Who Can Apply for a Trademark?

What is a Trademark?

A trademark is a symbol, word or phrase, graphical design, sound, color, video clip, or a combination thereof that distinguishes your products or services from those offered by others. A trademark serves to uniquely identify your brand for the benefit of your customers. A trademark is a type of intellectual property (IP) that identifies a business or product. A trademark registration protects and expands your exclusive rights in your trademark. The process of applying for a trademark involves understanding who is eligible to file an application. This article delves into the various types of applicants and entities that can properly apply for trademark registration through the United States Patent and Trademark Office (USPTO).

Who Can Own a Trademark?

Various forms of businesses can own a trademark and apply for a trademark registration, including individuals, partnerships, corporations, limited liability companies (LLCs), clubs, trusts, and non-profits. However, there are other requirements that must be met in order to be a proper applicant for a trademark registration, as discussed below.

Ownership and Filing Applications

According to 15 U.S.C. § 1051(a)(1) and (b)(1), an application to register a mark must be filed by the owner of the trademark under two filing options: actual use and intended use applications. Trademark rights can be established through actual use in commerce prior to filing a trademark application. This involves using the mark on goods or services in a manner that distinguishes them from those offered by others, thereby creating a connection in the minds of consumers between the mark and the source of the goods or services. A business can establish rights through continuous and consistent use of the mark, which builds the recognition and goodwill in the mark and the business. However, relying on common law trademark rights can be problematic because these rights are limited to the geographic area where the mark is actually used, which can restrict the owner's ability to enforce the trademark in other areas. Additionally, common law rights offer less legal protection compared to a registered trademark, making it more challenging to prevent others from using a similar mark. The lack of a formal registration also means the owner must prove the existence and scope of their rights in any legal disputes, which can be both time-consuming and costly. Finally, common law rights do not provide the benefits of federal registration, which provides several advantages over common law trademark rights, including a legal presumption of ownership and nationwide notice of your trademark rights.

Intent-to-Use Applications

If a business or entrepreneur wishes to secure rights in a trademark, but has not yet begun using the mark in connection with any goods or services, an application may still be filed if certain conditions are met. An intent-to-use application may be filed if the applicant has a bona fide intention to use the mark in commerce. This means that the applicant has genuine plans to use the mark in connection with their goods or services in the near future. This intent must be real and not merely a token gesture to reserve the mark. Evidence of such intent might include business plans, marketing preparations, or product development efforts that demonstrate a serious intention to bring the mark into commercial use. The requirement ensures that the trademark system is not clogged with marks that applicants do not intend to use, maintaining the integrity of the trademark registry.

Why is Important to Identify the Proper Trademark Applicant?

If an applicant is improperly identified in a trademark application, the application may be deemed void ab initio, meaning it is invalid from the outset. This can occur if the application is filed by a person or entity that does not have the legal right to claim ownership of the mark, such as someone who is not the actual trademark owner or lacks a bona fide intent to use the mark in commerce. It cannot be amended to correct the applicant because the applicant has no transferable rights in the application. See 37 C.F.R. § 2.71(d). Because an improperly identified applicant cannot simply amend the application to correct the error, a new application must be filed resulting in the loss of the original filing date. This delay can potentially lead to the loss of priority if another party files for the same or a similar mark in the interim. Also, the applicant faces the additional costs associated with refiling and the potential for increased legal complications.

A proper trademark application and the resulting registration allows a trademark owner to sue for trademark infringement in state or federal court. Trademark ownership also secures the owner's trademark rights on a nationwide basis. Thus, correctly filing a trademark application with the correct applicant is critical to the health of your brand.

Eligible Entities for Trademark Registration

Natural Persons and Juristic Entities

Under US trademark law, applicants for trademark registration can be natural persons or juristic entities. Juristic entities include partnerships, joint ventures, associations, unions, corporations, and other organizations capable of suing and being sued in court. See 15 U.S.C § 1127. An application for a trademark registration cannot be filed under a subunit of a corporation or under a fictitious business name (a "DBA") because they are not legal entities that can sue or be sued.

Juristic Entities Filing Trademark Applications

Organizations and juristic entities can file trademark applications to secure trademark registration and protect their intellectual property rights. Various types of business entities are eligible to apply, each with particular requirements:

