Trademark Registration (Apply for a Trademark)

General Information

Any person or business that uses or controls the use of a unique word, name, symbol, or device may apply for a trademark registration. If registration is issued, the holder gains exclusive rights to identify their goods and/or services using their trademark and can prevent the registration of similar marks that may cause consumer confusion. Please see the separate article, “What is a Trademark or Servicemark?” for a basic overview of trademark features and items that may serve as a trademark.

Purpose/Necessity

Legal Reasons
When a word, phrase, logo, etc. is used to designate the source of goods or services, a limited set of rights attach automatically by virtue of that use alone. These rights, known as “common law” rights, afford the holder exclusive use of the trademark on the specific type of goods or services affiliated with the mark in the exact geographical area where offered.

Registration provides four key legal advantages over common law rights:

    1. Expanded Rights

Common law trademark rights are limited to the manner in which the mark is used. The law favors some level of default trademark protection as a means to prevent consumer confusion but it does not wish to provide an unfair advantage. Competitors in close but different locales offering slightly different goods or services may be unaware of unregistered marks when forming and developing their own brand. It would not be fair to force them to change their mark or be subject to infringement penalties for good faith adoption of what they thought was a unique mark.

Registration, however, provides a rationale for expanded rights. For going to the trouble of registering, a federal registration provides nationwide rights to use a mark or its “confusingly similar” alternatives on specified or related goods or services. This is critical today because many businesses have an online presence and offer their goods or services to nationwide audience. Federal registration ensures the right to market one’s brand on the internet amongst countless potential competitors. A statewide registration provides the same scope of rights but throughout the relevant state.

Example: if a first user of a particular mark holds only common law rights and a later user of the same or a similar mark obtains federal registration, the later user gains nationwide rights minus the first user’s specific territory. See In re Beatrice Foods Co., 429 F.2d 466 (C.C.P.A. 1970).

    1. Prevent Competitors from Registering Similar Mark

As of the date the application is filed, the applicant will have priority over any later registration attempt by someone else. If registration issues, the USPTO will reject applications for “confusingly similar” marks. Application also provides the applicant with the presumption that he or she has used the mark in connection with the goods or services specified in the registration before any other person. 15 USC 1057(c). Competitors holding only common law rights would face a difficult and costly burden to prove earlier first use.

    1. Notice of Claim to Mark

Soon after applying for a federal mark, its listing appears in the federal trademark database. Those considering adopting their own mark will be able to see the listing and will be deterred from using or seeking to register a similar mark.

Entry into the trademark database also provides “constructive notice” to the public of the registrant’s claim of ownership of the mark. 15 USC 1072. This means that even if a later user did not search for or find the previously filed mark, the later user will be treated as if he or she was aware of its existence. Because of this, the later user may be considered a “willful infringer” and may be held liable for large money damages in an infringement suit.

    1. Ease of Enforcement

Registration makes it far easier to prove the existence and scope of one’s trademark rights. Registration immediately creates a legal presumption of the registrant’s ownership of the mark and his or her exclusive right to use the mark nationwide on or in connection with the goods or services covered by the registration. 15 USC 1115(a). A registrant usually needs only to point to the details of the registration to stop an infringer’s wrongful use. A federal registration may become “incontestable”, expanding its rights even further. 15 USC 1065.

If a later user does not comply with requests to cease use of a registered mark, litigation may become necessary. Normally, an action may be brought in federal court only if damages are at least $75,000 or the parties are from different states. 28 USC 1332(a). However, if the mark receives federal registration, an infringement action may be brought in federal court regardless of the amount of damages or states of residence. 15 USC 1121. A plaintiff may recover defendant’s profits, up to three times plaintiff’s actual damages, attorney’s fees, and court costs. 15 USC 1117(a). Registration is also a prerequisite to bringing an infringement action in Kentucky. KRS 365.601.

Practical Reasons
Trademark protection is at the heart of building a brand. Registering a trademark is one of the most basic steps a business can take to show its distinctiveness. A registered trademark demonstrates that the business took action to separate itself from competitors and is a sign of professionalism. The benefits of registration far outweigh the costs in the long run.

