What is a Trademark?
A TRADEMARK is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services 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” are used to refer to both trademarks and service marks whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.
A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.
Establishing Trademark Rights
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. (See below, under “Types of Applications,” for a discussion of what is meant by the terms commerce and use in commerce.) Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.
There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO’s authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.
Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.
Types of Applications for Federal Registration
An applicant may apply for federal registration in three principal ways. (1) An applicant who has already commenced using a mark in commerce may file based on that use (a “use” application). (2) An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an “intent-to-use” application). For the purpose of obtaining federal registration, commerce means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as “use in commerce.” If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark (See page 12). (3) Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country. For information regarding applications based on international agreements please call the information number provided on page 4. A United States registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws. The PTO cannot provide information or advice concerning protection in other countries. Interested parties may inquire directly in the relevant country or its U.S. offices or through an attorney.
Who May File an Application?
The application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark. See below in the line-by-line instructions for information about who must sign the application and other papers.
The owner may submit and prosecute its own application for registration, or may be represented by an attorney. The PTO cannot help select an attorney.
Applicants not living in the United States must designate in writing the name and address of a domestic representative — a person residing in the United States “upon whom notices of process may be served for proceedings affecting the mark.” The applicant may do so by submitting a statement that the named person at the address indicated is appointed as the applicant’s domestic representative under 1(e) of the Trademark Act. The applicant must sign this statement. This person will receive all communications from the PTO unless the applicant is represented by an attorney in the United States.
Searches for Conflicting Marks
An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO. However, some people find it useful. In evaluating an application, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered. To determine whether there is a conflict between two marks, the PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same. The PTO does not conduct searches for the public to determine if a conflicting mark is registered, or is the subject of a pending application, except as noted above when acting on an application.
The federal registration of trademarks is governed by the Trademark Act of 1946, as amended, 15 U.S.C. 1051 et seq.; the Trademark Rules, 37 C.F.R. Part 2; and the Trademark Manual of Examining Procedure (2d ed. 1993).
Other Types of Applications
In addition to trademarks and service marks, the Trademark Act provides for federal registration of other types of marks, such as certification marks, collective trademarks and service marks, and collective membership marks. These types of marks are relatively rare. For forms and information regarding the registration of these marks, please call the appropriate trademark information number indicated below.
Use of the “TM,” “SM” and “r” Symbols
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, r, may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues. Please omit all symbols from the mark in the drawing you submit with your application; the symbols are not considered part of the mark.
The Registration Process
Filing Date – Filing Receipt
The PTO is responsible for the federal registration of trademarks. When an application is received, the PTO reviews it to determine if it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the PTO assigns it a serial number and sends the applicant a receipt about two months after filing. If the minimum requirements are not met, the entire mailing, including the filing fee, is returned to the applicant. Examination.
About four months after filing, an examining attorney at the PTO reviews the application and determines whether the mark may be registered. If the examining attorney determines that the mark cannot be registered, the examining attorney will issue a letter listing any grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter, or the application will be abandoned. If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.
A common ground for refusal is likelihood of confusion between the applicant’s mark and a registered mark. This ground is discussed on pages 2 and 3. Marks which are merely descriptive in relation to the applicant’s goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.
Publication for Opposition
If there are no objections, 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 PTO. The PTO will send a NOTICE OF PUBLICATION to the applicant indicating the date of publication. In the case of two or more applications for similar marks, the PTO will publish the application with the earliest effective filing date first. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.
Issuance of Certificate of Registration or Notice of Allowance
If the application was based upon the actual use of the mark in commerce prior to approval for publication, the PTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published, if no opposition was filed.
If, instead, the mark was published based upon the applicant’s statement of having a bona fide intention to use the mark in commerce, the PTO will issue a NOTICE OF ALLOWANCE about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the NOTICE OF ALLOWANCE to either (1) use the mark in commerce and submit a STATEMENT OF USE, or (2) request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE (see forms and instructions in this booklet). The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the STATEMENT OF USE is filed and approved, the PTO will then issue the registration certificate.
WARNING: BEFORE COMPLETING AN APPLICATION, READ THE INSTRUCTIONS CAREFULLY AND STUDY THE EXAMPLES PROVIDED. ERRORS OR OMISSIONS MAY RESULT IN THE DENIAL OF A FILING DATE AND THE RETURN OF APPLICATION PAPERS, OR THE DENIAL OF REGISTRATION AND FORFEITURE OF THE FILING FEE.