• Partnerships and Joint Ventures: These entities should file trademark applications under their business name, i.e., their DBA. A trademark is also different from an LLC, which is a type of business entity. A DBA (doing business as) is a local or state-level registration of a business name, but it does not provide the same level of protection as a trademark. A business license is a permit to operate a business, but it does not provide trademark protection. If there is no business name, the application should list the names of the members as if they composed a company name. Assumed name designations can also be used, facilitating proper identification of the entity.
• Corporations and Associations: Corporate applicants must use their official corporate name in the application. Including the name of a division is not acceptable. Associations must be identified by their full, official name to ensure clarity and legal accuracy.
• Universities: These entities have varied structures, and acceptable designations include "The Regents of the University of California". The terms "education institution" and "educational organization" are not acceptable and must be amended to a legally recognized juristic entity.
• Banking Institutions: Whether federally chartered or organized under state law, banking institutions have specific entity designations. Examples include "BANK OF AMERICA CORPORATION" and "Edward D. Jones & Co. LP".
• Limited Liability Companies (LLCs): LLCs are recognized in most states and have characteristics of both corporations and partnerships. Applicants must indicate the state under whose laws the LLC is established. Variations like "low-profit-limited-liability company" (L3C) are also acceptable with proof of their existence under relevant state law.
• Foreign Entities: For foreign applicants, acceptable terminology may differ from U.S. standards. Terms such as "company" and "limited company" are acceptable for entities from Commonwealth countries. The specific nature of the foreign entity must be clarified if it is not specifically listed USPTO's Trademark Manual of Examining Practice. The applicant must specify the foreign country under whose laws it is organized.

Governmental Bodies

Countries, states, cities, and other related types of governmental bodies can apply to register marks with some restrictions. Governmental bodies can seek a trademark registration to protect their unique identifiers, logos, and names from unauthorized use, ensuring that the public can trust the source and quality of the services or goods associated with them. This protection helps maintain the integrity and reputation of governmental programs and initiatives. For a governmental body to file a trademark application, it must be the trademark owner and it operate under governmental authorization. The application must specify the governmental entity's legal status, such as "an agency of the United States" or "a municipal corporation organized under the laws of [state]."

Two famous examples of trademarks registered to the US government:

• NASA : The National Aeronautics and Space Administration registered the NASA acronym as a standard character mark and the associated logo to prevent misuse and to authorize official merchandise.
• Smokey Bear : The U.S. Forest Service registered the service mark "Smokey Bear" to exclusively promote wildfire prevention.

It is worth noting that Section 2(b) of the Lanham Act prohibits the registration of any mark that consists of or comprises the flag, coat of arms, or other insignia of the United States, any state, municipality, or any foreign nation, or any simulation thereof. For example, the U.S. flag cannot be registered as a trademark. In the case In re The Government of the District of Columbia, 101 USPQ2d 1588 (TTAB 2012), the Trademark Trial and Appeal Board (TTAB) affirmed the PTO's refusal to register the official seal of the District of Columbia. The refusal was based on the ground that the seal, intended for use on various goods such as clocks, cufflinks, memo pads, pens, pencils, cups, mugs, and clothing, constituted a governmental insignia barred from registration under Section 2(b). The decision confirmed that the District of Columbia qualifies as a “municipality” under the statute, and there was no dispute that the applied-for mark was the official seal of D.C.

Minors as Trademark Applicants

Federal trademark law may allow a minor to file an application, depending on law of the state of the minor's residence. If a minor can lawfully form contracts and can participate in legal proceedings in the state of their domicile, the minor can file a trademark application in their own name. If not, the application must (1) be filed in the name of a parent or legal guardian and (2) indicate their status as parent or legal guardian of the minor. If the named applicant is a minor, the examining attorney must investigate whether the minor qualifies as a proper applicant under the applicable trademark law.

Role of a Trademark Attorney

A licensed trademark attorney can file a trademark application on behalf of a client who is a proper trademark applicant by following specific procedures and requirements set forth by the United States Patent and Trademark Office (USPTO). First, the attorney must engage the client and get a power of attorney from the client to file the trademark application. The attorney must then meet and confer with the client to gather the necessary information.

As initial step, the attorney must ensure that the client qualifies as a proper trademark applicant, as outlined above. The attorney also gathers other essential information from the client, such as the applicant's legal name, entity type, and address. The attorney also needs details about the trademark, including the mark itself, a clear description of the goods and services associated with the mark, and the basis for filing (e.g., current use in commerce or intent to use).

Throughout the entire process, the attorney communicates with the USPTO, responds to office actions, and ensures all legal requirements are met. This professional guidance helps streamline the application process and increases the likelihood of successful trademark registration, safeguarding the client's intellectual property rights.

Preparing and Filing a Trademark Application

Today, trademark applications are filed through the Trademark Electronic Application System (TEAS), which provides a streamlined submission process and an efficient trademarking process. The application must properly identify not only the applicant, but also the trademark or service mark and the goods or services. There are 45 different trademark classes, and you can register your mark in multiple classes if necessary. Your goods and services may fall into different trademark classes, and the correct classification for your goods or services should be determined prior to filing in order to avoid rejections and delays in the trademark examination process. Each trademark class in the application carries filing fees of $350.

Once the application is filed, you have established a priority date and effective date for your exclusive right to the trademark, assuming that you are the earliest adopter and exclusive user of the mark in connection with your goods and/or services at the time of filing. It is worth noting here that due diligence should be conducted before filing the trademark application to determine whether there are any third party rights in the same or similar mark that may impact your rights. A thorough trademark search of trademark filings with the USPTO and existing unregistered trademark use should be conducted before filing a trademark application to ensure your mark is unique and that you have substantially exclusive rights in your mark.