A business that works hard to maintain quality and develop consumer goodwill should be entitled to prevent competitors from offering inferior goods or services distributed under the same or a similar name. Such a business would naturally want to prevent others from profiting from its good reputation. Trademark rights connect source with product so that the source may be recognized and competitors distinguished. By providing a means for consumers to connect goods or services to a specific source, brand integrity is retained.

Federal and Kentucky Trademark Comparison Chart

Federal

Kentucky

Registration Process

   •Use Requirement

A mark holder may file for registration based on “Use in Commerce” or under an “Intent to Use” the mark. 15 USC 1051. However, a mark will not issue until the applicant proves actual and current use through the filing of an Allegation of Use.

The mark must be in use prior to applying for registration. KRS 365.571(1). No reservation or intent to use option. There is no minimum time period which constitutes use.

   •Application Fee

$275 per class, TEAS Plus application. 37 CFR 2.6(a)(1)(iii).

$10 per class. KRS 365.593.

   •Length of Review

Officially, almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. USPTO Trademarks FAQ. Review period is greatly reduced if problems with the application are eliminated prior to filing.
Unofficially, shorter. Usually about 8 months.

Officially, 5 – 10 business days.Kentucky Secretary of State Trademarks FAQ.
Unofficially, longer. Usually between a month and two months.

Rights Secured

Nationwide rights/protection of the same or similar mark on identical or related goods or services

Statewide rights/protection of the same or similar mark on identical or related goods or services

Term of Effectiveness

10 years. 15 USC 1058(a).

5 years. KRS 365.581(1).

