trademark n registration basic facts

7/28/2019 Trademark n Registration Basic Facts

http://slidepdf.com/reader/full/trademark-n-registration-basic-facts 1/30

Protecting Your Trademark

Basic Facts About TrademarksUnited States Patent and Trademark Ofce

ENHANCING YOUR RIGHTS

THROUGH FEDERAL REGISTRATION



MESSAGE FROM THE USPTO

Tank you or requesting a copy o this booklet. We oer many more resources on therademarks Home page (http://www.uspto.gov/trademarks/index.jsp). I you decide to lea trademark application, we strongly encourage you to le electronically and to authorize theUSPO to communicate with you by e-mail.

Our website resources

For general inormation and links to Frequently AskedQuestions, processing timelines, the Trademark Manual o Examining Procedure (TMEP), and the Acceptable Identication o Goods and Services Manual (ID Manual).

rademark Inormation Network (MIN) Videos

Tools

Search pending and registered marks using therademark Electronic Search System (ESS).

File applications and other documents online using the

rademark Electronic Application System (EAS).

Check the status o an application and view and downloadapplication and registration records using rademark Status and Document Retrieval (SDR) (combiningARR and DR).

ranser (assign) ownership o a mark to another entity or change the owner name and search the assignments database.

Visit the rademark rial and Appeal Board (AB) online.

http://www.uspto.gov/trademarks/index.jsp

http://tess2.uspto.gov/tmdb/tmep/


http://tess2.uspto.gov/netahtml/tidm.html


http://www.uspto.gov/trademarks/process/TMIN.jsp

http://tess2.uspto.gov/

http://www.uspto.gov/trademarks/teas/

http://www.uspto.gov/trademarks/interim_TSDR.jsp



http://www.uspto.gov/trademarks/process/assign.jsp


http://www.uspto.gov/trademarks/process/appeal/

http://www.uspto.gov/trademarks/process/appeal/





http://www.uspto.gov/trademarks/teas/

http://tess2.uspto.gov/

http://www.uspto.gov/trademarks/process/TMIN.jsp





http://www.uspto.gov/trademarks/index.jsp



Protecting Your Trademark

Enhancing Your Rights

Through Federal Registration

United States Patent and Trademark Ofce

An Agency o the United StatesDepartment o Commerce



UNITED STATES PATENT AND TRADEMARK OFFICE

CONTENTS

TRADEMARK, COPYRIGHT, OR PATENT � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �1

CONSIDERATIONS FOR FEDERAL REGISTRATION WHEN SELECTING A MARK � � � � � � � � � � � � � � � � � � � � � � �2

TRADEMARK SEARCHING � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �5

PRIVATE TRADEMARK ATTORNEYS AND HOW TO FIND ONE � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �6

SHOULD I REGISTER MY MARK? � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �7

WHAT THE USPTO DOES AND DOES NOT DO � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �7

HOW TO FILE A TRADEMARK APPLICATION � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �8

WHAT A FILING DATE IS AND HOW IT IS DETERMINED � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � 9

INFORMATION TO INCLUDE IN THE APPLICATION � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �10

OWNER OF THE MARK (APPLICANT) � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �10

NAME AND ADDRESS FOR CORRESPONDENCE � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �10

DEPICTION OF THE MARK (“THE DRAWING”) � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �12

GOODS/SERVICES � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �14

APPLICATION FILING FEE � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �15

BASIS FOR FILING � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �15

SPECIMEN FOR USE-BASED APPLICATIONS � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �17

SIGNATURE � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �19

WHAT HAPPENS AFTER FILING AND WHAT TO DO � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �19

LEGAL AND PROCEDURAL REVIEW OF APPLICATION � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �20

PUBLICATION FOR OPPOSITION � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �20

WHAT HAPPENS AFTER PUBLICATION? � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �20REGISTRATION CERTIFICATE ISSUES FOR “USE-IN-COMMERCE” APPLICATION � � � � � � � � � � � � � � � � � � � � �21

NOTICE OF ALLOWANCE (NOA) ISSUES FOR “INTENT-TO-USE” APPLICATION � � � � � � � � � � � � � � � � � � � � � �21

HOW TO ESTABLISH USE OF THE MARK FOR AN “INTENT-TO-USE” APPLICATION � � � � � � � � � � � � � � � � � � �21

MAINTAINING A FEDERAL TRADEMARK REGISTRATION � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �22

FEES FOR FILING TRADEMARK-RELATED DOCUMENTS � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �23

FOR MORE INFORMATION � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � � �24



1

BASIC FACTS ABOUT TRADEMARKS

TRADEMARK, COPYRIGHT, OR PATENT

What is a trademark or service mark?

•Atrademarkisgenerallyaword,phrase,symbol,ordesign,oracombinationthereof,thatidenties and distinguishes the source o the goods o one party rom those o others.

• Aservicemarkisthesameasatrademark,exceptthatitidentiesanddistinguishesthesourceo a service rather than goods. Troughout this booklet, the terms “trademark” and “mark”reer to both trademarks and service marks.

Do trademarks, copyrights, and patents protect the same things?

No. rademarks, copyrights, and patents protect dierent types o intellectual property. Atrademark typically protects brand names and logos used on goods and services. A copyrightprotects an original artistic or literary work. A patent protects an invention. For example, i youinvent a new kind o vacuum cleaner, you would apply or a patent to protect the invention itsel.

You would apply to register a trademark to protect the brand name o the vacuum cleaner. And youmight register a copyright or the V commercial that you use to market the product.

For copyright inormation, go to www.copyright.gov . For patent inormation, go towww.uspto.gov/patents.

o help evaluate your overall awareness o intellectual property knowledge and to provide accessto additional educational materials based on the assessment results, please use the IntellectualProperty Awareness Assessment tool, available at http://www.uspto.gov/inventors/assessment/.

How do domain names, business name registrations, and trademarks dier?

A domain name is part o a web address that links to the internet protocol address (IP address)o a particular website. For example, in the web address “www.uspto.gov ,” the domain name is“uspto.gov.” You register your domain name with an accredited domain name registrar, not throughthe USPO. A domain name and a trademark dier. A trademark identies goods or services asbeing rom a particular source. Use o a domain name only as part o a web address does not qualiy as source-indicating trademark use, though other prominent use apart rom the web address may qualiy as trademark use. Registration o a domain name with a domain name registrar does notgive you any trademark rights. For example, even i you register a certain domain name with adomain name registrar, you could later be required to surrender it i it inringes someone else’strademark rights.

Similarly, use o a business name does not necessarily qualiy as trademark use, though other useo a business name as the source o goods or services may qualiy it as both a business name and atrademark. Many states and local jurisdictions register business names, either as part o obtaininga certicate to do business or as an assumed name ling. For example, in a state where you willbe doing business, you might le documents (typically with a state corporation commission orstate division o corporations) to orm a business entity, such as a corporation or limited liability

http://www.copyright.gov/

http://www.uspto.gov/patents

http://www.uspto.gov/inventors/assessment/

http://www.uspto.gov/

http://www.uspto.gov/

http://www.uspto.gov/inventors/assessment/

http://www.uspto.gov/patents

http://www.copyright.gov/



2


company. You would select a name or your entity, or example, XYZ, Inc. I no other company

has already applied or that exact name in that state and you comply with all other requirements,

the state likely would issue you a certicate and authorize you to do business under that name.

