Federal Trademark Registration
Registering your trademark, even if you have established strong common law rights to the mark, is always advised. This allows you to provide notice to the world that you are using the mark, and affords you certain statutory rights and protections as well.
The U.S. has a two-tiered system of trademark protection: federal and state. A federal registration issued by the U.S. Patent & Trademark Office (USPTO) gives the registrant rights through the entire United States. A state registration will grant rights within that state’s boundaries only.
Generally, in order to file for a registration with the USTPO, the trademark’s owner first must use or plan to use the mark in “interstate commerce.” This means the mark is used on a product or service that crosses state lines or that affects commerce crossing such lines (for example, an Internet business that caters to interstate or international customers).
How to Successfully Register with the USPTO
At first glance, registering a mark with the USPTO appears to be a relatively simple process. It requires a completed application, a specimen, and a statutory filing fee.
However, doing some research before spending the cash on the filing fee, which can range from $250 to $375 or more depending on the type of application submitted and how many class of goods or services you want to list for your mark, is strongly recommended. This is because all applications will be examined by a USTPO Trademark Examiner for registrability under the Lanham Act (15 U.S.C. § 1051 et seq.).
Some things CANNOT be trademarked under the Lanham Act. You are not allowed to claim the generic name of a product or a service itself as your trademark. Roger cannot trademark “Plumbing” or “Plumber” for his plumbing business.
You cannot register “clearly descriptive” marks, which are those made of dictionary words which describe some important characteristic of your product or service (e.g., “Delicious Apples” if you have an apple orchard business). You also cannot register “deceptively misdescriptive” marks (e.g., “Leather Shoes” for shoes that aren’t actually made of leather).
However, “suggestive” marks only give some vague idea about the products and services covered by the trademark, and are registrable. Sometimes the boundary between unregistrable clearly descriptive marks and registrable suggestive marks isn’t very clear. This can result in long disputes between applicants and the USPTO.
There are many other rules for what is allowed for registration under this Act, and if your application is rejected, you do not get a refund of your application fees. As such, consulting with a trademark attorney is advised before you begin the federal registration process.
If the Trademark Examiner determines your mark can be registered, it is then published in the USPTO Gazette, and if it is not challenged within 30 days of publishing, it will be registered. The total process can take 1 year at a minimum. After registration, you can use the symbol ® after your mark to show it has been federally registered.
Colorado Trademark Registration
Trademark registration under Colorado law is easier, faster and cheaper than federal trademark registration. It is used to protect a trademark within the state.
A Colorado trademark registration allows for a standard character mark (expressed in ordinary English letters, Roman and Arabic numbers, or punctuation, without any stylization) and a special form trademark (logos, pictures, design elements, color or style of lettering).
To file a Colorado trademark registration, you submit a Statement of Registration of Trademark electronically at the Colorado Secretary of State’s website with an attachment of your mark and the goods/services category your mark will be used in. The current filing fee is $30.
Unlike the USPTO, there is no examiner who is going to look at your application to make sure you have completed it correctly and that the mark is appropriate for registration under state law. Instead, when you file your application, you certify that in your good faith belief, you have the right to use the trademark in connection with the goods or services listed in your application, and your use does not infringe the rights of any other person in that trademark.
Colorado trademark registrations are effective for 5 years and may be renewed before expiration in successive 5-year terms. (Prior to May 29, 2007 however, Colorado trademarks were effective and renewed for 10 years.)
Obtaining a Colorado trademark registration does not authorize the use of the federal registration symbol ®. However you can use “TM” or “SM” (for a service mark) after your mark.