Frequently Asked Questions

  • What constitutes having a mark “in use”?
    • A trademark or servicemark may only be issued upon proof that the mark is in actual and current use in trade/commerce. The USPTO determines use on goods if the mark appears on the goods, the container for the goods, or displays associated with the goods, AND the goods are sold or transported in commerce. Similarly, use on services exists if the mark is used or displayed in the sale or advertising of the services AND the services are rendered in commerce. USPTO Glossary. Kentucky adopts essentially the same criteria but bases its determination on use in Kentucky. See KRS 365.563(8)(a).A trademark applicant must submit a sworn statement as to use, the dates of first use, and submit a specimen of the mark on a good or an advertisement for a service to prove such use.
  • May I reserve a trademark before placing it “in use”?
    • A federal trademark may be reserved through the filing of an Intent to Use application. But before the mark may register, the applicant will have to use the mark in commerce and file an Allegation of Use which provides an oath that the mark has been placed in use.Because of the additional filing requirements, accompanying legal fees, and USPTO filing fees, it is usually better to place a mark in commerce before filing for a federal trademark registration. However, for those mark holders who wish to secure rights immediately, the Intent to Use option may be preferred.Kentucky law requires that a mark be in use prior to applying for registration. KRS 365.571(1).
  • When I apply for a trademark, won’t that reveal my mark to others who might then copy my mark? How can I be assured my idea will be kept confidential?
    • This is a valid consideration but misunderstands the purpose of trademark rights. Holders of registered trademarks may prevent infringing uses of the same or a similar mark on the same or a similar set of goods or services. Upon making actual use the mark in interstate commerce (e.g., across any state lines), an applicant may receive a federal registration that will provide such nationwide rights.While these rights officially attach on the date of registration, the filing date is used to assess priority among applications, meaning later applications for the same or a similar mark will be blocked as of the filing date. By not applying for registration, you give others the opportunity to secure superior rights to the same mark. So in fact, a trademark registration is the best thing you can do to secure your rights to such an idea, rather than lose such rights by making them publically available.If you use our firm to complete your trademark application, we will keep all your information strictly confidential. All client data submitted through this website is sent via a secure SSL connection so it will not be intercepted. Upon receipt of your information, we will work with you to obtain a filing date as soon as possible to give you priority of rights over later filers.
  • May I apply for multiple trademarks/servicemarks?
    • Yes, though each mark would require a separate application. It is common for a business to obtain multiple marks, such as for the business logo and advertising slogan(s).Within a single application, an applicant may apply for registration in multiple classes. Marks must be registered within one or more classes of goods and/or services, which should be thought of as a broad category comprising related items (as an example, all clothing, footwear, and headgear fall under a single class). When a mark is registered in a certain category or categories, it does not affect similar marks in other categories. That is why “Ford” may be used by different companies selling automobiles and representing models. The application fee is due per class.
  • How important are spelling and punctuation? Must I submit separate applications if I wish to register marks with slightly varied spellings and/or punctuations?
    • An applicant should submit the desired mark using the precise spelling and punctuation as he or she would like it registered. For federal marks, this is how the mark will be appear on the TESS Database online search, the Trademark Official Gazette, and on the Registration Certificate granted upon trademark issuance. For Kentucky marks, this is how the mark will appear on the Secretary of State database search and on the Certificate of Registration granted upon trademark issuance.As a practical matter, however, spelling and punctuation should not have an effect on the rights gained when a trademark is registered. This is because rights are awarded to the precise mark registered and those that would be considered “confusingly similar.” Such registration would block later attempts by another to register a very similar mark in the same class of goods or services. Thus, a person who registers a particular trademark would not have to submit a separate application for a very similar mark using slightly varied spelling and/or punctuation because that person would gain rights to such a variation through the first registration.
  • Should I register my mark as a Word Mark or a Design Mark? Which will provide me more rights?
    • A word mark uses ONLY standard characters, which include words, letters, numbers, common punctuation marks, or any combination thereof. A design mark includes any stylized characters, color, or picture. A mark that includes both types of features is a design mark since the inclusion of any design element mandates registration as a design mark.Even if a person or business uses a mark that includes a special image or color, it is possible to register the mark as a word mark only. A registered word mark may offer broader rights because it prevents others from registering a “confusingly similar” mark in any way that it is written or depicted. However, by registering a design mark, the registrant also gains rights to the appearance of the mark and should be able to prevent others from registering a mark that uses “confusingly similar” colors or design features, even if the words used are different.If registration of either a word mark or a design mark is sought, the applicant should base this decision on whether the words themselves or the words in combination with the logo/graphic are the most important feature of the mark. Many applicants do not choose between the two options and instead register both types of marks, giving them the broadest possible rights. However, this requires the submission of separate applications and application fees.
  • My mark is used on a variety of goods/services but registering in multiple classes seems expensive. Should I just register my mark in one main class?
    • If you complete this “partial” registration, you will not secure statutory trademark rights to those goods/services absent from the registration. Rights do not automatically attach across classes upon registration in one class. You will still have some modest “common law” rights to the goods/services not registered but probably could not prevent another person’s registration of a similar mark used for similar goods/services.Ultimately, the final decision on registration must be made by the mark holder. If you use our firm to complete your trademark registration, we do not charge an additional legal fee to search for, issue recommendations on, and apply for registration of multiple classes. Please see our About Our Firm’s Trademark Registration Service page for more information as to exactly what is provided.
  • Should I apply for federal or state trademark registration?
    • This decision should be made based on considerations of coverage area, speed at which registration is desired, and cost. See the above chart. Additionally it is possible that a particular registration may be prevented because another person has already secured rights to the desired mark. For instance, if someone has already registered the desired mark in Kentucky, Kentucky registration would not be possible. However, federal registration would be possible but would not secure rights in Kentucky.The availability of a particular mark will be revealed in the trademark database search. Upon consideration of the search results, one may make a determination as to whether applying for registration will be worthwhile.A federal trademark provides a larger area of protection but takes much longer to secure. A state trademark provides a smaller area of protection, but may be registered relatively quickly. Because trademark applicants generally want to secure their rights both broadly and as soon as possible, it is often best to go ahead with both registrations simultaneously. However, if your business has no connection to Kentucky, we obviously cannot proceed with that registration. By the same token, if your business is confined only to Kentucky, that registration alone may be sufficient.
  • I have an existing registration but would like to add goods/services to be covered under the trademark to expand my rights. How do I do this?
    • The process is almost identical to the application for an entirely new trademark. The goods and/or services may be added by submitting a new application and filing fee with the trademark office. Depending on what goods/services are added, the new registration may encompass multiple classes. The applicant will have to provide prior registration details to connect the former and current applications.If you use our firm to complete your trademark application, submit the required info to us for the desired service as listed below: Federal Trademark Application, Kentucky Trademark Application, or combination Federal and Kentucky Trademark Application. The info should pertain to the new goods/services to be added.
  • What is an Office Action?
    • An Office Action is a letter from a USPTO examining attorney that sets forth the legal status of a trademark application. USPTO: Trademarks – How to Respond. It sets forth an amendment or addition to the trademark application that must be made before trademark registration may be issued. There are five types of Office Actions which differ by the degree to which they require further action.If you use our firm to complete your trademark registration application, our response to routine Office Actions is included as part of our flat fee service. We submit an application designed to avoid Office Actions and subsequent delays but unfortunately sometimes these are inevitable. If a substantive Office Action is issued requiring a more elaborate response or an appeal to the Trademark Trial and Appeal Board, we will fill you in on the particulars to help obtain registration and any additional fee, if required.
  • Will my trademark be registered after applying?
    • Not necessarily. As stated by the USPTO, “The filing of a trademark application begins a legal proceeding having many legal requirements and strict time deadlines. Not all applied-for trademarks register, and filing fees are not refunded.” The same is true in Kentucky, where application/filing fees are nonrefundable according to the trademark statute. See KRS 365.613.Registration may be refused for a number of reasons including a likelihood of confusion with a previously registered or applied-for mark, the descriptive nature of the mark, or problems with the application and/or submitted attachments.If you use our firm for your trademark registration, we review your proposed mark and conduct a comprehensive trademark search BEFORE submitting the trademark application. We offer an attorney opinion letter as to the likelihood of registration that gives the client the opportunity to proceed with the application or abandon it before submitting the non-refundable filing fees. Please see our About Our Firm’s Trademark Registration Service page for more information as to exactly what is provided.