However, a state’s authorization to orm a business with a particular name does not also give you

trademark rights and other parties could later try to prevent your use o the business name i they

believe a likelihood o conusion exists with their trademarks.

CONSIDERATIONS FOR FEDERAL REGISTRATION WHEN

SELECTING A MARK

Once you determine that the type o protection you need is, in act, trademark protection, then

selecting a mark is the very rst step in the overall application/registration process. Tis must

be done with thought and care, because not every mark is registrable with the USPO. Nor is

every mark legally protectable, that is, some marks may not be capable o serving as the basis or

a legal claim by the owner seeking to stop others rom using a similar mark on related goods or

services. Businesses and individuals new to trademarks and the application/registration processoen choose a mark or their product or service that may be dicult or even impossible to register

and/or protect or various reasons. Beore ling a trademark/service mark application, you should

consider (1) whether the mark you want to register is registrable, and (2) how dicult it will be to

protect your mark based on the strength o the mark selected. Note in this regard that the USPO

only registers marks. You, as the mark owner, are solely responsible or enorcement.

Below are some actors to consider when choosing a mark. While the USPO can provide the

ollowing general guidance, the agency does not advise you in advance o your ling an application

whether your specic mark is registrable.

Likelihood o Conusion with Other Marks

Te USPO examines every application or compliance with ederal law and rules. Te most

common reason to reuse registration is a “likelihood o conusion” between the mark o the

applicant and a mark already registered or in a prior-led pending application owned by another

party. Te USPO determines that a likelihood o conusion exists when (1) the marks are similar,

and (2) the goods and/or services o the parties are related such that consumers would mistakenly

believe they come rom the same source. Each application is decided on its own acts and no simple

mechanical test is used to determine whether a likelihood o conusion exists. Tereore, beore

ling your non-reundable application, it is very important or you to determine whether your

proposed mark is likely to cause conusion with another mark. Tis determination can be made

only aer doing a thorough trademark search, as discussed below.

Example o a likelihood o conusion:

.MARKEY or “shoes” and EE MARQEE or “shirts.” Te marks are similar because they

sound identical; and although the goods dier, they are considered related or the purposes

o a likelihood o conusion analysis.



3


Strong v. Weak Marks

In addition to selecting a mark that is not likely to be conused with any pre-existing marks, it is

in your best interest to select a mark that is considered “strong” in a legal or trademark sense, i.e.,a mark that will most easily allow you to prevent third-party use o your mark. Some marks are

easier to protect than others and these are considered “strong” marks.On the other hand, i a mark is “weak,” it most likely is descriptive and others are already using itto describe their goods or services, making it dicult and costly to try to police and protect. Weak marks should be avoided; they simply do not have the same legal protections o a stronger and more

distinctive mark.

Generally, marks all into one o our categories: anciul or arbitrary, suggestive, descriptive, orgeneric. Te category your mark alls into will signicantly impact both its registrability and your

ability to enorce your rights in the mark.

Te strongest and most easily protectable types o marks are anciul marks and arbitrary marks,

because they are inherently distinctive. Fanciul marks are invented words with no dictionary or other known meaning. Arbitrary marks are actual words with a known meaning that haveno association/relationship with the goods protected. Fanciul and arbitrary marks are registrableand, indeed, are more likely to get registered than are descriptive marks. Moreover, because these

types o marks are creative and unusual, it is less likely that others are using them.

Examples o anciul and arbitrary marks:

Fanciul: BELMICO or “insurance services”

Arbitrary: BANANA or “tires”

Suggestive marks suggest, but do not describe, qualities or a connection to the goods orservices. Suggestive marks are registrable and are also considered “strong” marks. I you do notchoose a anciul or arbitrary mark, a suggestive mark is your next best option.

Examples o suggestive marks:

QUICK N’ NEA or “pie crust”

GLANCE-A-DAY or “calendars”

Descriptive marks are words or designs (e.g., depiction o a television or “television repairservices”) that describe the goods and/or services. Such marks are generally considered “weaker”

and thereore more dicult to protect than anciul and arbitrary marks. I the USPO determinesthat a mark is “merely descriptive,” then it is not registrable or protectable on the Principal Registerunless it acquires distinctiveness-- generally through extensive use in commerce over a ve-yearperiod or longer. Descriptive marks are considered “weak” until they have acquired distinctiveness.

Applicants oen choose (requently at the suggestion o marketing proessionals) descriptive marks



4


or their goods and/or services, believing that such marks reduce the need or expensive consumereducation and advertising because consumers can immediately identiy the product or servicebeing oered directly rom the mark. Tis approach, while perhaps logical marketing advice, oenleads to marks that cannot be easily protected, i.e., to extremely weak trademark rights. Tat is,a descriptive mark may not be registrable or protectable against later users o identical or similar

marks; thereore, adoption o a descriptive mark may end up costing more money in the long term,either due to higher costs to try to police and enorce such a mark, or because it may be legally necessary to stop using the descriptive mark and select a new mark.

Examples o descriptive marks:

CREAMY or “yogurt”

WORLD’S BES BAGELS or “bagels”

Generic words are the weakest types o “marks” (and cannot even qualiy as “marks” in the legalsense) and are never registrable or enorceable against third parties. Because generic words are

the common, everyday name or goods and services and everyone has the right to use such termsto reer to their goods and services, they are not protectable. Be aware that i you adopt a genericterm to identiy your goods or services, you will not be able to prevent others rom using it toidentiy potentially competing products or services. In addition, even a anciul mark that is very strong can, over time, become generic i the owner ails to police use o its mark properly and takeappropriate action. Without proper policing over time, the original owner o a mark could lose any trademark rights it has in the mark.

Examples o generic marks:

Applied-or trademarks that would be considered generic at the time o ling because they are the name o the good or product oered by the service:

BICYCLE or “bicycles” or “retail bicycle stores”

MILK or “a dairy-based beverage”

rademarks that eventually became generic because o long-term widespread, non-trademark use:

ESCALAOR or “moving staircases,” ASPIRIN or “pain relie medication”

Other Potential Grounds or the USPTO to Reuse Registration

Te USPO will also reuse registration o a proposed mark or many other reasons, including butnot limited to the mark being: a surname; geographically descriptive o the origin o the goods/services; disparaging or oensive; a oreign term that translates to a descriptive or generic term; anindividual’s name or likeness; the title o a single book and/or movie; and matter that is used in apurely ornamental manner. While some o these reusals are an absolute bar to registration, othersmay be overcome by evidence under certain circumstances. For more inormation about these



5


and other possible reusals, see Chapter 1200 o the Trademark Manual o Examining Procedure

(TMEP) at http://tess2.uspto.gov/tmdb/tmep/.

