When registering a trademark with the United States Patent and Trademark Office (USPTO) one must submit a specimen, that is, something showing the use of the mark in commerce. But what qualifies as a specimen? According to the USPTO, a specimen is “an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services.” The USPTO requires a “proper specimen,” which “shows the mark on the actual goods or packaging for the goods.” These proper specimens for goods include “a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods.”
Continue reading "What is a Trademark Specimen?" »
Protecting your trademarks through the United States Patent and Trademark Office is, of course, important, but application alone is not enough. It is more important to see a trademark all the way through to the end of the registration process, especially when it is filed under a 1B “intent to use” application. 1B applications allow those that have yet to use their goods and services in interstate commerce to file for trademark protection. A Statement of Use must be filed within six months after the application's Notice of Allowance is issued to show that the goods or services have been, in fact, used in commerce. This process allows a trademark applicant to protect its mark before using it in commerce, which can be an effective strategy for protecting a mark from theft by another party. But failing to file a timely Statement of Use, or an extension of time to file, can result in the loss of your trademark rights.
Continue reading "Trademark Rights: Registration Alone Isn't Enough" »
What do you do when you, or preferably your trademark-monitoring attorney, find a application in the United States’ Patent and Trademark Office’s database that is likely to confuse consumers because it is similar to your mark? One possible solution is to file an opposition. Every trademark must go through a series of stages on its way to registration, hopefully on the Principal Register. One of these stages, titled publication for opposition, allows a party to oppose the registration of a trademark that it believes is likely to cause confusion with its mark.
Continue reading "The Lifecycle of a Trademark Opposition" »
The USPTO is requiring additional requirements for an applicant filing a trademark with the United States Patent and Trademark Office. The most recent change to the PTO Rules requires a description of the mark in all filings that are not for a standard character mark. This means, for example, that if you are filing for a design mark, you will need to describe what the mark consists of, consistent with the design search codes. Unsuspecting applicant’s may not recognize this rule change, file a trademark as they normally would have, and unnecessarily delay their trademark registration by having to respond to USPTO office actions and amend their trademark application.
Besides the required attention to the ever-changing rules, applicants who choose not to consult with an attorney or have an attorney file their trademark may be subject to fraud charges. Fraud charges may lead to, among other things, a successful trademark registration being cancelled if challenged by an opposer. While an applicant can undoubtedly complete the online form for a trademark application, the average applicant may not understand the intricacies of trademark law, let alone understand that she is submitting sworn documents that, once submitted, can not be remedied. Innocence is no defense, and “I’m sorry” will not cut it. Trademark attorneys can help an applicant avoid the common pitfalls that may subject the trademark to refusal, opposition, or even cancellation. While the actual filing a trademark through the TEAS may appear rather simple, the research required to determine the availability of a trademark, the international class within which to file the trademark, and the accompanying rules that determine likelihood of registration of that trademark require the knowledge, education, and expertise of a trademark attorney. There is no reason to go after what may become your, or your business’s, greatest attest – its intellectual property. Contact a trademark attorney today.
A catchphrase is an expression usually popularized by continued use by individuals or fictional characters. A catchphrase, like a word or design, can be trademarked and entitled to the same protection as such popular trademarks as NIKE and their SWOOSH. Catchphrases have become yet another valuable trademark for companies and individuals alike. Here is a list of some well-known catch phrases as reported on by Caroline Donnelly here.
Continue reading "Trademark a Catchphrase" »
Most businesses spend too little time analyzing and protecting their on-line presence. Many hastily chose a domain name without a trademark availability search. When a prior trademark use or registration results in a cease and desist or threat letter, the company is already too invested in the domain and web traffic to simply walk away. Even worse, companies fail to protect their domain names/URLs as valuable property be securing the registrant information as company property from hackers, employees and business partners or registering variations and typos of the domain as a defensive domain registration strategy. Companies need to appreciate the revenue and business being transacted through their web sites and protect their domain, traffic and web presence as the valuable assets they represent.
» U.S. Businesses rush their Choice of Domain Name Domain Name News, The Domain Industry News, ICANN News, Registry News, Domainer News, Domain U.S. small businesses are rushing their choice of web address, with 42 percent
investing under 1 hour of thought in the decision, according to a
survey released today by 1&1 Internet Inc., the world’s largest web
host by known servers. A survey of 1074 American businesses revealed
that the average business spends less than 12 hours choosing their main
domain name. Some 60 percent of business owners sought no second
opinion before making a selection and over half (57 percent) did not
consider options such as .biz or .net at all.
