Tag Archives: USPTO

Proper Use of the Federal Trademark Registration Symbol ® (2026)

30 Wednesday Sep 2026

Posted by in Federal Initiatives, Intellectual Property, Trademark

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As a trademark attorney, I almost always notice whether a company is using the federal registration symbol, ®. From time to time I look the mark up, and there is no registration. Sometimes there is not even an application.

That was the opening of the 2019 version of this post. The rule has not changed, but the mix-ups have gotten more creative.

You may use the ® symbol with a trademark only after the United States Patent and Trademark Office has issued a registration for that mark. Not after you file. Not after the application publishes. Not after an examining attorney issues a notice of allowance. After registration.

Using ® before that can get you into trouble. Knowing and willful misuse can be treated as an attempt to deceive consumers and can support a fraud theory. The USPTO has long said that honest confusion is more common than actual fraud. That is not a license to keep using it anyway.

What the Office still lists as “we hear this a lot”

TMEP §906.02, Improper Use of Registration Symbol, still recognizes the potential for misunderstandings in use of the registration symbol. Here are some common explanations that do not, by themselves, prove fraud:

  • mixing up trademark notice with copyright notice (© can go on a work at first publication; ® cannot go on a mark until registration);
  • the printer did not get instructions, or ignored them;
  • believing that an Indiana state registration, or a foreign registration, authorizes the federal symbol;
  • the registration covers only part of the brand block on the label;
  • the registration covers other goods, not these goods;
  • the registration expired or was cancelled and nobody took the ® off the packaging;
  • another registered mark on the same label is what the symbol was supposed to refer to.

If your facts sound like one of those, fix the artwork. Do not panic.

TM, SM, and ® are not interchangeable

TM means “we claim this as a trademark.” You can use it on an unregistered mark, a pending application, or a common-law use. It is a claim, not a government seal.

SM is the same idea for services.

® means “the USPTO has registered this mark.” It is the only one of the three that requires a live federal registration.

Putting ® on a website footer because the logo “looks official” is how this post keeps getting rewritten.

State registrations do not get you a ®

Indiana will register a trademark through the Secretary of State. That filing has a place. It is not a federal registration. It does not authorize use of the federal symbol. It does not give you nationwide constructive notice. It does not mean the USPTO agrees the mark is clear.

A business can hold an Indiana registration, a pending federal application, and common-law rights in a couple of counties at the same time. Only the federal registration – once it issues – supports ®. The other two support TM or SM, if you want a notice symbol at all.

This blog has already watched local fights where a same-day state filing and a federal application showed up in the same week. Different offices. Different rights. One symbol.

The registration has a scope. The symbol has to follow it.

A registration is for particular goods or services in particular classes. If you are registered for “restaurant services” and you start selling branded hot sauce, the sauce is not registered because the restaurant is. Use TM on the sauce until that class is actually on a certificate.

The same problem shows up in the other direction. The word mark is registered. The new logo is not. Or the logo is registered and the tagline is not. Or the registration lapsed last year and the corrugated box still has ® molded into it.

Look at the certificate. Then look at the thing in the customer’s hand. If they do not match, take the ® off the thing in the customer’s hand.

Pending, allowed, published – still no ®

A serial number is not a registration number. A notice of publication is not a registration. A notice of allowance on an intent-to-use application is not a registration. You still have to file a statement of use, survive examination of that statement, and wait for the certificate.

Intent-to-use applicants are frequent offenders. The mark is sitting in a pitch deck with ® already applied because “we filed.” You filed. You have not registered.

What to do instead

Use TM or SM until the registration issues. When it issues, put ® next to the mark as it appears in the registration, on the goods or services listed in the registration. If you have a house mark registered and a product name that is not, only the house mark gets the ®.

If a registration dies – cancelled, expired, surrendered – the symbol comes off. That includes leftover packaging, the Google Business profile, the email signature, and the sign by the highway.