Other Factors in Selecting a Mark

You should also consider other important actors when selecting your mark, such as whether the

public is likely to be able to remember, pronounce, and spell the selected mark. I you plan tomarket your goods or services outside the United States under the same mark, consider whetherthe U.S. mark might have another meaning when translated into a oreign language, particularly i,

or example, the translated word could be considered oensive.

TRADEMARK SEARCHING

Why should I do a trademark search?

Conducting a complete search o your mark beore ling an application is very important because

the results may identiy potential problems, such as a likelihood o conusion with a prior registeredmark or a mark in a pending application. A search could save you the expense o applying or amark in which you will likely not receive a registration because another party may already have

stronger rights in that mark. Also, the search results may show whether your mark or a part o your mark appears as generic or descriptive wording in other registrations, and thus is weak and/

or dicult to protect.

How do I search?

Te USPO oers a ree search system known as ESS (rademark Electronic Search System),available 24-7 through http://www.uspto.gov/trademarks at “ESS search trademarks.” Te

ESS Help Page at http://tess2.uspto.gov/webaka/html/help.htm includes inormation, with somesample search strategies, on how to search the USPO’s database o registered and prior pendingapplications to help determine whether any marks therein could prevent registration o your mark

due to a likelihood o conusion. Te USPO will not search your mark or you prior to your

ling an application. Aer ling and as part o the examination o your application, the USPOwill conduct a search o your mark and will let you know the results o that search. I the USPO

nds another registered mark or earlier-led pending mark conusingly similar to yours or related

goods/services, it will reuse to register your mark.

Alternatively, you can search the ESS database at a Patent and rademark Resource Center(PRC). Inormation about PRC locations is available through www.uspto.gov under “Products

& Services.”

Be aware that any searches you conduct on ESS are limited to the USPO’s database o ederaltrademark applications and registrations and do not include the marks o other parties who may

have trademark rights but no ederal registration. In the United States, parties are not required to

register their marks to obtain protectable rights. Tereore, you should seriously consider whether

http://tess2.uspto.gov/tmdb/tmep/1200.htm

http://tess2.uspto.gov/webaka/html/help.htm

http://tess2.uspto.gov/webaka/html/help.htm




6


to hire a trademark attorney to assist you with a “ull” or “comprehensive” trademark search, as

discussed below.

PRIVATE TRADEMARK ATTORNEYS AND HOW TO FIND ONE

Do I need a lawyer?

Filing a trademark application at the USPO starts a legal proceeding that may be complex and will

require you to comply with all requirements o the trademark statute and rules. Most applicants hire

an attorney who specializes in trademark matters to represent them in the application process and

provide legal advice. While a USPO trademark examining attorney will try to help you through

the process even i you do not hire a lawyer, no USPO attorney may give you legal advice. Once

you hire an attorney, the USPO will only communicate with your attorney about your application.

A private trademark attorney can help you beore, during, and aer the trademark application

process, including helping you police and enorce the trademark registration that may issue rom

your application. While you are not required to have an attorney, an attorney may save you

rom uture costly legal problems by conducting a comprehensive search o ederal registrations,

state registrations, and “common law” unregistered trademarks—all done beore you le your

application. Comprehensive searches are important because other trademark owners may have

stronger protected legal rights in trademarks similar to yours even though they are not ederally

registered. Tereore, those unregistered trademarks will not appear in the USPO’s rademark

Electronic Search System (ESS) database but could still ultimately prevent you rom using

your mark even i the USPO registers your mark.

In addition, trademark lawyers can help you navigate the application process to provide optimal

protection o your trademark rights, by, or example, accurately identiying and classiying yourgoods and services, and preparing responses to any reusals to register that an examining attorney

may issue. Further, a private attorney can help you understand the scope o your trademarks rights

and advise you on the best way to police and enorce those rights, including what to do i other

trademark owners allege that you are inringing their mark. Remember, enorcement o trademark

rights is your responsibility, not that o the USPO.

How do I nd a trademark attorney?

o locate an attorney, consult your local telephone listings, the Internet, or contact the attorney

reerral service o a state bar or local bar association (or assistance in that regard, see the American

Bar Association’s Consumers’ Guide to Legal Help, at http://apps.americanbar.org/legalservices/

ndlegalhelp/home.cm). Te USPO cannot provide you with legal advice or help you select an

attorney.



7


SHOULD I REGISTER MY MARK?

Is ederal registration o my mark required?

No. You can establish rights in a mark based on use o the mark in commerce, without a registration.However, owning a ederal trademark registration on the Principal Register provides a number o advantages, including:

• Alegalpresumptionofyourownershipofthemarkandyourexclusiverighttousethemarknationwide on or in connection with the goods/services listed in the registration (whereas astate registration only provides rights within the borders o that one state);

• Publicnoticeofyourclaimofownershipofthemark;

• Listinginthe USPTO’sonlinedatabases;

• eabilitytorecordtheU.S.registrationwiththeU.S.CustomsandBorderProtectionServiceto prevent importation o inringing oreign goods;

• erighttousethefederalregistrationsymbol“®”;

• eabilitytobringanactionconcerningthemarkinfederalcourt;and

• euseoftheU.S.registrationasabasistoobtainregistrationinforeigncountries.

When can I use the trademark symbols TM, SM, and®?

I you claim rights to use a mark, you may use the “M” (trademark) or “SM” (service mark)designation to alert the public to your claim o ownership o the mark, regardless o whether youhave led an application with the United States Patent and rademark Oce (USPO). However,

you may only use the ederal registration symbol “®” aer the USPO actually registers a mark,and not while an application is pending. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the ederal trademark registration. However,no specic requirements exist as to the precise use o the “®” symbol as to placement, e.g., whetherused in a subscript or superscript manner. Note: Several oreign countries use “®” to indicate thata mark is registered in that country. Use o the symbol by the holder o a oreign registration may be proper.

WHAT THE USPTO DOES AND DOES NOT DO

What does the USPTO do?

Te USPO reviews trademark applications and determines whether the applied-or mark meets the requirements or ederal registration. USPO employees will answer general questionsabout the application process at no charge. Contact the rademark Assistance Center (AC) [email protected] or 1-800-786-9199. Note: Te USPO cannot provide any



8


sort o inormation in the nature o “legal advice.” For legal advice, please consider contacting an

attorney who specializes in intellectual property.

What does the USPTO not do?

Te USPO does not:

• Decidewhetheryouhavetherighttouseamark(whichdiersfromtherighttoregister).No

law requires that you ederally register your mark in order to acquire rights in the mark;

• Enforceyourrightsinthemarkorbringlegalactionagainstapotentialinfringer.