Legal Services Offered and Cost

Federal Trademark Application
Legal fees: $500 flat fee
Filing fees and other costs: $225 per class. 37 CFR 2.6(a)(1)(iii)
This includes:

  1. Review of client’s information to confirm ownership, use, and ability of mark to function as a trademark
  2. Comprehensive federal, state, and common law trademark search to determine whether mark is distinguishable from existing marks or if a likelihood of confusion exists
  3. Email client results of search and offer legal opinion as to whether trademark registration is recommended
  4. Answer client questions, make corrections, and obtain additional information as needed
  5. Completion and filing of federal trademark application and appropriate filing fees with the USPTO
  6. Tracking of the trademark application and keeping client informed regarding its status
  7. Responding to questions and routine Office Actions from the trademark office
  8. Email confirmation of registration and mailing of Certificate of Registration upon receipt from the USPTO

If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.

 

Kentucky Trademark Application
Legal fees: $200 flat fee
Filing fees and other costs: $10 per class. KRS 365.593

This includes:

  1. Review of client’s information to confirm ownership, use, and ability of mark to function as a trademark
  2. Comprehensive federal, state, and common law trademark search to determine whether mark is distinguishable from existing marks or if a likelihood of confusion exists
  3. Email client results of search and offer legal opinion as to whether trademark registration is recommended
  4. Answer client questions, make corrections, and obtain additional information as needed
  5. Completion and filing of Kentucky trademark application and appropriate filing fees with the Kentucky Secretary of State
  6. Tracking of the trademark application and keeping client informed regarding its status
  7. Responding to questions and routine Office Actions from the trademark office
  8. Email confirmation of registration and mailing of Certificate of Registration upon receipt from the Kentucky Secretary of State

If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.

 

Federal and Kentucky Trademark Application
Legal fees: $700 flat fee
Filing fees and other costs: $225 per class, federal. 37 CFR 2.6(a)(1)(iii). $10 per class, Kentucky. KRS 365.593.

This includes:

  1. Review of client’s information to confirm ownership, use, and ability of mark to function as a trademark
  2. Comprehensive federal, state, and common law trademark search to determine whether mark is distinguishable from existing marks or if a likelihood of confusion exists
  3. Email client results of search and offer legal opinion as to whether trademark registration is recommended
  4. Answer client questions, make corrections, and obtain additional information as needed
  5. Completion and filing of federal and Kentucky trademark application and appropriate filing fees with the USPTO and Kentucky Secretary of State
  6. Tracking of the trademark application and keeping client informed regarding its status
  7. Responding to questions and routine Office Actions from the trademark office
  8. Email confirmation of registration and mailing of Certificates of Registration upon receipt from the USPTO and Kentucky Secretary of State

If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.