Registering a Trademark

You do not have to register your trademark with the U.S. Patent and Trademark Office (USPTO) to receive trademark protection. You can obtain a common law trademark simply by using your trademark in your business.

However, registration has several important advantages:

• Registration notifies the public that you claim ownership of the mark. This may help discourage others from using it.
• Registration creates a legal presumption that you own the mark and have the right to use it nationwide for the goods and services listed in your trademark application. This can be important if you ever need to sue someone to enforce your trademark rights.
• Registered trademark owners can file a lawsuit in federal court to enforce their trademarks.
• A U.S. registration can be used as a basis for obtaining a trademark registration in another country.
• You can record a trademark registration with the U.S. Customs and Border Protection Service to prevent infringing goods from being imported.
• Registered trademark owners have the right to use the registered trademark symbol, ®.
• Registered trademarks are listed in the USPTO’s online databases. This may deter others from using your mark.

Using the symbols TM, SM, and ®

The symbol TM notifies the public that you claim a trademark in whatever you have marked with the symbol. Anybody who claims they own a trademark can use the TM symbol—you do not need to register the trademark with the USPTO. Similarly, if you claim that you own a service mark, you can use the symbol SM. You can use these symbols even if the USPTO refuses your application to register your mark.

The circle-R symbol ® signifies a registered trademark.

• You cannot use the ® symbol until the USPTO has approved your application and issued you a registration certificate. Simply filing a trademark registration application does not give you the right to use ®.
• You can only use the ® symbol in connection with the goods or services identified in your trademark application.
• You must keep your registration active to continue to use the registered trademark symbol. You cannot use the symbol if your registration expires or you do not maintain it.

There are no rules about where you must place the TM, SM, or ® symbols, but most companies place them in the upper right corner of the mark.

How long does a trademark registration last?

Trademark registrations last for 10 years and are renewable for additional 10-year periods, but you must file maintenance documents with the USPTO to keep the registration alive. If you do not file the required documents on time, your trademark registration will be permanently canceled.

• Between the fifth and sixth year after registration, you must file a Declaration of Continued Use/Excusable Nonuse of Mark in Commerce Under Section 8, as well as a specimen and fee.
• Between the ninth and tenth year after registration and every 10 years after that, you must file a Declaration of Use and/or Excusable Nonuse/ Application for Renewal Under Sections 8 and 9

The USPTO website has additional information about trademark renewals and declarations of use.

State trademark registration

In addition to federal trademark registration, you can register your trademark with the state where your business is located. State trademark registration can help protect your trademark within that state and is useful when your goods or services are only offered in that state. Still, it does not have the nationwide scope of federal registration. Registration requirements vary from state to state.