This article is written by Upasana Sarkar, a student at Jogesh Chandra Chaudhuri Law College. This article deals with the trademark laws of the United States. It provides a detailed understanding and analysis of the formalities related to trademark protection in the U.S.

It has been published by Rachit Garg.


Trademarks are an important form of intellectual property, and their protection is governed by a variety of laws and regulations. A trademark is a set of legal rules and regulations that protect the trademark rights of a person. In the US, there are specific formalities that must be followed to ensure that trademarks are properly adopted and used, registered with the US Patent and Trademark Office (USPTO), and maintained over time. Understanding these formalities is key to successfully protecting a trademark in the US. If one follows all the formalities and registers, then his mark will be protected from any kind of infringement. In this blog post, we’ll be exploring these formalities and how to best navigate them.

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A trademark is a type of intellectual property that is used to distinguish the source or origin of goods or services. In the US, trademarks are protected under both federal and state law, and the USPTO is responsible for registering trademarks and enforcing their protection. The inventor of that trademark will be given all the rights in relation to manufacture and usage of the products under that particular mark. 

Trademark protection in the US is based on the concept of “first to use,” which means that the first person to use a trademark in commerce in a particular geographic area has the exclusive right to use that trademark in that geographic area. The priority rights of these first-time trademark applicants are subjected to some restrictions that are discussed in this article. The USPTO does not examine applications for trademark registration to determine who was the first to use the trademark. Rather, the USPTO relies on the trademark owner to make this determination and to be able to prove it if necessary.

In order to protect a trademark in the US, the owner must adopt and use the trademark, register it with the USPTO, and maintain it over time. It can be renewed after its expiration. This blog post will explore these steps in more detail.

Adoption and use of TM

The first step in protecting a trademark in the US is to adopt and use the trademark. The trademark rights in the United States can be categorized into three levels, i.e., state, federal, and common law. This means that the owner must begin using the trademark in commerce in the US and must be able to prove that they were the first to use it in order to have priority over other potential users of the same or a similar trademark. 

In order for a trademark to be considered in use, it must be used in a “sufficiently public” manner. The owner of the trademark must keep in mind that his trademark is in continuous use so that the public is well aware of the mark. This means that the trademark must be used in a manner that would make it recognizable to the public. The trademark must also be affixed to the goods or services in some way. If it is not used in either place, then it would lead to abandonment of the trademark, and the holder of the trademark would initially lose all his trademark rights. Then he will be unable to safeguard his trademark from any kind of infringement by other parties.

Finally, the trademark must be used in a manner that does not violate the Eleventh Amendment of the US Constitution, which states that the federal government cannot regulate the internal affairs of a state. This means that the trademark must be used in a manner that does not interfere with state laws or court orders. The Eleventh Amendment places a restriction on the jurisdiction granted to federal courts.

Eleventh Amendment concerns

The Eleventh Amendment of the United States, which was passed in 1795, places a restriction on the jurisdiction granted to federal courts under Article III of the U.S. Constitution. This amendment restricts or prevents the federal courts from hearing those types of cases that are against the governments of the states. The Supreme Court of the United States interpreted that the state courts cannot hear any cases that are against state governments and involve federal law. It established the principle of state sovereign immunity. The states under this amendment are immune from lawsuits brought by other states or foreign countries. The limitation of state liability in federal courts incorporated in the amendments appears to be a plain and simple modification of the federal state structure brought about by jurisprudence, but knowing the implications of this incorporation continues to generate controversy and heated dispute.

In the case of Cohens v. Virginia (1821), the defendants were accused of selling lottery tickets, which violated the laws of the plaintiff’s state as it was prohibited in the state of Virginia. However, it was authorized by Congress in the District of Columbia, from where the lottery tickets were legally bought. Chief Justice Marshall was of the opinion that pursuing an erroneous judgment to reconsider a state court judgment that allegedly violates the U.S. laws or Constitution is not to initiate or pursue a lawsuit against the state, in spite of the fact that it was only a continuation of the state-initiated lawsuit. However, according to the Chief Justice, the adoption of the Eleventh Amendment is not to oppose state lawsuits as such, but to address a legitimate concern that creditors might seek payment in federal courts. He argued that the Eleventh Amendment does not bar proceedings against states with federal subject jurisdiction and does not, in any case, bar actions against states by their own citizens.