• Conducttrademarksearchesforthepublic;

• Commentonthevalidityofregisteredmarks;

• Assistyouwithpolicingyourmarkagainstinfringers;

• AssistyouwithrecordationofyourmarkwithU.S.CustomsandBorderProtection;• Answerquestionspriortolingonwhetheraparticularmarkortypeofmarkiseligiblefor

trademark registration; or

• Oer legal advice or opinions about common law trademark rights, state registrations, or

trademark inringement claims.

HOW TO FILE A TRADEMARK APPLICATION

Is there a orm or ling my application?

Yes. You can le your application directly over the Internet using the rademark Electronic

Application System (EAS) at http://www.uspto.gov/teas. wo options are available: regular EAS

and EAS Plus. Both options allow you to pay by credit card, electronic unds transer, or through

an existing USPO deposit account. Electronic ling has many advantages over ling on paper,

including:

• On-line help. Hyperlinks provide help sections for each of the application elds. Help is

also available rom [email protected] and rom the rademark Assistance Center (AC)

([email protected] or 1-800-786-9199).

• Validation function. TEAS checks information to help avoid the omission of important

inormation.

• Immediatereply.eUSPTOimmediatelyissuesaninitiallingreceiptviae-mailcontaining

the assigned application serial number and a summary o the submission.

• 24-houravailability.TEASisavailable24hoursa day,7 daysa week(except2a.m.to6a.m.



9


Sundays when you cannot pay by credit card, although you can create orms and save them orlater ling). You can receive a ling date until midnight Eastern Standard ime on any date.

• Lowerlingfees.elingfeeforusingTEASislowerthanthefeeforlingonpaper.Ifyouuse the EAS Plus orm, the ee is even lower than the regular EAS application.

• Moreaccuratelingreceipts.Mostofyourinformationistransferreddirectlyfromwhatyouenter into the database and is generally not re-entered by hand at the USPO.

I you do not have Internet access, you can access EAS at any Patent and rademark ResourceCenter (PRC) throughout the United States (see http://www.uspto.gov/products/library/ptdl/locations/index.jsp). Many public libraries also provide Internet access.

What is the dierence between the regular TEAS and the TEAS Plus applicationoptions?

Te ling ee or a regular EAS application is $325 per class o goods/services. Te EAS Plus

application has a lower ling ee o $275 per class o goods/services, and you must meet certainadditional requirements. For example, you must be able to select an entry or entries rom theUSPO’s Acceptable Identication o Goods and Services Manual (ID Manual) (available athttp://tess2.uspto.gov/netahtml/tidm.html) that accurately describe your goods/services.Additionally, you must le communications regarding the application through EAS, andreceive communications concerning the application by e-mail. I you ail to meet the EAS Plusrequirements, the USPO will require that you pay an additional ee o $50 per class.

Can I le other than by the Internet?

Yes. We recommend using EAS, but you may le a paper application at a higher cost o $375 perclass o goods/services. o obtain a printed orm, call the USPO’s automated telephone line at1-800-786-9199. Our mailing address is Commissioner or rademarks, P.O. Box 1451, Alexandria,VA 22313-1451. You may not submit an application by acsimile.

Note: Please conrm that all ees reerenced above are current, either through the rademark FeeInormation page at http://www.uspto.gov/trademarks/tm_ee_ino.jsp or by calling the rademark Assistance Center (AC) at 1-800-786-9199.

WHAT A FILING DATE IS AND HOW IT IS DETERMINED

All applications are assigned a ling date. I you transmit your application over the Internet, the

ling date is the date the transmission reaches the USPO server, in Eastern Standard ime. I you le on paper, the ling date o an application is the date the USPO receives the application.Te USPO relies on a ling date to assess priority among applications; i.e., the USPO reviewsapplications in the order received. Te ling date is important because it generally gives yourapplication priority over applications with a later ling date. So, i an application led aer yoursis likely to cause conusion with yours, that application will be blocked, or, technically, suspended,until your application either registers or goes abandoned.

http://www.uspto.gov/products/library/ptdl/locations/index.jsp


http://www.uspto.gov/trademarks/tm_fee_info.jsp

http://www.uspto.gov/trademarks/tm_fee_info.jsp





10


Te priority created by a ling date is not absolute. You might have very strong rights based on

long use o your mark, or example, even i this is the rst time ling or a ederal registration. So,

i you are second in line but you have stronger rights than the applicant in ront o you, you may be

able to intervene with an opposition proceeding and prevent that application rom registering. So

while examination will not take place out o order, the second in line does have an opportunity to

assert superior rights at the proper time in the overall registration process.

Receiving a ling date does not mean that your mark will be registered. o obtain a registration,

you must comply with all application requirements and overcome any reusal(s) issued by the

USPO during examination.

INFORMATION TO INCLUDE IN THE APPLICATION

• OWNEROFTHEMARK(“APPLICANT”)

• NAMEANDADDRESSFORCORRESPONDENCE

• DEPICTIONOFTHEMARK(“THEDRAWING”)

• GOODS/SERVICES

• APPLICATIONFILINGFEE

• BASISFORFILING

• SPECIMENFORUSE-BASEDAPPLICATIONS

• SIGNATURE

OWNER OF THE MARK (APPLICANT)

Te application must be led in the name o the owner o the mark. Te owner o the mark is the

person or entity who controls the nature and quality o the goods/services identied by the mark.

Te owner is not necessarily the name o the person lling out the orm. Te owner may be an

individual, corporation, partnership, LLC, or other type o legal entity.

Must I be a U.S. citizen to apply?

No. You are not required to be a U.S. citizen to apply or and obtain a ederal registration.

NAME AND ADDRESS FOR CORRESPONDENCE

Te applicant’s name and street address is required or the USPO to send communications

concerning the application. Te applicant is strongly encouraged to provide an e-mail address

and authorize the USPO to correspond electronically, to allow the USPO to e-mail notices



11


regarding the application. Applicants who le using the EAS Plus orm must authorize e-mailcommunication. Note: Te USPO is not responsible or any e-mail not received due to theapplicant’s security or anti-spam soware, or any problems within the applicant’s e-mail system.You can view all sent actions and notices on-line, rom rademark Status and Document Retrieval(http://tsdr.uspto.gov/).

Applicants who reside outside the United States may include the name and address o a domesticrepresentative on their application. A domestic representative is a person residing in the U.S. uponwhom notices or process may be served or proceedings aecting the mark.

Changes o Address: You must keep your mailing address and/or e-mail address up to date with theUSPO. Changes o address should be led using the Change o Correspondence Address ormon EAS at http://www.uspto.gov/teas. I you send a change o address on paper, please includethe applicant’s name, the mark, and the application serial number and mail to: Commissioner orrademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

Warning or Privacy Concerns

Except or payment inormation, all data you submit to the USPO, including your street address,e-mail address, and telephone number, will become part o a public record and will be viewablethrough the Internet on the USPO’s website, as well as other websites that index USPO data,such as Google®.com. Some applicants use a Post Oce box number to avoid disclosure o aphysical address. While providing your telephone number will help the USPO communicatewith you, it is not required; thereore, i you do not wish your telephone number to become public,please do not provide it.