Andreas Gauger, Chairman of the Board, 1&1 Internet Inc., commented, “The selection of a business’ web address is a crucial decision, businesses should consider all available options before purchasing their primary domain name. As the number of registered domains increases, it’s often the case that the best available domains belong to less obvious suffixes, and it is always advisable to seek external opinion on what a domain could suggest about your business.”
While most U.S. small businesses now recognize the benefits of having a website, the research would suggest few are optimizing their web presence. Some 7 percent of business owners surveyed admit to having forgotten their own domain name.
Gauger added, “Although purchasing a web address should be one of the first steps in launching a business, it is often bought in haste. Every American business must recognize the lasting impact that a domain name can have on sales and image, and business owners shouldn’t delay making necessary changes.”
Technorati Tags: trade mark, brand, marketing, web site
A simple trademark assessment by a competent lawyer can cost anywhere from $350 to $2,000 depending on the breadth of the search. That price is pretty cheap compared to the cost of having an injunction issued against you for trademark infringement. All told, being named as a defendant in a trademark infringement or cybersquatting lawsuit can cost hundreds of thousands of dollars.
In the case discussed below, Palantir Technologies branded its company in 2005 with a name that easily could have been identified in a trademark availability search. A good trademark attorney would have discovered both a prior US trademark registration and a Panantir.net's web site. The common use in a service category which includes databases would have resulted in an attorney opinion that the Palantir name was too high risk.
A Google Search reveals this result for Palantir Technologies. Palantir Technologies : The future of analysis. It turns out Palanir forgot to analyze trademark availability or failed to understand the risks associated with brand name selection of a prior use.
Palantir.net began providing Web design, development, and database services nationally under the Palantir name in 1996. It acquired the palantir.net domain name in 1997. Palantir.net incorporated in 2000 and obtained a federal registration for PALANTIR in 2006. It sells to educational and cultural institutions, as well as financial, corporate, and governmental clients.
Palantir Technologies designs database software for the Central Intelligence Agency and a financial services company. It started offering products under PALANTIR in 2005. It is a small company but it purchases the word “palantir” from Google’s AdWords service and outranks Palantir.net in Google search engine results.
Palantir.net moved for a preliminary injunction enjoining Palantir Technologies from using PALANTIR in advertising. In imposing a preliminary injunction, the court required Palantir Technologies to place on all of its Web sites, including its blog, a “prominent disclaimer that advises viewers that it is different from Palantir.net and that advises viewers how to access Palantir.net.” The court also enjoined Palantir Technologies from “engaging in any Internet advertising under the palantir mark, that is, no more Google advertisements.”
The case cite is Palantir Technologies, Inc. v. Palantir.net, Inc., 2008 WL 152339, No. 07-3863 (N.D. Calif. Jan. 15, 2008).
Seattle Trademark Lawyer - Published by Michael Atkins Palantir.net Gets Preliminary Injunction Against Palantir Technologies
Technorati Tags: brand, marketing, Palantir
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Traverse Legal Attorney Brian Hall provides an overview of the prerequisites needed to enforce trademark rights and obtain a valid trademark registration with the USPTO. Listen as he reviews the benefits of having a trademark registration, including nationwide priority, easy identification, deterrence, presumptions, and the availability of damages. Ultimately, Mr. Hall illustrates the return on investment for trademark registration while highlighting how trademark law can offer numerous benefits to registered trademark owners.
Continue reading "Top 5 Benefits of Trademark Registration" »
The selection of a particular mark that will function as a trademark is very important. This is because the particular mark will be placed on a continuum where the mark will be categorized as fanciful, arbitrary, suggestive, descriptive or generic. The strength of trademark protection varies along the continuum with the greatest protection for fanciful and arbitrary marks, somewhat lesser protection for suggestive marks, even less protection for descriptive marks and finally no protection for generic marks.