Lanham Act Registration

Once the trademark is adopted and used, the next step is to register it with the USPTO. The process of registering a trademark is governed by the Lanham Act, which is a federal law that outlines the requirements for registering a trademark. The USPTO acts as a federal agency that gives direction for the proper administration and regulation of trademarks under the Lanham Act in the federal trademark register.

The first step in the registration process is to file a trademark application with the USPTO. There are two types of applications: use applications and intent-to-use (ITU) applications. Use applications are for trademarks that are already in use, while ITU applications are for trademarks that the applicant intends to use in the future. Use-based applications should be made in good faith in the ordinary course of business and not solely to retain trademark rights. ITU is a kind of trademark application that allows the applicant to apply for trademark registration before its use begins.

The USPTO also offers a Supplemental Register for trademarks that cannot be registered on the Principal Register. This is typically used for trademarks that are descriptive or generic and which cannot be protected on the Principal Register. The Supplemental Register is mostly used for registering trademarks that are merely illustrative in nature and for which the applicant has failed to indicate a secondary meaning.

Use Applications

The ‘use-based’ applications depend on the actual or existing usage of the mark. Use-based applications claim actual use in commerce in relation to the goods and services listed in the application or of a mark associated with them. It should be made in good faith in the ordinary course of business and not just solely to retain the trademark rights. It must be used for legitimate purposes only. Under 37 C.F.R. § 2.34(b), the mark must be used for all goods and services listed in the application unless the applicant further asserts intended use as a basis for specific goods or services. They must indicate which basis applies to which goods and services.

ITU Applications

Under 15 U.S.C. § 1051(b), an intent-to-use (ITU) application is based on a bona fide intention to use the mark in relation to the goods or services listed in the application, even if actual use has not yet occurred. ITU is a kind of trademark application that allows the applicant to apply for trademark registration before its use begins, although the use must be in good faith. The ITU serves as a strategy for achieving filings earlier than competitors, which would act as an advantage in a dispute situation. The application must be accompanied by an affidavit of his bona fide intention to use the trademark and product samples, like samples or product images, to confirm the intention.

The USPTO considers and approves ITU applications in the same manner as applications for the mark that claims its prior actual use. After submitting the application, the applicant can show evidence of its use in commerce for three periods. The first period is when the application has yet to be accepted. The second period is six months after the USPTO issues the Notice of Acceptance. It is usually issued approximately twelve weeks after the trademark is published, indicating that the trademark can be registered. The third period has an extension option available by submitting a request for renewal and paying a fee to the USPTO. It helps the applicant use its trademark in commerce for an additional year. An additional four renewal requests may be made, each granting the applicant an additional six months to use the mark in commerce for a period of thirty-six months after receiving the notice of permission. For obtaining registration, the ITU applicant must submit an ‘Amendment to Alleged Use’ or a ‘Statement of Use’, accompanied by appropriate evidence of usage of the mark in commerce in relation to the listed goods and services of the application. If a ‘Statement of Use’ is not submitted within the deadline, the trademark application will be rejected. After that, the only option left is to restart the application with multiple fees and requests or start over with a new submission. 

Supplemental Register

The trademark applications are submitted by the applicant under 15 U.S.C. § 1057(b). For registering the trademark, the inventor of the mark files in the Principal Register of the USPTO to protect his trademark rights. When the owner gets the certificate of registration that was submitted on Principal Register, he shall be entitled to significant legal presumptions, such as that-

  • The trademark is valid.
  • The owner of the trademark is the holder himself.
  • The owner has the exclusive right to use the trademark in commerce or in relation to the goods or services listed in the registration. 

