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. 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. 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. 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. 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	$250 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

Legal Services Offered and Cost