation (e.g., LLC, corporation, partnership, or trust).
2. The application must specify the applicant’s citizenship (if the application is a person) or the applicant’s state for formation (if the applicant is an LLC, corporation, or partnership).
The USPTO does not require that individuals have U.S. citizenship, but it requires that every applicant must state their citizenship.
3. The applicant must state whether the application on (a) actual use of the trademark in commerce, (b) an intent to use the trademark in commerce in the future, or (c) a foreign trademark.
The USPTO will require a good faith statement of your intent to use the trademark in the future, and the intent must be real.
4. The applicant must list the products and services being sold under the trademark (for applications based on actual use) or will be sold under the trademark (for applications based on intent to use).
For applications based on the actual use of the trademark, the applicant must list the products actually being sold under the trademark or the services that are actually being rendered under the trademark.
For applications based on an intent to use the trademark in the future, the applicant must list the products that will be sold under the trademark or the services that will be rendered under the trademark.
5. The applicant must provide a drawing of the trademark.
A drawing is a depiction of the trademark. For applications based on actual use, the drawing must show the trademark as it is actually used. For applications based on an intent to use a trademark in the future, the drawing must show the mark as the applicant intends to use it.
The USPTO will generate the required drawing if the trademark consists of plain letters and/or words. The applicant must submit the drawing if the trademark is a logo or consists of stylized letters, colors, or design elements.
6. Payment of the appropriate filing fee for the application.
You must submit the appropriate filing fee for your application. The USPTO charges a filing fee for every trademark application. The USPTO charges a fee for each class of products and/or services listed in the application. So, the total required filing fee for any trademark application depends on the number of classes of products and/or services listed in it.
V. REQUIREMENTS FOR TRADEMARK REGISTRATION
If you want to register your name, logo, design, or slogan with the U.S. Patent and Trademark Office (USPTO), you must file a trademark application that meets specific trademark requirements. There are six basic requirements. The six basic requirements for trademark registration are:
- Identify the trademark owner
- Specify whether the trademark owner is a business or person
- State whether the trademark is in use or there is a real intent to use
- Provide a drawing of the trademark
- List the products and/or services sold under the trademark
- The trademark must be distinctive
® Legally Own Your Trademark!
Trademark Registration Requirement #1 – Owner Name
Trademark applications must state the name of the owner. The trademark owner is the entity responsible for the quality of the goods or services sold with that trademark. The owner can be an individual, a partnership, a corporation, an LLC, or an association.
Warning: The owner of the application must be correctly identified by name. Any failure to accurately identify the correct entity that owns the trademark will jeopardize an application. So, it is critical that the owner is correctly identified within the application.
Trademark Registration Requirement #2 – Owner Type
Trademark applications must indicate whether the owner is a person, an LLC, a corporation, or an association. If the owner is a person, an indication of citizenship is required. If the owner is a business formation (e.g., LLC, corporation), the state of formation is required.
Trademark Registration Requirement #3 – Trademark Use
Trademark applications must indicate whether the trademark is in use, or the applicant has a real intent to use the mark.
For applications based on use, the application should list the products and/or services branded by the trademark.
For applications based on a real intent to use, the application should list the products and services that will be branded by the trademark in the future.
Trademark Registration Requirement #4 – Drawing
Trademark applications require a drawing that depicts the trademark you seek to register. The USPTO will generate a drawing for you if your application is just a word, name, phrase, or slogan. If your trademark is a character, symbol, design, or logo, you must submit a drawing of the trademark.
Trademark Registration Requirement #5 – List of Products/Services
Trademark applications must include a list of the products and/or services sold or to be sold under the trademark.
Trademark Registration Requirement #6 – Distinctiveness
The U.S. Patent and Trademark Office only registers distinctive trademarks. This means that consumers associate them with a particular source of certain goods or services. This requirement focuses on a trademark’s ability to reduce confusion in the marketplace.
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For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).