To receive a filing date, the applicant must provide all of the following:
- A written application form; 2. A drawing of the mark on a separate piece of paper; 3. The required filing fee (see page 11 for fee information); and 4. If the application is filed based upon prior use of the mark in commerce, three specimens for each class of goods or services. The specimens must show actual use of the mark with the goods or services. The specimens may be identical or they may be examples of three different uses showing the same mark.
The application filing fee is $375.00 for each class of goods or services listed. (See the International Classification of Goods and Services listed on the inside of the back cover.) At least $375.00 must accompany the application, or the application will be denied a filing date and all the papers returned to the applicant. Fee increases, when necessary, usually take effect on October 1 of any given year. Please call the general information number listed on page 4 for up-to-date fee information if filing after September 1995. The PTO receives no taxpayer funds. The PTO’s operations are supported entirely from fees paid by applicants and registrants.
Additional Fees Related to Intent-To-Use Applications
In addition to the application filing fee, applicants filing based on a bona fide intention to use a mark in commerce must submit a fee of $100.00 for each class of goods or services in the application when filing any of the following:
- AMENDMENT TO ALLEGE USE STATEMENT OF USE REQUEST FOR AN EXTENSION OF TIME TO FILE A STATEMENT OF USE
Form of Payment
All payments must be made in United States currency, by check, post office money order or certified check. Personal or business checks may be submitted. Make checks and money orders payable to: The Assistant Commissioner for Trademarks.
NOTE: FEES ARE NOT REFUNDABLE.
The following information is designed to provide guidance regarding the specimens required to show use of the mark in commerce.
When to File the Specimens
If the applicant has already used the mark in commerce and files based on this use in commerce, then the applicant must submit three specimens per class showing use of the mark in commerce with the application. If, instead, the application is based on a bona fide intention to use mark in commerce, the applicant must submit three specimens per class at the time the applicant files either an AMENDMENT TO ALLEGE USE or a STATEMENT OF USE.
What to File as a Specimen
The specimens must be actual samples of how the mark is being used in commerce. The specimens may be identical or they may be examples of three different uses showing the same mark.
If the mark is used on goods, examples of acceptable specimens are tags or labels which are attached to the goods, containers for the goods, displays associated with the goods, or photographs of the goods showing use of the mark on the goods themselves. If it is impractical to send an actual specimen because of its size, photographs or other acceptable reproductions that show the mark on the goods, or packaging for the goods, must be furnished. Invoices, announcements, order forms, bills of lading, leaflets, brochures, catalogs, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods. If the mark is used for services, examples of acceptable specimens are signs, brochures about the services, advertisements for the services, business cards or stationery showing the mark in connection with the services, or photographs which show the mark either as it is used in the rendering or advertising of the services. In the case of a service mark, the specimens must either show the mark and include some clear reference to the type of services rendered under the mark in some form of advertising, or show the mark as it is used in the rendering of the service, for example on a store front or the side of a delivery or service truck.
Specimens may not be larger than 8r inches by 11 inches (21.59 cm by 27.94 cm) and must be flat. See pages 18 through 22 for samples of some different types of specimens. Smaller specimens, such as labels, may be stapled to a sheet of paper and labeled “SPECIMENS.” A separate sheet can be used for each class.
Additional Requirements for Intent-To-Use Applications
An applicant who files its application based on having a bona fide intention to use a mark in commerce must make use of the mark in commerce before the mark can register.
After use in commerce begins, the applicant must submit:
- three specimens evidencing use as discussed above;
- a fee of $100.00 per class of goods or services in the application; and
- either (1) an AMENDMENT TO ALLEGE USE if the application has not yet been approved for publication (use PTO Form 1579) or (2) a STATEMENT OF USE if the mark has been published and the PTO has issued a NOTICE OF ALLOWANCE (use PTO Form 1580).
If the applicant will not make use of the mark in commerce within six months of the NOTICE OF ALLOWANCE, the applicant must file a REQUEST FOR AN EXTENSION OF TIME TO FILE A STATEMENT OF USE, or the application is abandoned. (Use PTO Form 1581, which is intended only for this purpose.)
See the instructions and information on the back of the forms. The previous information about specimens, identifications of goods and services and dates of use is also relevant to filing an AMENDMENT TO ALLEGE USE or STATEMENT OF USE. Follow the instructions on these forms carefully. Failure to file the necessary papers in proper form within the time provided may result in abandonment of the application.