Some terms or expressions might not be eligible for registration in the Principal Register. Those marks may qualify for registration in the Supplementary Register. These marks are generally only descriptive signs, the distinctiveness of which cannot yet be proven by the trademark owner. The registration on the Supplemental Register is most common for trademarks that are merely illustrative in nature when the applicant has failed to indicate a secondary meaning. The benefits of registration in the supplementary register are as follows-

  • Federal Court Jurisdiction for Infringement and Related Unfair Competition Claims;
  • the registration can be used by trademark examiners for subsequent similar trademark registration applications;
  • inclusion in trademark search results that may prevent third parties from using similar trademarks; and
  • right of use ® and other Federal Register notices.

Though it is permissible to submit the trademark application for registration in the Supplemental Register, in most cases, applicants applied for trademark registration in the Principal Register that was amended into the Supplemental Register when the USPTO refused registration on the basis of the descriptiveness of the mark. A trademark cannot be registered in the Supplemental Register unless it is in use in commerce or is based on a foreign registration. An application on the basis of intent to use cannot be submitted or converted to a supplemental registry until a Statement of Use or Amendment to Allege Use is submitted.

Maintenance of trademarks

Once a trademark is registered, it must be maintained in order to retain its protection. This means that the trademark must be used in commerce in the US, and the registration must be renewed on a periodic basis. The renewal of the trademark registration should be done to protect the trademark rights from any kind of infringement.

Trademark registrations are valid for 10 years from the date of registration and can be renewed for additional 10-year periods. The initial renewal is due within six months of the 10-year anniversary of the registration date, and subsequent renewals are due within six months of the 10-year anniversary of the last renewal date. The essential documents required for trademark registration renewal are discussed in detail in this article.

In order to renew a trademark registration, the owner must submit a continuing use affidavit, which is a sworn statement that the trademark is still being used in commerce in the US. This affidavit must be accompanied by a specimen of the trademark as it is being used in commerce. The owner has the responsibility to show proof that the trademark is currently in use in at least one product or service in each category specified in the registration.

Registration Duration, Initial Renewal, and Continuing Use Affidavits

In order to maintain the ongoing validity of their trademarks after registration, businesses or individual rights holders engage in trademark maintenance activities. The term of registration initially covers a period of ten years. The trademark owner needs to submit a continuation document before the sixth year of his initial registration period. The USPTO can cancel the registration of the trademark if it is not used sufficiently and continuously. It is the trademark owner’s duty to file registration maintenance documents on a regular basis. 

Affidavit under Section 8 (Between 5th & 6th Years)

Section 8 affidavit must be filed between the fifth and sixth year after the initial trademark registration date. This statement provides confirmation that the owner is still using the published trademark.

Declaration under Section 15

Under Section 15, the owner of a trademark registered in the Principal Register must also make a declaration of indisputable rights. In short, the Section 15 declaration of incontestability states that the registrant’s claim of ownership or right to register the mark has not been the subject of a final court ruling. It is far more challenging for third parties to revoke or otherwise challenge the trademark owner’s rights after filing a Section 15 declaration since it makes the registration incontestable. It is customary to file the Section 15 statement along with the Section 8 during the first maintenance deadline. A Section 15 statement can be filed only once. The basis for registration in the United States under the Madrid Protocol is the filing of a declaration statement within the time period under Section 71. Section 15, which is an uncontested application, can be submitted even after 5 years have passed from the date of registration.

In the case of Chutter, Inc. v. Great Management Group, LLC (2021), the Trademark Trial and Appeal Board (TTAB) canceled the registration of Great Concepts, LLC on the grounds of fraud. The petitioner filed a suit against them for registering the mark ‘DANTANNA’S’ in Class 43 for ‘steak and seafood restaurant’, as it was fraudulently made. The decision held by TTAB was that a false statement made by the attorney under Sections 8 and 15 containing a Declaration of Continued Use and Incontestability submitted to the U.S. Patent and Trademark Office (USPTO), together with a reckless disregard for the truth or falsity of a material statement made in the USPTO’s filing by the party, can be regarded as an intentional act to deceive, and therefore, it can be considered a fraud.