If you are not sure whether the registration covers a use, that is a clearance question, not a typesetting question. The 2026 fee edition of Should You Register Your Trademark? is the companion piece on whether to file. This one is only about the little R.

Stay tuned for the usual copyright and trademark docket notes.

Kenan L. Farrell, KLF Legal, Indianapolis

Should You Register Your Trademark? (2026 Fee Edition)

23 Wednesday Sep 2026

Posted by in Trademark

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Clients still ask whether it is in their best interest to register a trademark with the U.S. Patent and Trademark Office. The traditional short answer is still: yes, if at all possible, you should register your trademarks.

In January 2025 the USPTO threw out TEAS Plus and TEAS Standard, installed a single “base application,” and started charging extra when the application is incomplete or the goods are typed in free-form. If you bookmarked the 2019 version of this post, the dollar figures on it are antiques.

Registration is still not required. Common-law rights still arise from actual use. The first party to use a mark in commerce, or to file a bona fide intent-to-use application that later matures, still has the better claim in most fights. A registration on the Principal Register still does the useful things it did in 2019: nationwide constructive notice, a presumption of validity and ownership, the right to use the ® symbol, access to the federal courts on a clearer path, and a Customs recordation if you later need one.

None of that is free.

What the USPTO now charges to file

As of the January 18, 2025 fee rule – still the schedule in force in 2026 – an electronic application is:

  • $350 per class for a base application that meets the completeness rules and uses identifications taken from the USPTO ID Manual.
  • +$100 per class if required information is missing at filing (the “insufficient information” surcharge).
  • +$200 per class if any identification is entered in the free-form text box instead of the ID Manual.
  • +$200 per class for each additional 1,000 characters of identification beyond the first 1,000.

A clean one-class filing that uses Manual language and is complete on day one is $350 to the Office. A sloppy one-class filing can be $650 before an examiner has even looked at it. A two-class filing doubles those numbers. Paper filing is $850 per class. Do not file on paper.

Madrid/Section 66(a) applications coming in through WIPO are $600 per class.

Intent-to-use applications add a later bill. A statement of use or amendment to allege use is $150 per class electronically. Extensions of time to file a statement of use remain $125 per class.

What you will spend before you file

Clearance search. The USPTO’s public search system is free and is not enough. A focused knock-out plus attorney review for a single word mark is often in the $300-$600 range. A full U.S. search that includes federal, state, and common-law sources still runs roughly $700-$1,200 once you add professional review. Skipping the search to “save” money is how people fund later cease-and-desist letters and, occasionally, lawsuits this blog writes about.

Attorney time to prepare and file. For a straightforward one-class application, budget $500-$1,200 on top of the USPTO fee, more if the identification is odd, the mark is a logo that needs a description, or there are prior registrations to explain. Office actions are extra. Most of the attorney time after filing is spent answering the first office action, not filling in the form.

A realistic all-in number for a clean one-class use-based filing in 2026, search included, is about $1,200-$2,500. That is higher than the “approximately $800-$1,000” figure in the 2019 post, and it should be. The Office got more expensive. So did everyone else.

What you will spend to keep it

Federal registrations do not die of old age, but they do die of missed maintenance.

  • Section 8 declaration of use (years 5-6): $325 per class
  • Section 9 renewal (years 9-10, and every ten years after): $325 per class
  • Section 15 declaration of incontestability (optional, after five years of continuous use): $250 per class

A combined Section 8 and 15 is $575 per class. A combined Section 8 and 9 at the ten-year mark is $650 per class. Miss the window and you are filing a new application and starting over.

A few things the fee schedule will not tell you

Using the ID Manual is how you stay at $350. That is the Office’s way of saying it would like fewer homemade descriptions of “business services.” If your goods are not in the Manual, pay the $200 and write the identification correctly anyway. A cheap, wrong identification is more expensive than a surcharge.