Fanciful marks consist of "coined" words or terms that have been invented and do not have a dictionary meaning, such as Kodak, Polaroid or Exxon. Arbitrary marks are those marks that consist of commonplace words, terms or symbols that are used in such a manner that they do not describe the product or service with which they are associated and includes such marks as Black & White for scotch whiskey and Apple for computers. Suggestive marks are familiar words or phrases that are frequently used by publishing and media companies in an inventive way to "suggest" what their product or service really consists of and are the middle ground between arbitrary and descriptive marks; such marks include Nickelodeon for a children's television channel and At A Glance for calendars. Descriptive marks describe the product, service or contents of the product and include such marks as Continuous Progress for educational materials and Personal Finance for a financial investment magazine. Generic marks are names of the product or service itself and these terms cannot function as trademarks; such terms include Aspirin, Consumer Electronics Monthly as a title of a magazine and Pocket Book for paperback books.
After your company has selected a trademark, it is imperative to get a hold of the corresponding domain names in the top-level domains. In this way, your consumers can type: "yourbrand.com" into their browser in order to find your product and company.
However, if you type that into your own browser and find that is already in use, you don't have to scrap the trademark all together. If the original domain name is already taken, you can try a different top-level domain, modify your choice of domain name, or attempt to purchase the registration from the original owner.
If you find that a domain name in relation to your trademark was registered in bad-faith by a third party "cyber-squatter", it is possible to have the domain name transferred to you through arbitration. This however, is rarely a legal issue that can be effectively handled by traditional firms, and should be referred to a firm experienced in domain name disputes.
As soon as your company has selected its new trademark, your company should work to register the respective domain name in at least one of the top-level domains (.com or .info). This is because it will allow your customers to contact your company with nothing more than the trademark that you are marketing.
Registering the domain name can be done through many different registrars, but it is important to find a reputable one, and be fully aware of the rights you hold under the service agreement for that company. There are important questions that must be asked and answered if you intend on maintaining the domain name for as long as your company is around, and to enter into an agreement without knowing your rights to sale and transfer is to seriously inhibit your options in the future.
Contact an attorney today for a free consultation on your rights under the many service agreements for different registrars and enhancing and protecting your trademark on the internet.
While any brand that is registered in the United States goes through the Patent and Trademark Office, if you plan on selling your product outside of this country, the process can be much more complex. This involves using local counsel in each country in which the product or service will be sold. This process can be expedited through the Community Trademark system for European markets, which is administered by the European Union.
If your company is interested in expanding its trademark protection outside of the US you should consult an attorney with a list of interested jurisdictions, which will allow counsel to provide you with estimated costs and formulate a strategy to accomplish the registrations.
Since a trademark is the method through which consumers will remember and choose your product, the selection of the brand you would like to turn into a trademark is one that should be done carefully. Your selection of a trademark is one of the most important decisions that will be made in a brand's lifetime, and so it should not be a decision made in haste, since it is the first step in building the brand recognition that will drive your product and company.
While many companies try to select a trademark that describes the product or service in some way, shape, or form, the opposite is what should be done. A mark that describes the product is generally a weak one because it is going to fail at distinguishing that product or service from those offered by competitors.
A strong mark is one that is distinctive and sets the product or service apart from others. A mark like this will also eliminate any doubt on the part of the consumer as to the source of the product or service.
It is difficult to predict exactly how long it will take an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately three weeks after filing, which will include the serial number of the application. All future correspondence with the USPTO must include this serial number. You should receive a response from the Office within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.
Current status information may be obtained through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/ or by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. Applicants should check on the status of their pending applications every six months.
Once you receive a filing receipt containing the serial number of your application, you may check the status of your application through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/ or by calling the Trademark Assistance Center at 571-272-9250 or 800-786-9199.
When registering your trademark with the Federal government, an applicant is responsible for observing and complying with all
substantive and procedural issues and requirements whether or not
represented by an attorney.
While applicants are not required to hire an
attorney for assistance with trademark filings, there are important questions that must be asked and answered in order to ensure your trademark is registered correctly and your rights are protected. Because of this, it is often
desirable to employ an attorney who is familiar with trademark matters to help in the process.
Contact an attorney today for a free consultation.
For a trademark registration to remain valid, an Affidavit of Use
(Section 8 Affidavit) must be filed:
(1) between the fifth and sixth
year following registration, and
(2) within the year before the end of
every ten-year period after the date of registration.
