Trademarks are a form of intellectual property. They help consumers identify the source of goods and services. You can register a trademark with the United States Patent and Trademark Office (USPTO) if your mark has been used in commerce and you want to assert exclusive rights over that mark nationwide. In order to obtain federal protection for your trademark, you must meet certain requirements:
If you’re a business owner, you can apply for your trademark. If you’re an individual, or a group of people who are doing business together, or an organization (like a non-profit or charity), then that is also fine.
The question of who can apply for a trademark is answered to some degree by the definition of “person” in the Trademark Act. A person may be an individual, business owner, organization, or group of people doing business together. For example:
- Lana owns and operates a bakery called Cake Cottage. She can file a trademark on her name and logo because she is an individual person doing business as Cake Cottage.
- Lana has filed for bankruptcy protection from creditors (Chapter 7). She will still be able to continue operating her bakery until she receives notification that her discharge will take effect (determined by court order). If this happens before she gets around to applying for trademarks on Cake Cottage’s name and logos, then only Lana herself—not the new owner of Cake Cottage—will have rights under those marks after discharge; however, if it happens after she applies but before issuance of certificates then both respondents (i.e., Lana herself and whoever purchases Cake Cottage) would have rights under those marks upon issuance
Must be a person or legal entity legally capable of owning property.
You must be a person or legal entity legally capable of owning property. For example, you can’t register a trademark on behalf of your pet or your favorite sports team. All applicants must be natural persons (i.e., human beings) or corporations, partnerships and limited liability companies established in good faith that are not obviously fictitious names used for purposes of the registration process.
Must be an individual, partnership, corporation, union, association, or other organization capable of suing and being sued in court.
To register a trademark, you must be an individual, partnership, corporation, union, association or other organization that is capable of suing and being sued in court.
In addition to the requirement that you are a legal entity (a person or group of people), you must further be an organization with sufficient capacity to sue and/or be sued in court. This means that if you are a sole proprietorship or partnership and the business is not incorporated into a corporation so as to have separate legal existence from its owners—you cannot register your trademark because there is no such thing as “sole proprietor” or “partnership” when it comes to trademarks.
If filing as a partnership, at least one member of the partnership must be domiciled in the United States or have a bona fide and effective commercial domicile in the United States.
You can form a partnership by joining with one or more other individuals or entities to carry on a business and share profits. A partnership is formed when two or more persons agree to join together in a business and to share its profits. The partners may be individuals, corporations, partnerships, other unincorporated organizations—virtually any legal entity that can sign contracts and own property.
A partnership must have at least one general partner who manages the enterprise’s activities and participates in management decisions on behalf of the partnership. Limited partners do not manage their businesses but instead delegate this responsibility to someone else, such as another partner or an employee (who is called a general manager).
You can only apply for federal trademark registration if you are the rightful owner of a trademark. If someone else owns it, that person must execute an assignment in writing. If the mark is used by more than one party or entity, each party must apply separately and pay an additional fee for each distinct application.
If you do not own the mark but would like to protect your business in some other way, such as through a state trademark or unfair competition action, you may still have options available to you without filing for federal registration.
In order to register a trademark with USPTO, there must be no likelihood of confusion with another registered mark on record already. This means that any existing trademarks that are similar enough could potentially prevent your desired registration from being approved (resulting in denial).
Before filing your trademark application, you should make sure that your desired mark is not already registered or pending in the USPTO’s trademark databases. You can do this by visiting the Trademark Electronic Search System (TESS) on the USPTO website. This will help to avoid any delays in obtaining registration of your mark.
When conducting a search, you may want to narrow down your search by only including marks with particular characteristics (e.g., words only), trade channels (retail only), industries (food/beverage), etc.
If you are filing an application based on “use in commerce” you will need to provide dates of first use and first use in commerce, as well as actual specimens showing how the mark is used in commerce. You can find more information about this process here.
Filing a trademark application is not 100% guaranteed
If you find yourself unable to come up with a mark that satisfies all of the requirements, don’t worry. The USPTO will review your application and may issue a rejection if it finds that your mark is not distinctive or is confusing with another registered mark. If this happens, you have six months to respond by filing an amendment or requesting an extension of time (also known as an “RCE”).
In conclusion, the USPTO allows anyone to apply for trademark. The applicant must be able to prove that they are the rightful owner of a mark and have been using it in commerce before they can register their trademark with the USPTO. If you are unsure about whether or not your business qualifies for filing an application, it’s important that you contact an experienced attorney.