An Indiana state trademark filing is a different animal and a different price. It is not a substitute for a federal registration if you sell across state lines, online, or anywhere the other party can find a lawyer. It can still be useful locally. It is not nationwide constructive notice.

Intent-to-use is not a loophole for skipping the search. You still have to use the mark, and you still have to pay for the statement of use.

So – should you register?

If the mark is a real business asset and you can budget the filing, yes. The 2019 conclusion still holds: economies rise and fall, and trademark rights can continue indefinitely. The difference in 2026 is that the Office will charge you more for an incomplete form and much more to keep a registration alive at year six and year ten.

Do the search. Use the Manual when you can. File the maintenance on time. And if someone has already sent you a letter about the name, that is a different post.

Kenan L. Farrell, KLF Legal, Indianapolis

What a Cease-and-Desist Letter Actually Does (and Does Not Do) in Indiana

17 Thursday Sep 2026

Posted by in Copyright, Intellectual Property, Litigation, Trademark

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Most Indiana trademark and copyright fights that end up in the Northern or Southern District started with a letter, not a complaint. That letter is usually called a cease-and-desist. It is also one of the most misunderstood pieces of paper in this practice.

A cease-and-desist letter is a demand. It is not a lawsuit, not an injunction, and not a finding that anyone has infringed anything. The recipient does not have to agree with it. The sender does not have to file a case if the letter is ignored. Both of those facts surprise people.

What the letter actually is

In the trademark and copyright matters this blog follows, a C&D is typically a lawyer’s letter that:

  • identifies the mark or work the sender claims;
  • describes the use the sender objects to;
  • asks the recipient to stop that use by a date; and
  • often asks for written confirmation, an accounting, or destruction of inventory.

Sometimes it attaches a registration certificate. Sometimes it attaches screenshots. Sometimes it is two pages. Sometimes it is twenty. Length is not a substitute for a real claim.

Common-law rights can support a letter just as a federal registration can. An Indiana state trademark registration can support one too. None of those pieces of paper turns the letter into an order.

What it can do

Start a conversation that does not require a filing fee. A lot of disputes end here. The recipient rebrands, takes a listing down, or negotiates a short coexistence deal. No docket number is ever assigned. That is a feature, not a failure.

Put the other side on notice. In copyright cases, notice can matter for willfulness and for statutory damages once a registration is in hand. In trademark cases, notice can matter if the dispute later becomes a willfulness or damages fight. The letter is evidence that someone was told, on a date certain, that a senior user objected.

Create a paper trail. If the matter does go to the Northern or Southern District, the complaint will often recite that counsel sent a letter and “was unable to find a suitable resolution.” That sentence is familiar on this blog because it is familiar in the complaints.

Sometimes freeze a use without a TRO. A marketplace seller, a printer, or a small retailer will often pull a listing when they get a letter they take seriously. Amazon, Shopify, and a local sign shop are not going to litigate your brand for you.

Sometimes stop a USPTO application from sailing through. A well-timed letter can lead to an abandonment, an amendment, or a consent agreement before an opposition is even filed. It can also do the opposite and provoke a declaratory-judgment suit. That is a reason to think before you send.

What it does not do

It does not decide who is right. The USPTO may have already allowed a junior mark. A Secretary of State filing may already be sitting in Indianapolis. Neither office has held a trial. A letter from counsel is not a substitute for one.

It does not give you an injunction. Only a court can order someone to stop. Until then, the recipient can keep using the name, keep selling the print, and keep the website up. Many do.

It does not toll a statute or lock in venue. Sending a letter to a Fort Wayne address does not guarantee the case stays in the Northern District. Silence after a letter does not stop a limitations clock by itself.

It does not require the other side to answer. No rule of civil procedure forces a response to a private letter. Some recipients answer through counsel. Some ignore it. Some send their own letter back. All three happen in Indiana.

It does not replace a copyright registration if you want statutory damages and fees. If the plan is a copyright suit, the registration timing rules still apply. A blistering C&D sent the week after the photo went up does not fix a missing registration.