Non-USPTO Communications about Your Trademark

Solicitations: Tird-party websites and Internet search engines may use and post the inormationyou provide to the USPO and companies not associated with the USPO may use the inormationto mail or e-mail you solicitations concerning your trademark. Tese companies may use namesthat resemble the USPO name, including, or example, the terms “United States” or “U.S,” and theirsolicitations oen mimic the look o ocial government documents rather than appearing like atypical commercial or legal solicitation by emphasizing ocial government data like the USPOapplication serial number, the registration number, the International Class(es), ling dates, andother inormation that is publicly available rom USPO records. Many reer to other governmentagencies and sections o the U.S. Code. Most require “ees” to be paid.

So, be sure to read trademark-related communications careully beore making a decision about

whether to respond. All ocial correspondence will be rom the “United States Patent andrademark Oce” in Alexandria, VA, and i by e-mail, specically rom the domain “@uspto.gov.”

Letters claiming trademark inringement: I another trademark owner believes that you do nothave the right to use your trademark, you may receive a letter (a “cease-and-desist” letter) that(1) requests that you stop using your mark because o what the letter will allege is unlawul or



12


inringing use, and (2) states that you could ace possible legal action i you do not stop using yourmark. Because o the legal implication regarding the rights in your mark and the threat o possiblelegal action against you, i an attorney does not already represent you, you are strongly encouragedto hire one. Please see the “How do I nd a trademark attorney” section on page 6.

DEPICTION OF THE MARK (“THE DRAWING”)

Every application must include a clear image o one mark (“the drawing”). Te USPO uses thedrawing to upload the mark into the USPO search database and to print the mark in the OcialGazette and on the registration certicate. I you have variations on the mark that you wish toregister, each requires its own separate application and ee.

Tere are two types o drawings: “standard character” and “special orm.”

What is a “standard character” drawing?

A standard character drawing is commonly submitted when the mark you wish to register consistssolely o words, letters, or numbers. A standard character mark protects the wording itsel, withoutlimiting the mark to a specic ont, style, size, or color and thereore gives you broader protectionthan a special orm drawing.

A standard character drawing must have the ollowing characteristics:

• Nodesignelement;

• Nostylizationofletteringand/ornumbers;

• AnylettersandwordsinLatincharacters;

• AnynumbersinRomanorArabicnumerals;

• Onlycommonpunctuationordiacriticalmarks.

NOE: Te USPO has created a standard character set that lists letters, numerals, punctuationmarks, and diacritical marks that may be used in a standard character drawing. Te set is availableon the USPO’s website at http://teas.uspto.gov/standardCharacterSet.html.

How do I le a standard character drawing?

When you le electronically, EAS generates a standard character drawing or you, based on theinormation you enter on the orm under “enter the mark here.”

When you le on paper, you must use standard letter-size paper and include these elements at thetop o the “drawing page” as part o your application: applicant’s name; correspondence address;and the ollowing statement: “Te mark is presented in standard character ormat without claim toany particular ont style, size or color.” Te representation o the mark must appear in the middleo the page.



13


What is a “special orm” drawing?

I your mark includes a design or logo, alone or with wording, or i the particular style o letteringor particular color(s) is important, you must select the “special orm” drawing ormat. I you areseeking registration o a word(s) combined with a design element, the drawing must depict boththe word(s) and the design element combined as one image.

How do I le a “special orm” drawing?

When you le electronically, you must upload an image o your mark into the EAS orm. Temark image must be in .jpg ormat and should have minimal white space surrounding the designo the mark. Mark images should not include the trademark, service mark or registration symbols(M, SM, ®). Unless a color image is being submitted or a mark wherein color is claimed as aeature o the mark, the mark image should be black and white.

When you le on paper, you must use standard letter-size paper and include the applicant’s nameand correspondence address at the top o the drawing page as part o your application. Te mark

must appear in the middle o the page, and consist o the entire mark, i.e., word(s) and design,where appropriate.

Te ollowing is an example o a proper special orm drawing page or an application led on paperor the mark .MARKEY and the design o the .MARKEY character:

Applicant’s Name: Jeerson Partners, Inc.

Correspondence Address: 100 Main Street, Any own, MO 12345

Should I submit a black-and-white drawing or a color drawing?

Generally, you may submit a black-and-white drawing even i you use your mark in color, becausea black-and-white drawing covers use o your mark in any color. However, i it is important thatyour customers associate specic colors in your mark with your product, you may wish to limit

your mark and claim those colors as part o your mark. I you do submit a color claim, then youmust also submit a color drawing o your mark that matches the colors you are claiming.

What are the requirements i I submit a color drawing?

You must submit the ollowing: (1) a “color claim” naming the color(s) and stating that the color(s)is a eature o the mark, and (2) a separate statement describing the mark and stating where thecolor(s) appears in the mark.



14


GOODS/SERVICES

What is the dierence between goods and services?

Goods are products, such as bicycles or candles. Services are activities perormed or the benet o

someone else, such as bicycle rental services or catering.

Te dierence between goods and services may be conusing. Are your customers paying or a

product or paying you to perorm a specic activity? I your customer is paying you or a product,

such as a candle or bicycle, then you have goods. However, i your customer is paying you to

perorm an activity, such as catering or bicycle rental, then you have services. You may list both

goods and services in an application.

You must list the specic goods/services or which you want to register your mark. I you are ling

based upon “use in commerce,” you must be using the mark in commerce on all the goods/services

listed. I you are ling based upon a “bona de intent to use the mark,” you must have a good aith

or bona de intent to use the mark on all the goods/services listed.

You should check the USPO’s Acceptable Identication o Goods and Services Manual (ID Manual)

at http://tess2.uspto.gov/netahtml/tidm.html, which contains a listing o acceptable identications

o goods and services. Any entry you choose must accurately describe your goods/services. A

ailure to correctly list the goods/services with which you use the mark, or intend to use the mark,

may prevent you rom registering your mark. You will not be given a reund o any ees paid.

I the ID Manual does not contain an accurate listing or your goods/services, do not merely

select an entry that seems “close.” Instead, you must create your own identication, describing

your goods/services using clear, concise terms that the general public easily understands. I you

list vague terms, such as “miscellaneous services” or “company name,” your application will be

considered void and you must le a new application.

I using the EAS PLUS orm, you must choose your goods/services rom the ID Manual . Tereore,

you should check the ID Manual prior to lling out the orm. I no ID Manual entry accurately

identies your goods/services, you may not use the EAS PLUS orm. However, you may use the

regular EAS orm.

May I change the goods/services aer ling my application?

You may clariy or limit the goods/services but you may not expand or broaden the goods/services.

For example, i you led or “shirts,” you may limit the goods to specic types o shirts such as

“t-shirts and sweatshirts.” However, you may not change the goods to “pants.” Likewise, i youle or “jewelry,” you may change the goods to specic types o jewelry such as “jewelry, namely,

earrings.” However, you may not change the goods to a service such as “jewelry stores.”