Affidavit under Section 9 (Between 9th and 10th Years)

Under Section 9, the trademark owner must submit a Section 8 declaration of use and a Section 9 affidavit, which is a renewal application, in order to renew the trademark registration between the ninth and tenth years following the registration date. This section extends a trademark registration in effect for an additional 10 years. The same deadline applies for registration in Madrid, except that a Section 71 declaration must be submitted in place of a combined Section 8 and 9 declaration.

Subsequent renewals (After every 10 years)

Each consecutive renewal deadline happens after the initial 10-year anniversary after the initial registration of the trademark is renewed. 

Essential documents for renewal of trademark registration 

The essential documents required for trademark registration renewal are as follows-

  • Submission of identity proof, i.e., name, address, and signature of the applicant.
  • Submission of a copy of the Certificate of Incorporation (COI) of the business or company.
  • Submission of the description and details of the trademark.
  • Identifying whether the mark has been used continuously after registration.
  • Submission of the current specimens of use of at least one product or service from each class listed in the registration that can be submitted to the USPTO.
  • Submission of a letter of power of attorney.
  • Submission of the fees.

Removal of goods or services not in use from the registration

If the mark is no longer used in relation to the provision of particular goods or services, the unused goods or services must be explicitly removed from the registration when filing a Statement of Continued Use under Section 8. When a particular registry contains a large number of goods in a particular category, the risk of unused goods or services remaining in the registry increases.

Specimens of use

It is the duty of the owner to provide evidence that the trademark is currently in use in at least one product or service in each category specified in the registration. Multiple specimens must be submitted for each class if the USPTO deems a particular sample unacceptable. 

Excusable nonuse

There is an exception to the continued use rule, which can be stated as ‘excusable nonuse’. The applicant can make a declaration of excusable non-use if any special circumstances arise, like-

  • Trade Embargo or Circumstances not under the owner’s control – If the trademark owner is willing and able to continue using the mark in commerce but is unable to do so due to the trade embargo, the lack of use may be excused.
  • Sale of a company or business – In the case of the sale of a business, the nonuse of the mark for a temporary period of time can be excusable. 
  • Retooling – If any production interruption takes place due to the retooling of the factory equipment and plants, the mark may be temporarily out of service, and production can be resumed only at the specified times. Nevertheless, nonuse due to retooling can only be justified if the owner demonstrates that the plant or equipment being converted is necessary for the production of the goods and that there is no other equipment available on the market that can replace it.
  • Orders on Hand – Non-use can be considered excusable for products that cannot be manufactured quickly or in large quantities but where there are orders and activity to fulfill them.

Loss of Trademark Rights

Trademark rights can be lost if the trademark is abandoned, voluntarily terminated, or involuntarily terminated due to genericism.

A trademark is considered abandoned if the owner stops using it in commerce for an extended period of time. If a trademark is not used for three consecutive years, it is presumed to be abandoned and its registration will be canceled. The abandonment of a trademark also takes place when the applicant of the marks fails to respond to any of the actions of the trademark office in the case of a pre-registration trademark.

A trademark owner may also voluntarily terminate a trademark registration. This is done by submitting a request to the USPTO to cancel the registration. After that, the trademark rights to that mark are terminated that were granted under the Lanham Trademark Act. 

Finally, a trademark can be involuntarily terminated due to genericism. This happens when a trademark becomes so commonly used that it becomes generic and no longer serves to distinguish the goods or services of one source from those of another. There are some marks that become popular, and consumers start using them on a daily basis. They are no longer associated with any specific business entity. Rather, they are used to denote specific goods or services. Examples of trademarks that have become generic include “aspirin,” “escalator,” and “thermos.”