It is not confidential just because you marked it “CONFIDENTIAL” or “FOR SETTLEMENT ONLY.” Labeling helps in some later arguments. It is not a seal. Assume the letter can show up as an exhibit.

Indiana wrinkles worth knowing

Indiana businesses often hold three different kinds of rights at once: common-law use in a county or two, an Indiana state registration, and a federal application or registration. A letter that treats those as the same thing is sloppy. A state registration is not a nationwide right. A federal registration is not a finding that every local user must fold.

The two Indiana districts see a steady run of cases that recite a C&D and then a filing a few weeks or a few months later – food trucks, chiropractors, lawn-care parts, campus events. The letter was the last attempt at a private fix, not the first exhibit in a war plan. When the letter goes out over a holiday week to an institution that is closed, you can expect the reply to be late and the temperature to rise. That is not a legal doctrine. It is a calendar.

There are also files where the better move is not to send a letter: a pending intent-to-use application you do not want to poke, a counterfeiter you do not want to tip before a seizure motion, or a recipient you expect will race to another courthouse for a declaratory-judgment action. “We sent a C&D” is not a required element of a Lanham Act or Copyright Act complaint.

How to read one if it lands on your desk

Read the whole thing, including the exhibits. Check whether the claimed registration actually covers the goods or services in the letter. Check whether the dates work. Do not take the registration symbol in the letterhead as proof of anything by itself. Then decide, with counsel if the risk is real, whether the use is worth keeping.

A short, accurate reply is often better than a long manifesto. A long manifesto is often better than a social-media thread. Neither is required.

How to write one if you are the sender

Be specific about the mark or the work. Be specific about the use. Do not claim a registration you do not have. Do not use the ® symbol on an unregistered mark – this blog has already covered that mistake. Give a date that a human can meet. Say what you want: stop, rebrand, account, assign a domain, sign a consent. “Demand that you cease and desist all infringement” is not a punch list.

If you are not prepared to file in the Northern or Southern District when the date passes, think hard about sending the letter at all. Recipients can tell the difference between a letter that will be followed and a letter that will not.

Stay tuned for the usual Indiana IP litigation docket notes. This one was just about the letter that so often comes first.

Kenan L. Farrell, KLF Legal, Indianapolis

Proper Use of the Federal Trademark Registration Symbol ®

12 Tuesday Mar 2019

Posted by in Branding, Intellectual Property, Trademark

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As a trademark attorney, I almost always notice whether a company is using the federal trademark registration symbol, ®. From time to time, I’ll check out their registration on the United States Patent and Trademark Office (USPTO) database, only to find that the company doesn’t actually have a federal registration, and sometimes not even an application.

It’s important to know that the federal registration symbol may not be used with trademarks until they are actually registered with the USPTO. Using the ® without a registration can get you into trouble. Knowing and willful misuse of the federal registration symbol can be considered an attempt to deceive or mislead consumers and subject you to potential fraud claims.

However, the USPTO acknowledges that misunderstandings about use of the federal registration symbols are more frequent than occurrences of actual fraudulent intent.  Common reasons for improper use of the federal registration symbol that do not indicate fraud are:

  • Mistake as to the requirements for giving notice (confusion often occurs between notice of trademark registration, which may not be given until after registration, and notice of claim of copyright, which must be given before publication by placing the notice © on material when it is first published);
  • Inadvertence in not giving instructions (or adequate instructions) to the printer, or misunderstanding or voluntary action by the printer;
  • The mistaken belief that registration in a state or foreign country gives a right to use the registration symbol
  • Registration of a portion of the trademark
  • Registration of the trademark for other goods
  • A recently expired or cancelled registration of the subject trademark
  • Another trademark to which the symbol relates on the same label

See TMEP §906.02.

Contact a trademark attorney if you have questions about the proper use of the federal trademark registration symbol. 

 

Should You Register Your Trademark?