15


APPLICATION FILING FEE

Application ling ees are based on the type o application orm used (paper, regularEAS, or EAS Plus) and the number o International Classes o Goods or Services inthe application. Paper applications have the highest ling ee and EAS Plus applications

have the lowest ling ee. For current ees, see the rademark Fee Inormation page athttp://www.uspto.gov/trademarks/tm_ee_ino.jsp or contact the rademark Assistance Center(AC) ([email protected] or 1-800-786-9199).

Goods and services are sorted into categories called “International Classes.” Each International Classrequires a separate ling ee. For a listing o the International Classes, see the International Scheduleo Classes o Goods and Services, at http://www.uspto.gov/trademarks/notices/international.jsp .While you can use the schedule to determine the total number o classes that require a ee (eachclass o goods and services requires a separate ee), it is not appropriate or determining actualidentications o goods and/or services to be listed in your application, since general class headingsare not acceptable or ling purposes. Instead, use the USPO’s Acceptable Identication o Goods

and Services Manual (ID Manual), at http://tess2.uspto.gov/netahtml/tidm.html .

he EAS and EAS Plus orms accept payment by credit card and electronic undstranser or through an existing USPO deposit account. I you are iling on paper, youcan download the orm or authorizing credit-card charges rom the USPO website athttp://www.uspto.gov/orms/2038-ll.pd or pay by a check or money order made payable to“Director o the USPO.”

Filing ees are not reundable. I your application meets the ling requirements but is later reusedon legal grounds, the application ling ee will not be reunded.

BASIS FOR FILINGTe application must speciy your “basis” or ling. Most U.S. applicants base their application oneither their current use o the mark in commerce or their intent to use the mark in commerce inthe uture.

What is the dierence between a “use-in-commerce” application and an “intent-

to-use” application?

Under either basis, prior to registration you must demonstrate that you have used the mark incommerce in connection with all the goods/services listed in your application by submitting an

acceptable specimen. Te basic dierence between these two ling bases is whether you havestarted to use the mark on all the goods/services. I you have already used your mark in commercein connection with all the goods/services listed in your application, you may le under the “use-in-commerce” basis. I you have not yet used your mark, but intend to use it in the uture, you mustle under the “intent-to-use” basis. An “intent-to-use” basis requires ling an additional orm andee that are unnecessary i you le under “use in commerce.” For inormation on the additional

http://www.uspto.gov/trademarks/notices/international.jsp


http://www.uspto.gov/forms/2038-fill.pdf

http://www.uspto.gov/forms/2038-fill.pdf


http://www.uspto.gov/trademarks/notices/international.jsp



16


orm, see the “HOW DO I ESABLISH USE OF HE MARK IF I FILED AN INEN-O-USEAPPLICAION?” section on page 21. It is also possible to le an application wherein some o thegoods/services are in use and others are intent to use, but the application must clearly identiy this.

What is a “use-in-commerce” basis?

For applications led under the use-in-commerce basis, you must be using the mark in the sale ortransport o goods or the rendering o services in “interstate” commerce between more than onestate or U.S. territory, or in commerce between the U.S. and another country. For goods, the mark must appear on the goods (e.g., tags or labels), the container or the goods, or displays associatedwith the goods. For services, the mark must be used in the sale or advertising o the services.

How do I establish my “use-in-commerce” basis?

•Providethedateofrstuseofthemarkanywhereandthedateofrstuseofthemarkincommerce.

• Submitaspecimen(example)showinghowyouusethemarkincommerce.Seethe“SPECIMENFOR USE-BASED APPLICAIONS” section on page 17.

What is the dierence between the “date o rst use anywhere” and the “date o

rst use in commerce”?

Te date o rst use anywhere is the date on which the goods were rst sold or transported or theservices were rst provided under the mark even i that use was only local. Te date o rst use incommerce is the date on which the goods were rst sold or transported or the services were rstprovided under the mark between more than one state or U.S. territory, or in commerce betweenthe U.S. and another country. Te date o rst use anywhere must be the same as or earlier than the

date o rst use in commerce.

What is an “intent-to-use” basis?

I you have not yet used the mark but plan to do so in the uture, you may le based on a good aithor bona de intent to use the mark in commerce. A bona de intent to use the mark is more thanan idea and less than market ready. For example, having a business plan, creating sample products,or perorming other initial business activities may refect a bona de intent to use the mark.

Is there any other possible ling basis?

Yes. Based on international agreements/treaties, an owner may le an application in the U.S. based

on a oreign application/registration issued by another country (a “Section 44” application). Also,a oreign owner may le an international application in its home country and request an extensiono protection to the U.S. (a “Section 66(a)” application). See Trademark Manual o Examining Procedure (TMEP) Chapters 1000 and 1900 or more inormation.

A USPO registration is eective only in the U.S., even though the goods/services are







17


assigned an “international” classication number. I aer ling a U.S. application you want toprotect your mark outside the U.S., you may le an international application or le directly inthat country. For more inormation about protecting your mark under the Madrid Protocol, seehttp://www.uspto.gov/trademarks/law/madrid/index.jsp .

SPECIMEN FOR USE-BASED APPLICATIONS

What is a “specimen” o use and how does it dier rom the “drawing”?

A specimen is a sample o how you actually use the mark in commerce on your goods or with yourservices. A specimen is not the same as the drawing. Te drawing shows only your mark, whereasa specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on the labelsor on your website).

What is a proper specimen or use o a mark on goods (products)?

Usually, a specimen or a mark used on goods shows the mark as it appears on the actual goods, oron labeling or packaging or the goods. For example, your specimen may be a tag or label displayingthe mark, or a photograph showing the mark on the goods or its packaging. Te specimen may notbe a “mock-up” o these items but must be a sample o what you actually use or a photograph o theactual packaging. Showing a display o the mark alone is not sucient; the specimen must show the mark on or in direct connection with the goods.

A specimen that shows the mark being used in a purely ornamental or decorative manner may not be an acceptable specimen. A slogan or a design across the ront o a t-shirt or other clothingor a tote bag, or example, would not be acceptable, since it is likely to be perceived as ornamentalor decorative rather than a trademark. However, a small word or design, such as a small animal

on a shirt pocket, may create the commercial impression o a trademark and be acceptable as aspecimen.

Acceptable Specimen Not Acceptable Specimen

Is my website a proper specimen or goods?

A website is an acceptable specimen i the mark appears near a picture o the goods (or a textdescription o the goods) and your customers can order the goods rom the website. A websitethat merely advertises the goods is not acceptable. You must provide an actual screenshot o thewebsite; i.e., merely providing the website address is not acceptable.

http://www.uspto.gov/trademarks/law/madrid/index.jsp

http://www.uspto.gov/trademarks/law/madrid/index.jsp



18


What is NOT a proper specimen or goods?

