Trademark Registration Lawyer

Yes. A use-based application at the USPTO requires proof that you have used the trademark in commerce, which you can demonstrate through an existing specimen. If you have been selling products or providing services under the name, you can file based on current use without waiting for a new launch. The challenge is priority: your rights begin from the earlier of your first use in commerce or your filing date. Someone who filed after you started using the mark but before you filed may have a stronger position in geographic markets where they have been operating.

The USPTO recognizes a spectrum of trademark strength. Invented or fanciful words (like Xerox or Kodak) are the strongest because they have no meaning outside the brand. Arbitrary marks, words with meaning in an unrelated context (like Apple for computers), are also strong. Suggestive marks, which hint at the product without describing it directly, are registrable on the Principal Register without proof of acquired distinctiveness. Under 15 U.S.C. § 1052(e)(1) and (f), a merely descriptive mark is refused registration on the Principal Register unless it has become distinctive of the applicant's goods in commerce; it may be registrable on the Supplemental Register in an application under Section 1 or 44.

You can respond to the office action on your own unless your domicile is outside the United States and its territories, in which case you must be represented by a U.S.-licensed attorney. A likelihood-of-confusion refusal is assessed under a multi-factor test that compares the marks in sound, appearance, meaning, and commercial impression and considers the relatedness of the goods or services. A response to a descriptiveness refusal may contest the refusal or claim acquired distinctiveness. Eligible marks may be registered on the Supplemental Register; an application based solely on Section 1(b) requires an acceptable allegation of use before that registration.

Personal names can be registered. Under 15 U.S.C. § 1052(e)(4) and (f), the USPTO refuses registration on the Principal Register of a mark that is primarily merely a surname unless it has become distinctive of the applicant's goods in commerce. A name that identifies a particular living individual can be registered only with that individual's written consent (15 U.S.C. § 1052(c)). A stage name or pen name is registered the same way as any other mark when it identifies the source of goods or services.

A word mark filed with a standard-character drawing claims the wording itself, without claim to any particular font style, size, or color. A design mark is filed with a special-form drawing that shows the specific logo or stylization claimed. We recommend filing a word mark first, because using standard characters protects the wording itself, regardless of how it is displayed. You can also file a separate design mark for the logo, at the same time or later.

If you are already operating or selling in Canada, a US trademark registration does not itself create a Canadian registration. The Canadian Intellectual Property Office (CIPO) administers a separate registration system with its own filing fees, examination standards, and timelines. Under Canada's Trademarks Act, an applicant is not entitled to registration if, at the filing date or the date of first use in Canada (whichever is earlier), the trademark was confusing with a trademark previously used or made known in Canada, or previously applied for in Canada, by another person (s. 16(1)), unless, on the day the application is advertised, the earlier application is no longer pending or the earlier trademark has been abandoned (s. 16(2) and (3)); a valid priority claim based on an application filed in another Union country within the six months before the Canadian filing makes that earlier filing date the Canadian filing date (s. 34(1)). If you are US-only for now, you can file in Canada later; those rules apply whether or not you hold a US registration. We recommend assessing prior use and any priority claim before you choose.

A clearance search examines existing federal registrations, pending applications, and common-law uses for related goods or services, looking for marks that might conflict with yours. A full clearance search ends with a written legal opinion on risk level. We recommend a clearance search for any name you intend to invest in, before you build your brand around it.

Use in commerce means bona fide use of a mark in the ordinary course of trade, not merely to reserve a right. Commerce means commerce Congress may lawfully regulate. For goods, the mark must be placed on the goods, their containers, associated displays, or tags or labels affixed to them; if the nature of the goods makes placement impracticable, it may appear on documents associated with the goods or their sale. The goods must be sold or transported in commerce. For services, the mark must be used or displayed in their sale or advertising, and the services must be rendered in commerce, or rendered in more than one state or in the United States and a foreign country by a person engaged in commerce in connection with the services.

Non-traditional marks can be registered. Under 15 U.S.C. § 1052(e)(5) and (f), functional matter cannot be registered, and a mark that has become distinctive of the applicant's goods in commerce can be, which is the route for a single color. A slogan or a sound can be registered only if it functions as a trademark, that is, if it identifies and distinguishes the applicant's goods or services and indicates their source (15 U.S.C. § 1127); the other grounds for refusal in 15 U.S.C. § 1052 also apply.

After the USPTO publishes your application for opposition, any person who believes they would be damaged by the registration has 30 days, or any extension granted, to file a notice of opposition with the Trademark Trial and Appeal Board. If an opposition is filed, a formal adversarial proceeding begins with discovery, testimony periods, and written arguments. A trademark registration lawyer can assess the strength of the opposition and advise on whether to defend, negotiate, or challenge the opposing party's standing.