The registrant
may file the affidavit within a grace period of six months after the
end of the sixth or tenth year, with payment of an additional fee. The
registrant must also file a Section 9 renewal application within the
year before the expiration date of a registration, or within a grace
period of six months after the expiration date, with payment of an
additional fee. Assuming that affidavit of use is timely filed,
registrations granted PRIOR to November 16, 1989 have a 20-year term,
and registrations granted on or after November 16, 1989 have a 10-year
term. This is also true for the renewal periods; renewals granted PRIOR
to November 16, 1989 have a 20-year term, and renewals granted on or
after November 16, 1989 have a 10-year term.
A trademark is intellectual property that may be transferred or
sold. The law permits the transfer or sale of a trademark by means of a
legal document called an Assignment. A properly executed assignment
transfers all rights from the existing owner to another person
(referred to as the Assignee). When the trademark is transferred, the
Assignee becomes the new owner of the trademark and has the same rights
as the original owner. The the U.S. Patent and Trademark Office (USPTO)
records all assignment documents and any document that affects title.
Documents that affect title include, but are not limited to, mergers,
changes of names, security agreements, various liens, licenses, probate
documents, and bankruptcy petitions.
The USPTO Public Search Facility maintains assignment ownership records. The Public Search Facility,
located on the first floor of the Madison East building at 600 Dulany
St. , Alexandria , VA 22313 , is open to the public from 8:00 a.m. to 8
p.m. , Monday through Friday, except Federal holidays. Assignment
information is also available at the Patent and Trademark Depository
Libraries throughout the United States.
It is advisable to conduct a search of the office records before filing an application. A search for pending, registered and dead trademarks may be conducted on the USPTO website using the Trademark Electronic Search System (TESS) or by visiting the Public Search Facility located on the first floor of the Madison East building at 600 Dulany St., Alexandria , VA 22313 between 8:00 a.m. and 8:00 p.m.
Also, certain information may be searched at a Patent and Trademark Depository Library (PTDL). If you need assistance in searching for trademarks, our attorneys, specializing in trademark law, can help.
Contact an attorney for a free consultation.
Copies
of documents in an application file, office
action and copies of the registration certificate, can be ordered by telephone,
fax, and over the Internet. Copies of trademark registrations, shipped via
the U.S. Postal Service, may be purchased for $3 each. To order a copy of a
trademark registration, you must provide the trademark registration number
or complete serial number. Copies of other paperwork within the application
can also be ordered and the fee for such documents will depend on the number
of pages copied. To order other information from an application file, you must
provide the trademark registration number of complete serial number. Checks
or money orders should be made payable to the Director of Patents and Trademarks.
The preferred method of paying for copies is VISA®, Master Card®, Discover®,
and American Express® credit cards or an existing USPTO deposit account.
Orders may be placed via the following methods:
E-mail to dsd@uspto.gov
Phone:(571) 272-3150 or (800) 972-6382 Staff is available Monday through
Friday from 8:30 a.m. - 5:00 p.m. Eastern Time.
Fax: (571) 273-3250 Fax service
is operational 24 hours a day.
Mail:
Mail Stop Document Services
Director
of the U S Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
For
information about expedited delivery services, such as overnight courier or
fax, or our electronic ordering service, please call (571) 272-3150 between
8:30 a.m. - 8:00 p.m. Eastern Time, Monday - Friday.
The definition of interstate commerce is an important one to understand before the decision to federally register a trademark is made.
For goods, "Interstate commerce" involves sending the goods across
state lines with the mark displayed on the goods or the packaging for
the goods. With services, "Interstate commerce" involves offering a
service to those in another state or rendering a service that affects
interstate commerce (e.g. restaurants, gas stations, hotels, etc.).
What is the difference between TM or SM and the encircled R?
Use of the TM and SM symbols may be governed by local, state, or
foreign laws and the laws of a pertinent jurisdiction to identify the
marks that a party claims rights to. The federal registration symbol,
the R enclosed within a circle, may be used once the mark is actually
registered in the USPTO. Even though an application is pending, the
registration symbol may not be used before the mark has actually become
registered.
The federal registration symbol should only be
used on goods or services that are the subject of the federal trademark
registration.
PLEASE NOTE: Several foreign countries use
the letter R enclosed within a circle to indicate that a mark is
registered in that country. Use of the symbol by the holder of a
foreign registration may be proper.
Federal trademark registration has several benefits:
- Constructive notice nationwide of the trademark owner's claim.