Invoices, announcements, order orms, leafets, brochures, publicity releases, letterhead, andbusiness cards generally are not acceptable specimens or goods.

What is a proper specimen or use o a mark with services?

A specimen or a mark used in connection with services must show the mark used in providingor advertising the services. For example, your specimen may be a photograph o a business sign,a brochure about the services, an advertisement or the services, a website or webpage, a businesscard, or stationery showing the mark. Te specimen must show or contain some reerence to theservices, that is, it is not just a display o the mark itsel.

For example, i the mark sought to be registered is “.MARKEY”or retail stores eaturing men’s sportswear, a specimen that only shows the wording “.MARKEY” and no other matter wouldnot be acceptable, but a specimen that shows the wording

“.MARKEY“ on a clothing store sign would be acceptable, asshown on the right.

What is NOT a proper specimen or services?

Printer’s proos or advertisements or news articles about your services are not acceptable becausethey do not show your use o the mark.

When do I le the specimen?

I your application is based on “use in commerce,” you must submit one specimen or each class o goods/services when you le the application.

I your application is based on “intent to use,” you must submit one specimen or each class o goods/services when you le the “allegation o use.” Te allegation o use may be led prior to publication(Amendment to Allege Use) or aer publication (Statement o Use). For more inormation on theAllegation o Use see the “HOW O ESABLISH USE OF HE MARK FOR AN INEN-O-USE-APPLICAION” section on page 21.

How do I le the specimen?

When ling electronically, you must attach an image o your specimen in .jpg or .pd ormat. oshow the context in which the mark is used, the image should include as much o the label or

advertisement as possible. In rare instances, your specimen might consist o an audio or videole; please see TMEP Section 904.03() or urther inormation about submitting these types o specimens.

I you are not able to le by the preerred electronic method and are ling a paper application,Amendment to Allege Use, or Statement o Use, the specimen must be fat and no larger than 8½ by

http://tess2.uspto.gov/tmdb/tmep/0900.htm#_T90403f





19


11 inches (e.g., a label or photograph o the packaging). However, you may submit compact discs,or DVDs, with les in .jpg, .pd, .wav, .wma, .wmv, .mp3, .mpg, or .avi ormat.

SIGNATURE

Who may sign the application?

I you own the mark and are applying in your individual capacity and not as a business entity, youmay sign the application. I a business entity owns the mark, then the person who may sign theapplication on behal o that business is (1) someone with rsthand knowledge o the applicationcontents and authority to act or the owner or (2) someone with legal authority to bind the ownersuch as a general partner or a corporate ocer. I the applicant is represented by an attorney, theattorney may sign the application on behal o the applicant.

Please note dierent requirements exist or who may sign other types o documents that applicantsmust le with the USPO regarding their application. All documents, including the application,

are legal documents; accordingly, the proper person must sign each document or the USPO toaccept it.

How do I sign a TEAS Plus or TEAS application?

In a EAS application, you enter an electronic signature on the orm by typing your signaturebetween two orward slashes. Examples o acceptable signatures or EAS applications include/john doe/ or /jrd/. It is not permissible or one person to enter another person’s signature.

WHAT HAPPENS AFTER FILING AND WHAT TO DO

What must I do aer I le the application?You must diligently monitor the status o your application. Tis means you must:

• Checkthestatusofyourpendingapplicationregularly. Werecommendthatyoucheckyourapplication’s status every 3 to 4 months. Te assigned examining attorney will review yourapplication approximately 3 months aer the ling date. Te overall registration process may take up to a year, or even longer, depending on several actors; or example, the basis o ling o the application and the completeness o the application at the time o ling.

•RespondtoanyissuedOceactionornoticewithintheappropriatetimeframes,generallywithin 6 months o the issue date.

• PromptlycontacttheUSPTOandrequestcorrectiveactionifyoubelievesomethingisincorrectin the le.

How do I check the status?

You may check the status o any pending application through the rademark Status and Document



20


Retrieval (SDR) system, at http://tsdr.uspto.gov/. You must have your serial number available (a

serial number is an 8-digit number that generally begins with 76, 77, 79, or 85). I you do not have

access to the Internet, you can call the rademark Assistance Center at 1-800-786-9199 to request

a status check.

When you check your application status, make sure that you have received all communications sentto you by the USPO, made a note o any deadlines, and have taken appropriate action. Also, print

a copy o the SDR status page or your records.

LEGAL AND PROCEDURAL REVIEW OF APPLICATION

Approximately 3 months rom the date your application is led, the application is assigned to an

examining attorney to determine whether ederal law permits registration. Te examining attorney

will examine the written application, the drawing, and any specimen, to ensure that they satisy all

o the ederal legal requirements. Federal registration o trademarks is governed by the rademark

Act o 1946, 15 U.S.C. §1051 et seq., and the rademark Rules o Practice, 37 C.F.R. Part 2.

Te examining attorney may issue a letter (Oce action) explaining any reasons or reusing

registration or other requirements. I you receive an Oce action, you must submit a response

within 6 months o the issue date o the Oce action. Your ling ee will not be reunded i the

application is reused registration.

PUBLICATION FOR OPPOSITION

I no reusals or additional requirements are identied or i all identied issues have been resolved,

the examining attorney will approve the mark or publication in the Ofcial Gazette (OG), a weekly

online publication. Te USPO will send you a Notice o Publication stating the publication date.

I you have authorized e-mail communication, the USPO will e-mail you a “Notication o

‘Notice o Publication’” approximately 3 weeks beore the uture publication date in the OG. On

the actual publication date, you will receive a second e-mail, namely, “Ofcial Gazette Publication

Conrmation” with a link to the OG. I you have not authorized e-mail communication with the

USPO, the USPO will mail you approximately 3 weeks beore publication a paper “Notice o

Publication” stating the publication date.

WHAT HAPPENS AFTER PUBLICATION?

Aer publication in the OG, there is a 30-day period in which the public may object to the

registration o the mark by ling an opposition. An opposition is similar to a court proceeding, but

is held beore the rademark rial and Appeal Board, a USPO administrative tribunal. A third

party who is considering ling an opposition may rst le a request or an extension o time to le

the opposition, which could delay urther action on your application.

http://www.uspto.gov/news/og/trademark_og/index.jsp










21


Te next step aer publication depends on your basis or ling the application:

REGISTRATION CERTIFICATE ISSUES FOR “USE-IN-COMMERCE”

APPLICATION

I no opposition or extension o time to oppose is led or i you successully overcome an opposition,

you do not need to take any action or the application to enter the next stage o the process. Absent

any opposition-related lings, the USPO generally will issue a registration certicate about 11

weeks aer publication, i the application is based upon the actual use o the mark in commerce

(Section 1(a)) or on a oreign or international registration (Section 44(e) or Section 66(a)).

NOTICE OF ALLOWANCE (NOA) ISSUES FOR “INTENT-TO-USE”

APPLICATION

I no opposition or extension o time to oppose is led or you successully overcome an opposition,you do not need to take any action or the application to enter the next stage o the process.