Abandonment of a trademark means that the owner of the mark has not used it for a prolonged period of time and does not show any interest in using it. The prolonged period of time here means that for three consecutive years, if the trademark is not in use, it acts as evidence of abandonment of the mark. Abandonment of a trademark may also take place due to certain acts or omissions of the trademark owner as it loses its importance as a mark. If a mark is abandoned by its owner, it will not be protected. This is used to prevent the owners of the marks from trademarking them and storing them for later use. When a trademark becomes too well known among the public, it becomes the generic name of that particular good or service. In such cases, it is also treated as abandonment of a trademark. It is up to the owner of the trademark to use it in the correct way while selling or advertising his products or services. His failure to prevent generic or infringing uses of his mark can make it a generic name for the products or services. 

The abandonment of a trademark also takes place when the applicant of the marks fails to respond to any of the actions of the trademark office in the case of a pre-registration trademark. When any of the office actions are drafted by the attorney in charge of them and sent to the applicant, it is his duty to respond to them within a period of six months from the time of their issuance. The content of it will mainly be a procedural or substantive objection to any fault in the application, and it will describe the remedies to fix it. The mark will be abandoned under 15 U.S.C. §1062(b) if the applicant fails to respond or satisfy the attorney in charge of it. 

In the case of Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd. (1993), the plaintiff filed an infringement suit against the defendant. The defendant opened a restaurant in Brooklyn named The Brooklyn Dodger Sports Bar and Restaurant and used a logo that was almost identical to that of the plaintiff. The defendant counterclaimed to cancel the registration of various trademarks of the plaintiff as they were not in use. The question raised was whether abandonment of a mark requires nonuse as well as intent-to-use. The district judge of Motley gave a positive response in this regard. It was held that failure to use as well as no intention to resume commercial use are both evidence of abandonment of the mark. 

Partial abandonment of a trademark application

When a trademark application is filed, the application may have more than one class of goods or services. It may happen that some classes of it are accepted and others are rejected. In the event of the applicant’s failure to respond to the likelihood of confusion issues raised in the office action, a partial trademark abandonment of some of the classes will take place, and other classes will get registered that do not contain any issues. In case his failure to respond to it was accidental, he will get the option to submit a petition to restart it within a period of two months of the USPTO’s issuing it and preferably reinstate the application under TMEP 718.02(a).

Express abandonment of a trademark application

The owner of the trademark may also expressly abandon a trademark by filing an application or a written request for its abandonment. He can do that by signing it himself or by having the attorney in charge file his request. The owner of the trademark can submit an application form for abandonment of the mark to the Trademark Electronic Application System (TEAS) through electronic means under Section 37 C.F.R. §2.135

Termination due to improper licensing or assignment

A trademark can also be terminated due to improper licensing or assignment. If the owner of the trademark does not supervise or check the quality of the product properly, the trademark can be cancelled. In the same way, if the trademark owner assigns the trademark rights to another party in whole without a sale consideration of its assets, termination of the trademark would occur.

In the case of Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc. (1959), the plaintiff filed an infringement suit against the defendant for using the mark ‘Dawn’ which the plaintiff had already registered under the Lanham Trademark Act. But the defendant was unaware of the plaintiff’s trademark, as he had not used it in that area for about thirty years. The defendant filed a counterclaim against the plaintiff, requesting the federal district court to cancel the plaintiff’s registration of ‘Dawn’ trademark for his inadequate control of licensees’ use of the mark. But the district court dismissed both of their complaints and counterclaims. Then they appealed to the U.S. Court of Appeals for the Second Circuit. They confirmed the decree of the district court’s verdict. The Court observed that the plaintiff had not abandoned its mark and registration rights, and so the plaintiff was not stopped by any laches from asserting its exclusive right to use its trademark in the defendant’s sphere of business. The court, on the other hand, also denied an injunction against the defendant.