- Evidence of ownership of the trademark.
- Jurisdiction of federal courts may
be invoked.
- Registration can be used as a basis for obtaining registration
in foreign countries.
- Registration may be filed with U.S. Customs Service
to prevent importation of infringing foreign goods.
To get more information regarding the rights and benefits of a federal trademark, contact an attorney for a free consultation.
Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times. In general, the owner of a registration must periodically file:
- Affidavits of Continued Use or Excusable Nonuse under 15 U.S.C. §1058; and
- Applications for Renewal under 15 U.S.C. §1059.
Forms for filing these documents are available at http://www.uspto.gov/teas/. For further information on maintaining a federal trademark registration, please contact the Post Registration Division at (571) 272-9500.
Before the USPTO will register a mark that is based upon a bona fide intention to use the mark int commerce, the owner must:
- use the mark in commerce; and
- file an Allegation of Use.
What is an Allegation of Use?
An Allegation of Use is a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With the Allegation of Use, the owner must submit:
- a filing fee of $100 per class of goods/services; and
- one specimen showing use of the mark in commerce for each class of goods/services.
A form for filing the allegation of use is available at http://www.uspto.gov/teas/eTEASforms.htm.
When do I file an Allegation of Use?
You may file the Allegation of Use only
- on or before the day the examining attorney approves the mark for publication in the Official Gazette (an Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use); or
- on or after the day the USPTO issues the Notice of Allowance (an Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use).
The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed. If you file an Allegation of Use between the period after the mark is approved for publication but before the Notice of Allowance is issued, the USPTO will return it.
Is there a deadline for filing the Statement of Use after the Notice of Allowance issues?
Yes. Once the USPTO issues the Notice of Allowance, you have six (6) months to file the Statement of Use. The six-month period runs from the date the USPTO issues the Notice of Allowance, not the date you receive it. If you have not used the mark in commerce, you must file a Request for an Extension of Time to File a Statement of Use (Extension Request) before the end of the six-month period, or the application will be declared "abandoned."
What is a Request for an Extension of Time to file a Statement of Use?
An Extension Request is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner, stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee of $150 per class of goods/services must accompany the Extension Request. The form for filing the Extension Request is available at http://www.uspto.gov/teas/eTEASforms.htm.
The Extension Request, if granted, gives the owner an additional six (6) months to either:
- use the mark in commerce and file a Statement of Use; or
- file another Extension Request.
You may continue to file Extension Requests every six (6) months. However, you must use the mark and file a Statement of Use within three (3) years of the date the Notice of Allowance issues. The USPTO will not register a mark if, after thirty-six (36) months of the mailing date of the Notice of Allowance, no Statement of Use has been filed.
If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published.
If the mark is published based upon the applicant's bona fide intention to use the mark in commerce, the USPTO will issue a NOTICE OF ALLOWANCE about twelve (12) weeks after the date the mark was published, if no party files either an opposition or request to extend the time to oppose. The applicant then has six (6) months from the date of the NOTICE OF ALLOWANCE to either:
- use the mark in commerce and submit a STATEMENT OF USE; or
- request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE.
Both forms are available at http://www.uspto.gov/teas/eTEASforms.htm. If the STATEMENT OF USE is filed and approved, the USPTO will issue the registration certificate.
If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.
The USPTO will send a NOTICE OF PUBLICATION to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.
After the USPTO determines that you have met the minimum filing requirements, the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes and includes all required fees. Federal registration of trademarks is governed by the Trademark Act of 1946, 15 U.S.C. §1051 et seq., and the Trademark Rules of Practice, 37 C.F.R. Part 2.
A complete examination includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.
If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office action, the applicant’s response to the Office action must be received in the Office within six months of the mailing date of the Office action, or the application will be declared abandoned.
If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO.
Does the examining attorney search for conflicting marks?
Yes. After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:
- the similarity of the marks; and
- the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.
If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.
Can I search for conflicting marks before filing?
Yes. You should search the USPTO records before filing your application to determine if any party is already claiming rights in a particular mark. You may conduct a search on-line at http://tess2.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk, or by visiting the USPTO USPTO Public Search Facility – Madison East, 1 st Floor, 600 Dulany Street, Alexandria, Virginia. The library is open between 8:00 a.m. – 5:00 p.m., Monday through Friday. Both on-line searching and use of the Public Search Facility are free.
