Turner Padget Insights
Trademark Registration Basics
Posted On May 7, 2025
A trademark is a critical asset for any business looking to establish brand identity and protect its goods or services in the marketplace. Understanding how trademarks work and how to register them is key to safeguarding your brand and maintaining legal rights to your name, logo, slogan, or other identifying elements.
What Is a Trademark or Service Mark?
A trademark is any word, phrase, symbol, design, or a combination thereof, that identifies and distinguishes the source of goods from one party from those of others. A service mark performs the same function but applies to services rather than physical products. Both serve to build consumer trust and brand recognition.
In this guide, the term “trademark” will refer to both trademarks and service marks unless otherwise noted.
Why Register a Trademark Federally?
Although simply using a mark in commerce can give you some common law rights, federal registration with the United States Patent and Trademark Office (USPTO) provides significant legal advantages. These include:
- Nationwide protection for your mark and a presumption of ownership
- Constructive notice to the public of your ownership
- The ability to bring legal action in federal court
- A basis for obtaining trademark registration in foreign countries
- The ability to record your registration with U.S. Customs to stop the importation of counterfeit goods
These protections can be vital in preventing infringement and strengthening your position in case of legal disputes.
Trademark Symbols and Their Uses
- ™ (TM): Indicates a trademark that has not been federally registered.
- ? (SM): Used for service marks that are unregistered.
- ® (R): Can only be used once your trademark is officially registered with the USPTO.
Using ® before registration is improper and can carry legal penalties. Only use it after your mark is registered and only for the goods or services listed in the registration.
Filing a Trademark Application
You can file a trademark application either electronically via the USPTO’s online system or by mail using a paper form (note: electronic filing is cheaper and more efficient). The application must include:
- The applicant’s name and address
- A drawing or image of the mark
- A list of goods or services the mark applies to
- Filing fee (at least one class of goods/services)
- Specimens showing how the mark is used in commerce (if applicable)
The filing fee for each class of goods or services included in your application is $350.00
Basis for Filing
There are three primary bases for filing a federal trademark application:
- Use in Commerce: The mark is currently being used in connection with goods or services sold or transported across state lines. Acceptable use includes the mark appearing on packaging, labels, advertisements, or websites offering the goods/services.
- Intent to Use: You plan to use the mark in the future. This allows you to reserve rights in the mark while preparing for launch. However, you must file proof of actual use before the registration is finalized and pay an additional fee (currently $100).
- Foreign Basis: If the mark has been registered in another country, you may be able to use that registration to support a U.S. application under international agreements.
What is a Specimen?
A specimen is a real-world example of how your trademark is used in commerce. For goods, a specimen might be a photo of the product label or packaging. For services, it could be a brochure, website screenshot, or business card that clearly references the service being provided.
Specimens are required:
- At the time of filing for use-based applications
- After allowance for intent-to-use applications
The Review Process
Once filed, your application is assigned to a USPTO examining attorney who will:
- Confirm the application meets legal requirements
- Search for similar marks that could cause confusion
- Raise objections or refusals if necessary
If there are issues, you’ll receive an Office Action outlining them. You must respond within six months, or your application will be considered abandoned. If the objections are not overcome, a final refusal may be issued.
Publication and Opposition
If your application is accepted, it is published in the Official Gazette, a public USPTO record. Third parties have 30 days to oppose the registration. If no opposition is filed (or it is unsuccessful), your mark will proceed to registration (if based on use) or you will receive a Notice of Allowance (if based on intent to use).
Maintaining Your Trademark Registration
A trademark registration can last indefinitely, but you must maintain it by filing required documents:
- Between years 5–6: File a Section 8 Declaration of Continued Use
- Optionally after 5 years: File a Section 15 Declaration to make the mark incontestable
- Every 10 years: File a Section 8 and 9 (renewal) to keep the registration active
Failure to file these documents will result in cancellation or expiration of the registration.
Federal trademark registration is an essential step for any business seeking long-term brand protection. From the initial filing to long-term maintenance, understanding the process can help you safeguard your intellectual property and ensure your brand remains a valuable asset. Whether you're launching a new product or growing an established brand, securing your trademark rights is a smart legal investment.
Robert A. Mullins is a business litigator based in Turner Padget’s Augusta, Georgia office where he focuses his practice on trademark and copyright infringement as well as intellectual property, corporate, and environmental law. Robert provides clients with both litigation support and proactive business counseling. If you have questions or need guidance on protecting your business, please reach out to Robert at rmullins@turnerpadget.com to schedule a consultation.