04 Monday Feb 2019

Posted by in Intellectual Property, Trademark

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Clients often inquire whether it’s in their best interest to register their trademarks with the U.S. Patent and Trademark Office (“USPTO”).

The traditional short answer is: ”Yes, if at all possible, you should register your trademarks!” This advice has been widely echoed by qualified intellectual property attorneys.

The purpose of this post is to give you additional financial information with which you can decide whether to register your trademarks. Some lawyers will tell you it’s “expensive.” The same lawyers might tell other clients that it’s “not expensive.” I’ll provide some real numbers that you can actually put into your budget.

First, keep in mind that registration of  trademarks is not required. Common law rights arise naturally from actual use of a trademark. Generally, the first entity to either use a trademark in commerce or file an intent to use application with the USPTO has the ultimate right to use and registration. However, filing for and receiving a federal trademark registration on the Principal Register provides several advantages:

  • constructive notice to the public of the registrant’s claim of ownership of the mark;
  • a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • the ability to bring an action concerning the mark in federal court;
  • the use of the U.S registration as a basis to obtain registration in foreign countries; and
  • the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Optimally, all trademark owners who consider their trademark a valuable business asset (…and, if not, why continue using the mark?) would like to obtain these advantages.  But registration is not free.  Here are some of the likely fees (based on the USPTO’s current Fee Schedule, last revised January 1, 2019) that you will face before and during the registration procedure:

Clearance Search – Before adopting and using a trademark, it’s advised that a trademark clearance search be performed to determine the availability of the trademark.  This will help determine whether there is another user already using the trademark, i.e. having superior rights in the trademark.  By performing an initial trademark clearance search, a business can avoid incurring liability for trademark infringement and avoid investing resources in a trademark which could be unusable because it infringes another’s trademark rights. Most attorneys will conduct a clearance search at their standard hourly rate. Expect the clearance search to cost $200-400.

A commercial research service like Thomson CompuMark, which conducts a search across numerous databases (federal, state, common law, business databases) will cost around $700.  Add attorney time to review and report on the results.

Application Filing Fee – The official filing fee ranges between $225-$400 (based on the goods/services selected, paper submissions cost more than applications filed online). Your attorney will charge a fee for the application preparation and filing, likely ranging between $400-$1000.

Response to Office Action – Office actions are letters from the USPTO that set forth the legal status of a trademark application. Typically, the examining attorney will set forth various requirements that the applicant must meet before an application can be approved for publication.  A majority of your attorney’s time in the application process will be spent reviewing and responding to the office action.

Looking into the future, you’ll want to keep in mind the renewal costs which will be paid after five (5) years. Expect to pay $500 for each class of goods and services that your trademark protects. (For example, if a band has registered its band name for both “musical services” and “t-shirts,”  it will be paying filing fees for two separate classes of protection. This applies to filing fees also.)

Notwithstanding the renewal costs, and assuming that no extensions, etc. are required, you’re looking at approximately $800-$1000 to file a federal application for one trademark protecting one class of goods/services. On top of the USPTO fees, you’ll be paying your trademark attorney for their time spent gathering information, preparing documents, filing the application and communicating with the USPTO.  Therefore, choosing a trademark attorney who provides excellent service at a lower cost can greatly enhance your bottom line. Also, these are just some of the more common fees you will face in registering your trademark…there may be additional filings/costs associated with your trademark registration, depending on the specifics of your trademark and the strategy of your attorney.

So, should you register your trademark??? The traditional answer still rings true…if fiscally possible, do it. Trademarks are valuable business assets that are typically far greater in value than any costs associated with registration. Always bear in mind that economies rise and fall, but trademark rights can continue indefinitely. Unfortunately, that means that spending less today to protect your trademark rights may allow another party to intervene and lock up important trademark rights for the future.  Also, be sure to consider how licensing opportunities might be affected should you not register your trademarks.

Final practical note:  Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO.  It’s free and reinforces good habits among those wearing the “marketing” hat.