Additionally, registered and pending trademarks may be searched at a Patent and Trademark Depository Library (PTDL). PTDLs are located throughout the U.S. See PTDL for a listing of their locations, or http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html. Private trademark search firms will conduct a search for a fee. A listing of search firms can be found in the Yellow Pages of local phone directories or through an Internet search. The USPTO cannot assist you in selecting a search firm.
You can check the status of any pending application or registration through the Trademark Application and Registration Retrieval (TARR) database, available on-line at http://tarr.uspto.gov. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199, to request a status check.
Are there other reasons the examining attorney might refuse my mark?
Yes. In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:
- primarily merely descriptive or deceptively misdescriptive of the goods/services;
- primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services;
- primarily merely a surname; or
- ornamental.
Filing a trademark application is something that you might accomplish for yourself. However, hiring an attorney who specializes in trademark registration is often preferable. There are significant questions that must be asked and answered in order to ensure that the registration is done properly.
Traverse Legal specializes in trademark and service mark registration. You may contact an attorney for a free consultation.
What must the application include?
An application must include the following elements before the USPTO will accept it:
- the name of the applicant;
- a name and address for correspondence;
- a clear drawing of the mark;
- a listing of the goods or services; and
- the filing fee for at least one class of goods or services.
If your application does not meet these requirements, the USPTO will return the application papers and refund any fees submitted.
If you file a paper application, and it meets the minimum filing requirements, the USPTO will assign a serial number and send a filing receipt. You should review this receipt for accuracy, and notify the USPTO of any errors, following the directions on the receipt.
An electronically-filed application must include the same information to receive a filing date. However, at the time of filing, an e-mail summary, including a serial number, is sent. No paper filing receipt is generated. If through later review the USPTO determines that the application did not include the required information, we will cancel the serial number and filing date, return the application, and refund the filing fee.
If you transmit your application over the Internet, the filing date is the date the transmission reaches the USPTO server. Otherwise, the filing date of an application is the date the USPTO receives the application.
NOTE: Receiving a filing date does not mean that you have satisfied ALL registration requirements. To obtain a registration, you must comply with all application requirements, and overcome any refusal(s) issued by the examining attorney during examination.
Although only the minimum filing requirements must appear in your initial application to receive a filing date, submitting all available information requested in the application form will help reduce delays in processing your application.
The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. We do not decide whether you have the right to use a mark (which differs from the right to register). Even without a registration, you may still use any mark adopted to identify the source of your goods and/or services. Once a registration issues, it is up to the owner of a mark to enforce its rights in the mark based on ownership of a federal registration.
USPTO employees will gladly answer questions about the application process. However, USPTO employees cannot:
- conduct trademark searches for the public;
- comment on the validity of registered marks;
- answer questions on whether a particular mark or type of mark is eligible for trademark registration; or
- offer legal advice or opinions about common law trademark rights, state registrations, or trademark infringement claims.
Is registration of my mark required?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,
- 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.
When can I use the trademark symbols TM, SM and ®?
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. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
What is a trademark or service mark?
- A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.
- A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms "trademark" and "mark" refer to both trademarks and service marks.
Do Trademarks, Copyrights and Patents protect the same things?
No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention. For copyright information, go to http://lcweb.loc.gov/copyright/. For patent information, go to http://www.uspto.gov/main/patents.htm.
Yes. You should search the USPTO records before filing your application to determine if any party is already claiming rights in a particular mark. You may conduct a search on-line or by visiting the USPTO Trademark Public Search Library at 2900 Crystal Drive, 2nd Floor, Arlington, Virginia. The library is open between 8:00 a.m. – 5:00 p.m., Monday through Friday. Both on-line searching and use of the Public Search Library are free.
Additionally, registered and pending trademarks may be searched at a Patent and Trademark Depository Library (PTDL). PTDLs are located throughout the U.S. See PTDL for a listing of their locations, or http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html. Private trademark search firms will conduct a search for a fee. A listing of search firms can be found in the Yellow Pages of local phone directories or through an Internet search. The USPTO cannot assist you in selecting a search firm.
You can check the status of any pending application or registration through the Trademark Application and Registration Retrieval (TARR) database, available on-line at http://tarr.uspto.gov, or by calling the Trademark Status Line at (703) 305-8747.
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