Voluntary Termination

Voluntary termination means when the holder of a trademark himself submits an application for termination of his trademark registration by giving it to the USPTO for cancellation. The owner, while filling out the application, must put his signature on it, or it should be signed by any of his legal representatives or by the attorney in charge of it.

Involuntary Termination: Genericism

The owner of a trademark may involuntarily lose the trademark rights due to genericism. A trademark can be involuntarily terminated due to the use of generic trademarks. Those marks that become very well-known in daily usage by the public no longer remain associated with any specific business entity but rather presume the meaning of specific goods or services. Hence, with time, it loses its distinctiveness and becomes generic in nature. The registration that was granted to the trademark based on its distinctive character loses its importance due to genericism. Some of the generic trademarks are as follows-

  • Aspirin
  • Band-Aid
  • Cellophane
  • Velcro
  • Thermos
  • Xerox
  • Elevator

These are a few of the trademarks that became generic in nature due to their common and extensive usage. These terms were so widely used by the public in day-to-day life that they lost their uniqueness and became the term for the products instead of being associated with the original brands. So in no case should any trademark be unused or overused.

In the case of Kellogg Co. v. National Biscuit Co. (1938), the plaintiff filed suit against the defendant, stating that the plaintiff was the first to introduce the trademark and the defendant infringed the trademark ‘Shredded Wheat’ by using it. A patent was issued for the process of making shredded wheat, which had already expired in 1912. The defendant then started to manufacture and market shredded wheat in 1922. The plaintiff sued the defendant as they started producing the same pillow-shaped product as the plaintiff, the inventor company. The decree went against the defendant, and he was asked to stop using the plaintiff’s trademark by the Circuit Court. An appeal petition was filed by the defendant in the Supreme Court of the United States. He requested a review of the judgment of the Circuit Court. The Supreme Court then reviewed the decree and passed its judgment. It was held that the term ‘Shredded Wheat’ cannot be exclusively used by the plaintiff, as it has become a generic word for the biscuits. The defendant, too, has the right to use it. As soon as their patent expired, the term became available in the public domain. The Supreme Court also observed that the color, size, and form of labeling of the defendant’s product were different from those of the plaintiff. So it revered the judgment of the Court of Appeals.

Common mistakes made in the trademark protection process

When it comes to trademark protection, there are a few common mistakes that people make. The first is failing to register the trademark with the USPTO. Without registration, the trademark owner will not have access to the full range of remedies available under the Lanham Act, and will not be able to protect their trademark from infringement. The trademark owner will be unable to protect his mark if it has not been previously registered. So to get the exclusive rights to manufacture, use, and sell his own invention, one must register his mark without failing. 

Another common mistake is failing to use the trademark in a “sufficiently public” manner. It is essential for the trademark owner to see that his trademark is used sufficiently and continuously. This means that the trademark must be used in a manner that is recognizable to the public, and must be affixed to the goods or services. A trademark must be physically attached to the products to satisfy the necessities of ‘affixation’. Some of the important clauses in trademark licensing are as follows-

  • The preamble is used to indicate the parties to the agreement, i.e., the licensor and licensee. It also contains the location of the registered office.
  • The grant clause grants the licensee the right to use the trademark of the licensor. It states the maximum extent of rights that are granted to the licensee.
  • The rights and liabilities clause includes the various rights the licensor and the licensee will have as well as their respective obligations. It must also state their relationship to limit liability in relation to a third party.
  • The quality control clause is another very important clause that is included in the license agreement to ensure that the licensor must keep a proper check on the quality of his product.
  • The termination clause deals with the policies that state the conditions under which the license agreement can be terminated.
  • The governing clause specifies the law under which their agreement will be governed. This clause plays an important role when the parties to the agreement are from different jurisdictions.
  • The dispute resolution clause is also an important clause that regulates the mechanism for resolution of any kind of dispute that may take place between the parties.
  • The insurance clause intends to safeguard the licensor from all kinds of third-party claims if any such case arises in the future.
  • A confidentiality clause is a clause that prohibits either party to the agreement from sharing any kind of information that is confidential in nature with a third party. 

