TRADEMARK
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A trademark TM is a word, phrase, symbol or
design or a combination that identifies and distinguishes the source of goods
of one party from those of others. A trademark can also serve as a service mark
SM which identifies and distinguishes the source of a service rather
than goods.
Goods are products while Services are activities performed for the benefit of someone else, such as catering or legal services. Both maybe listed in a trademark application.
It is not necessary to register your trademark because rights can be established based on the use of mark in commerce. However, registering provides several advantages, including:
Goods are products while Services are activities performed for the benefit of someone else, such as catering or legal services. Both maybe listed in a trademark application.
It is not necessary to register your trademark because rights can be established based on the use of mark in commerce. However, registering provides several advantages, including:
- Public notice of your claim of ownership of the mark
- Ability to bring an action concerning the mark in court
- Right to use the ® symbol
- Listing in the USPTO online databases
How to File a Trademark Application
SEARCH
It is recommended to search the trademark database to determine whether there is a registered or pending mark that is similar to yours.
Search can be conducted at the USPTO’s Trademark Electronic Search System (TESS) database free of charge.
APPLICATION
You can file your trademark application directly over the Internet by using the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas.
There are two types of applications available: (1) regular TEAS and (2) TEAS Plus.
(1) Regular TEAS allows you to file your application without meeting any additional requirements. The filing fee for a regular application is $325 per class of goods/services.
(2)TEAS Plus application has a lower filing fee but requires that you meet certain additional requirements. You need to be able to accurately describe your goods/services and must file communications regarding the application through TEAS, and receive communications concerning the application by e-mail. The filing fee for a TEAS Plus application is $275 per class of goods/services.
The USPTO provides a list of acceptable identifications of goods and services at http://tess2.uspto.gov/netahtml/tidm.html.
DEPICTION OF THE MARK TO BE INCLUDED WITH THE APPLICATION
Every application must include a clear image of the mark (“the drawing”). There are two types of drawings: (1) Standard Character and (2) Special Form
(1) Standard Character drawing is used for marks consisting solely of words, letters or numbers. This type of drawing protects the word itself, and does not limit the mark to specific font, style, size or color. Examples can be seen at http://teas.uspto.gov/standardCharachterSet.html.
(2) Special Form drawing is a design or logo, alone or with wording, or if the particular style of lettering or particular colors is important.
Color or Black-and-White Drawing
Black-and-white drawing may be submitted even if the mark is in color because a black-and-white drawing covers use of your mark in any color.
Color drawings may be submitted to claim a specific color(s), naming the color(s) and stating that the color(s) is a feature of the mark and a separate statement describing the mark and stating where the color(s) appears in the mark.
BASIS FOR FILING
In order to file a trademark application, the application must specify your “basis” for filing. There are two basis: (1) Use in Commerce and (2) Intent to Use.
Note: Under either basis, prior to registration, you must demonstrate that you have started to use the mark on all the goods/services.
(1) Use in Commerce basis is used when the mark is already in use for the sale or transportation of goods or rendering services in the “interstate commerce between more than one state or U.S. territory, or in commerce between U.S. and another country. For goods the mark must appear on the goods. For services, the mark must be used in the sale or advertising of services.
You will need to provide the date of first use of the mark anywhere and the date of first use of the mark in commerce. You will also need to submit an example showing how you use the mark in commerce.
(2) Intent to Use basis is used when the mark is not in use yet but you have a bona fide plan to do so in the future.
AFTER FILING
Once an application is filed, the application is legally and procedurally reviewed in approximately three months. An examining attorney at the USPTO office reviews the application and either approves or refuses the registration.
Once the examining attorney approves the application, the mark is then published in the Official Gazette, a weekly online publication. There is a 30-day period in which public may object to the registration of the mark by filing an opposition. If there is no opposition or you overcome any opposition then the USPTO will issue a registration certificate or in the case of intent to use application, a notice of allowance.
MAINTAINING A FEDERAL TRADEMARK REGISTRATION
Once the registration certificate is issued by the USPTO, you must maintain your trademark registration by filing a maintenance document before the end of the 6th year after the registration date and other maintenance documents thereafter.
The USPTO does NOT send reminder notices when documents are due. Forms for filing maintenance documents can be found at http://www.uspto.gov/teas.
It is recommended to search the trademark database to determine whether there is a registered or pending mark that is similar to yours.
Search can be conducted at the USPTO’s Trademark Electronic Search System (TESS) database free of charge.
APPLICATION
You can file your trademark application directly over the Internet by using the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas.
There are two types of applications available: (1) regular TEAS and (2) TEAS Plus.
(1) Regular TEAS allows you to file your application without meeting any additional requirements. The filing fee for a regular application is $325 per class of goods/services.
(2)TEAS Plus application has a lower filing fee but requires that you meet certain additional requirements. You need to be able to accurately describe your goods/services and must file communications regarding the application through TEAS, and receive communications concerning the application by e-mail. The filing fee for a TEAS Plus application is $275 per class of goods/services.
The USPTO provides a list of acceptable identifications of goods and services at http://tess2.uspto.gov/netahtml/tidm.html.
DEPICTION OF THE MARK TO BE INCLUDED WITH THE APPLICATION
Every application must include a clear image of the mark (“the drawing”). There are two types of drawings: (1) Standard Character and (2) Special Form
(1) Standard Character drawing is used for marks consisting solely of words, letters or numbers. This type of drawing protects the word itself, and does not limit the mark to specific font, style, size or color. Examples can be seen at http://teas.uspto.gov/standardCharachterSet.html.
(2) Special Form drawing is a design or logo, alone or with wording, or if the particular style of lettering or particular colors is important.
Color or Black-and-White Drawing
Black-and-white drawing may be submitted even if the mark is in color because a black-and-white drawing covers use of your mark in any color.
Color drawings may be submitted to claim a specific color(s), naming the color(s) and stating that the color(s) is a feature of the mark and a separate statement describing the mark and stating where the color(s) appears in the mark.
BASIS FOR FILING
In order to file a trademark application, the application must specify your “basis” for filing. There are two basis: (1) Use in Commerce and (2) Intent to Use.
Note: Under either basis, prior to registration, you must demonstrate that you have started to use the mark on all the goods/services.
(1) Use in Commerce basis is used when the mark is already in use for the sale or transportation of goods or rendering services in the “interstate commerce between more than one state or U.S. territory, or in commerce between U.S. and another country. For goods the mark must appear on the goods. For services, the mark must be used in the sale or advertising of services.
You will need to provide the date of first use of the mark anywhere and the date of first use of the mark in commerce. You will also need to submit an example showing how you use the mark in commerce.
(2) Intent to Use basis is used when the mark is not in use yet but you have a bona fide plan to do so in the future.
AFTER FILING
Once an application is filed, the application is legally and procedurally reviewed in approximately three months. An examining attorney at the USPTO office reviews the application and either approves or refuses the registration.
Once the examining attorney approves the application, the mark is then published in the Official Gazette, a weekly online publication. There is a 30-day period in which public may object to the registration of the mark by filing an opposition. If there is no opposition or you overcome any opposition then the USPTO will issue a registration certificate or in the case of intent to use application, a notice of allowance.
MAINTAINING A FEDERAL TRADEMARK REGISTRATION
Once the registration certificate is issued by the USPTO, you must maintain your trademark registration by filing a maintenance document before the end of the 6th year after the registration date and other maintenance documents thereafter.
The USPTO does NOT send reminder notices when documents are due. Forms for filing maintenance documents can be found at http://www.uspto.gov/teas.