Once your trademark application is filed, you will receive a filing receipt and you will have established a public record of your claim to trademark rights. The filing date establishes your rights nationwide to your trademark filing, assuming that your mark is registrable and there is no confusingly similar use of the mark at the time the application is filed. This nationwide protection of your mark provides continuing protection as your business grows and expands geographically.

The Trademark Examination Process

The trademark application process typically takes several months to a year or more to complete. The application will be in a queue at the US Patent and Trademark Office for several months before a trademark examiner begins to examine the application. The trademark examiner will review your application to ensure it meets the requirements for registration. The examiner assesses whether the mark is distinctive and not merely descriptive of the goods or services. The goods or services identified in the application must be clearly defined and associated with the mark. Additionally, the examiner checks for any likelihood of confusion with existing trademark filings, ensuring the new mark would not create consumer confusion with previously filed or registered marks. Compliance with trademark law also involves verifying that the mark is not deceptive, scandalous, or falsely suggests a connection with persons, institutions, or beliefs. Meeting these legal requirements helps ensure the trademark is entitled to protection under trademark law. If the examiner identifies any deficiencies, likelihood of confusion, or other issues with the application, they will issue an office action. You may receive one or more office actions, which is a letter from the Patent and Trademark Office requesting additional information, clarification, and/or amendments, and may contain refusals of the application due to a failure to comply with the requirements discussed above. An example scenario for issues raised in an office action for the hypothetical mark "Legal Maestro" for use on legal services could include the following:

• Likelihood of Confusion: The trademark examiner may issue an office action citing a likelihood of confusion with a previously registered mark where the marks are related and the goods and services are related. For example, the hypothetical mark "Trademark Professor" for use on legal educational services. The examiner could argue that both marks share a similar theme of academic or authoritative titles in the legal field, potentially leading consumers to believe that "Legal Maestro" and "Trademark Professor" are related or come from the same source. Given that both marks cover services related to the legal field, there is a risk that the public might assume a connection between the two, causing confusion.
• Descriptiveness: The examiner might also question whether "Legal Maestro" is merely descriptive of the services provided. "Legal" is generic with respect to legal services and provides no independent trademark rights. The term "Maestro" suggests expertise, which directly describes the nature of the legal services offered. If the examiner finds the term descriptive, they may request evidence of acquired distinctiveness in order to approve the mark for registration on the principle register.

These issues would need to be addressed adequately to overcome the office action and proceed with the trademark registration process. A response to an office action may be filed in order to address the issues raised by the trademark examiner. The response may include amendments to the goods or services, arguments against an examiner's assertion that there is a likelihood of confusion with prior filing, and/or responses to any formal requirements that the examiner has identified. If all issues are addressed, the examiner approves the application for publication.

Publication in the USPTO Official Gazette

Once the trademark examiner approves the application for publication, the mark is published in the United States Patent and Trademark Office's Trademark Official Gazette. Publication initiates a 30-day opposition period during which third parties can challenge the registration if they believe it will harm their trademark rights. If no opposition is filed, the application will advance to registration. Upon successful completion of these steps, the applicant receives a certificate of registration, granting exclusive rights to the applied-for trademark.

Post-Trademark Registration

Maintaining a Trademark

After trademark registration, the owner must maintain the mark by filing specific documents with the USPTO. Between the fifth and sixth years after registration, the owner must file a Declaration of Use (Section 8) to confirm the mark is in use in commerce and pay required fees. Additionally, every ten years, the owner must file a combined Declaration of Use and Application for Renewal (Sections 8 and 9). Failure to meet these maintenance requirements can result in the cancellation of the registration. Regular maintenance ensures the mark remains protected and continues to signify the source of goods or services. Trademark owners must keep records of your trademark use and maintenance to ensure you can prove ownership and use.

Trademark Infringement and Enforcement

A trademark registrant has the exclusive right to use the registered mark in connection with the goods or services listed in the registration. This exclusivity allows the registrant to enforce their trademark rights by monitoring the marketplace for unauthorized use. If trademark infringement is detected, the registrant can file a lawsuit in federal court to seek remedies, including injunctions to stop the infringing use, monetary damages, and, in some cases, recovery of legal fees. Enforcing these rights helps protect the trademark's value and ensures the mark continues to signify the unique source of the goods or services.

The Role of the Trademark Owner

After you register your trademark, you will have continuing responsibilities and rights as a trademark owner. As a trademark registrant, you must maintain and enforce the trademark. The trademark owner must ensure consistent use of the mark in commerce and monitor the quality of the goods or services associated with the trademark to prevent a loss of brand strength and enforceable trademark rights. To preserve your intellectual property rights, you must periodically file the required maintenance documents and fees. Additionally, the trademark owner must enforce their trademark against infringements in order to preserve the strength of the trademark. This includes opposing confusingly similar trademark filings, making cease and desist demands on infringing users, and, when necessary, filing trademark infringement lawsuits against obstinate infringers. Maintaining vigilance over the mark's use and quality helps uphold the trademark's integrity and value, ensuring that it continues to identify your business as the unique source of your goods and services in the marketplace.