Finally, many people fail to renew their trademark registrations on time. This means that the trademark registration can be canceled, and the trademark owner will lose their exclusive right to use the trademark. So to prevent losing trademark rights and to avail remedies for any kind of infringement, an individual must not fail to renew his trademark after its expiration of registration.


The protection of trademarks is of vital importance in every country. Trademark protection in the US requires following a number of formalities, including adoption and use of the trademark, registration with the USPTO, and maintenance over time. Understanding these formalities is key to successfully protecting a trademark in the US. It will be helpful for them while protecting their trademark rights. If any kind of infringement ever happens, then the trademark owners can safeguard their mark, and no other businesses or companies could ever be able to misuse their mark that was once registered with the USPTO. 

Therefore, once a mark is registered, the holder of that trademark will get all the advantages and benefits that an inventor of a mark must get. He will be able to provide protection for his trademark. If you’d like to learn more about trademark protection in the US, contact a trademark attorney today. A trademark attorney can help you understand the formalities related to trademark protection and can provide advice and guidance on the best way to protect your trademarks. The attorney will guide you in various ways so that you can safeguard your trademark rights.

Frequently Asked Questions (FAQs)

What are the advantages of trademark registration?

The following advantages are available to trademark owners who have registered their trademarks –

  • The ownership of a particular mark is given to him.
  • He is given the exclusive right to use it.
  • The mark is protected from registration of similar kinds of marks.
  • It protects against any kind of infringement by other businesses or companies.
  • The mark becomes ‘incontestable’ after a period of five years of continuous use.

What are the things that a registered trademark protects?

The registration of a trademark protects it from any other identical marks used by any particular brand. It also prevents other companies or businesses from taking advantage of consumers by representing themselves as brands that they are not.

Which marks are registrable as trademarks?

The marks that can be registered under the trademark laws of the U.S. include any-

  • Word
  • Name
  • Symbol
  • Device 

Most registered trademarks include words or logos. Sometimes, non-traditional marks can also be registered as trademarks if they have acquired a distinctive character.

Which marks cannot be registered as trademarks?

The marks that cannot be registered under the Lanham Act include the following-

  • coat-of-arms, flag, emblem of a governmental agency, or symbol of foreign nations;
  • a specific individual’s name, signature, or picture that identifies him without his written consent;
  • a mark that is similar to any other trademark or a mark that was used in the U.S. earlier and is not being abandoned;
  • a mark used in relation to the sale of goods or services, or it is likely to cause confusion or mistake, or it can deceive consumers;
  • deceptively similar marks; and
  • functional matter.

What are the basic requirements to obtain a registration?

The basic requirements to obtain registration are as follows-

  • The applicant’s name.
  • The address of the applicant is where the USPTO would send its correspondence.
  • A clear picture of the mark that needs to be registered.
  • The list of goods or services that will be sold or offered in relation to the mark.
  • Submission of the fees for a minimum of one class of goods or services.

What are the additional requirements for its registration?

The additional requirements for its registration are as follows-

  • All details about the applicant.
  • Whether the applicant is taking the registration for his individual purpose or for any other legal entity.
  • Its place of incorporation.
  • The basis for filing.
  • A clear description of the mark.
  • The mark’s drawing.
  • Submission of the unpaid fees for any other additional classes.
  • The USPTO plays an important role in encouraging the foreign applicant to appoint a foreign representative to receive service of notices or proceedings by the USPTO.

What is the time frame for the maturation of the application for registration?

The usual time it takes to mature is between nine and twelve months for the issuance of registration if there are no substantive objections and no filing of oppositions. The application should be filed in electronic form. The duration can increase if any issue is raised by office actions, or opposed, or filed on paper.


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