Absent any opposition-related lings, the USPO generally will issue a NOA about 8 weeks aer

publication.

A NOA indicates that your mark has been allowed, but does not mean that it has registered. As the

next step to registration, within 6 months o the issue date o the NOA you must:

• Submita“StatementofUse”ifyouledbasedonintenttouse(Section1(b))andarenowusing

the mark in commerce;

• Beginusingthemarkincommerceandthensubmita“StatementofUse;”or

• Submitasix-month“RequestforanExtensionofTimetoFileaStatementofUse”ifyouneed

additional time to begin using the mark in commerce.

Forms or ling both the Statement o Use and Extension o ime are at http://www.uspto.gov/teas.

HOW TO ESTABLISH USE OF THE MARK FOR AN “INTENT-TO-

USE” APPLICATION

Notice o Allowance (NOA) Has Already Issued

I a NOA has already issued, you establish use by ling a Statement o Use (SOU) orm that contains

a sworn statement that you are now using the mark in commerce on all the goods/services. I you

wish to le an SOU beore the mark is in use in commerce on all listed goods/services, you must

delete or divide out the goods/services or which the mark is not in use. For more on division o an

application, please see TMEP §1110 et seq.

http://tess2.uspto.gov/tmdb/tmep/1100.htm#_T1110





22


Te SOU must also include:

• Alingfeeof$100perclassofgoods/services;

• edateofrstuse ofthemarkanywhereandthedateofrstuseofthemarkincommerce;

and

•Onespecimen(orexample)showinghowyouusethemarkincommerceforeachclassof

goods/services.

Once the USPO issues the NOA, you have 6 months to le the SOU. Te 6-month period runs

rom the issue date shown on the NOA, not the date you receive it. I you have not used the mark in

commerce, you must le a Request or an Extension o ime to File a Statement o Use (Extension

Request) beore the end o the 6-month period, or the application will be declared abandoned,

meaning that the application process has ended and your mark will not register. You may request

5 additional extensions or up to a total o 36 months rom the NOA issue date, with a statement o

your ongoing eorts to make use o the mark in commerce. A ling ee o $150 per class o goods/

services must accompany each Extension Request. Te orm or ling the Extension Request is athttp://www.uspto.gov/teas. Te date o the grant or denial o an Extension Request does not aect

the deadline or ling the SOU or next Extension Request. Te deadline is always calculated rom

the issue date o the NOA.

Notice o Allowance (NOA) Has Not Yet Issued

I the NOA has not yet issued and the application has not yet been approved or publication, you

may le an Amendment to Allege Use, which includes the same inormation as the SOU (see above).

You may not le the Amendment to Allege Use during the “blackout period” aer approval o the

mark or publication and beore issuance o the NOA. In that situation, you must wait until aer

the blackout period to le your SOU.

MAINTAINING A FEDERAL TRADEMARK REGISTRATION

o maintain your trademark registration, you must le your rst maintenance document between

the 5th and 6th year aer the registration date and other maintenance documents thereaer. Your

registration certicate contains important inormation on maintaining your ederal registration. Te

USPO does not currently send reminder notices when the documents are due. I the documents

are not timely led, your registration will be cancelled and cannot be revived or reinstated, making

the ling o a brand new application to begin the overall process again necessary. Forms or ling

the maintenance documents are at http://www.uspto.gov/teas.

Troughout the lie o the registration, you must police and enorce your rights. While the USPO

will prevent another pending application or a similar mark used on related goods or in connection

with related services rom proceeding to registration based on a nding o likelihood o conusion,

the USPO will not engage in any separate policing or enorcement activities.



23


Rights in a ederally registered trademark can last indenitely i you continue to use the mark

and le all necessary maintenance documents with the required ee(s) at the appropriate times, as

identied below. Te necessary documents or maintaining a trademark registration are:

• DeclarationofContinuedUseorExcusableNonuseunderSection8(§8declaration);and

• CombinedDeclarationofContinuedUseandApplicationforRenewalunderSections8and9(combined §§8 and 9).

A §8 declaration is due beore the end o the 6-year period aer the registration date or within the

6-month grace period thereaer. Failure to le this declaration will result in the cancellation o the

registration.

A combined §§8 and 9 must be led beore the end o every 10-year period aer the registration

date or within the 6-month grace period thereaer. Failure to make these required lings will result

in cancellation and/or expiration o the registration.

For urther inormation, including inormation regarding the special requirements that apply toMadrid Protocol registrations, use the Popular Link “Maintain or Renew Registrations” on the

le side o the rademarks Home page (http://uspto.gov/trademarks/index.jsp) or contact the

rademark Assistance Center (AC) ([email protected] or 1-800-786-9199).

FEES FOR FILING TRADEMARK-RELATED DOCUMENTS

Current ees or all trademark lings are available via the rademark Fee Inormation page at http://

www.uspto.gov/trademarks/tm_ee_ino.jsp or can be obtained rom rademark Assistance Center

(AC) ([email protected] or 1-800-786-9199).

For the ollowing documents, ees are based on the total number o International

Classes that the USPO assigns to your goods/services. For a listing o the International

Classes, see the “International Schedule o Classes o Goods and Services,” at

http://www.uspto.gov/trademarks/notices/international.jsp.



24


Initial Application Forms

• EAS Plus application - $275 per international class

• EAS application - $325 per international class

• Paper application - $375 per international class

Intent-to-Use Forms

• Amendment to Allege Use (AAU) - $100 per international class

• Statement o Use (SOU) - $100 per international class

• Request or Extension o ime to le SOU- $150 per international class

Post-Registration Maintenance Fees

• Declaration o Continued Use or Excusable Nonuse under Section 8 (§8 declaration) -

$100 per international class

• Combined Declaration o Continued Use and Application or Renewal under Sections 8 and

9 (combined §§8 and 9) - $500 per international class

FOR MORE INFORMATION

• USPTO website at www.uspto.gov/trademarks, First-Time Filers, Start Here,Trademark BasicsFor instructional videos, application processing timelines, requently asked questions (FAQs), and other useul inormation.

• Trademark Assistance Center (TAC) [email protected]

or 1-800-786-9199

For general trademark inormation and printed application orms

•Patent and Trademark Resource Centers

Patent and rademark Resource Centers (PRCs) are a nationwide network o public, state,

and academic libraries that disseminate patent and trademark inormation and support the

diverse intellectual property needs o the public. Te PRCs have trained specialists who

may answer specic questions regarding the trademark process, but they do not provide legal

advice. More inormation on PRCs, including a list o the PRC(s) in your state, is available atwww.uspto.gov under “Products & Services.”

http://www.uspto.gov/products/library/ptdl/index.jsp

http://www.uspto.gov/products/library/ptdl/index.jsp



United States Patent and Trademark Ofce

An Agency o the United States

Department o Commerce

trademark n registration basic facts

Documents