Frequently Asked Questions about Trademarks in USA

Posted on February 27, 2014 Updated on February 27, 2014

BEFORE FILING AN APPLICATION

What is a trademark?

A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.

What is a service mark?

A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.

What is a patent?

A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. For more information, click here.

What is a copyright?

A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed. For more information, contact the U.S. Copyright Office (a division of the Library of Congress).

What is a certification mark?

A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others.

What is a collective membership mark?

A collective membership mark is any word, phrase, symbol or design, or a combination thereof which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members.

What is a collective mark?

A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services.

Where can I get basic trademark information?

For information about applying for a trademark, click Basic Facts About Trademarks, and view the trademark videos that cover important topics and critical application filing tips. To understand what to expect in the overall process, view the timelines for trademark processing. If you still have questions, contact the Trademark Assistance Center at 1-800-786-9199.

Must I register my trademark?

No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits.

What are the benefits of federal trademark registration?

Owning a federal trademark registration on the Principal Register provides several advantages, including:

• Public notice of your claim of ownership of the mark;
• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
• The ability to bring an action concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol ®; and
• Listing in the United States Patent and Trademark Office’s online databases.

Do federal regulations govern the use of the designations “TM” or “SM” or the ® symbol?

If you claim rights to use a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim of a “common-law” mark. No registration is necessary to use a “TM” or “SM” symbol and you may continue to use these symbols even if the USPTO refuses to register your mark. Those symbols put people on notice that you claim rights in the mark, although common law doesn’t give you all the rights and benefits of federal registration.

You may only use the federal registration symbol “®” after the USPTO actually registers a mark, not while an application is pending. And it may only be used on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Although there are no specific requirements on where the symbol should be placed relative to the mark, most businesses use the symbol in the upper right corner of the mark. Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.

Should I have an attorney?

Although not required, most applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration. A private trademark attorney (not associated with the USPTO) may help you avoid many potential pitfalls.

Is registration guaranteed and can I get a refund of money paid?

Registration is not guaranteed and only money paid when not required may be refunded. For information on why registration may be refused, see Basic Facts About Trademarks.

SEARCHING FOR SIMILAR TRADEMARKS

Should I conduct a search for similar trademarks before filing an application?

It is advisable to conduct a search before filing your application. See TESS TIPS for further information.

Where can I conduct a trademark search for trademarks in pending applications and federal registrations?

You may search the USPTO’s Trademark Electronic Search System (TESS) database free of charge before filing or you may wish to hire an attorney to perform the search and assess the results for you. Alternatively, you can search the database at a Patent and Trademark Resource Center (PTRC). Information about PTRC locations can be found here.

Will the Office conduct a search for me?

The USPTO cannot search your mark for you prior to filing. After filing, the USPTO will conduct a search and will refuse to register your mark if there is another registered or pending mark similar to yours.

FILING THE APPLICATION AND OTHER DOCUMENTS

Where can I find trademark forms?

You can find USPTO forms through the Trademark Electronic Application System (TEAS). Two forms are available for the initial application: regular TEAS and TEAS Plus. Both forms allow you to pay by credit card, electronic funds transfer, or through an existing United States Patent and Trademark Office (USPTO) deposit account.

If you do not have Internet access, you can access TEAS at any Patent and Trademark Resource Center (PTRC) throughout the United States. Many public libraries also provide Internet access.

We recommend using TEAS, but you may file a paper application. To obtain a printed form, call the Trademark Assistance Center at 1-800-786-9199.

What is the Trademark Electronic Application System (TEAS)?

The Trademark Electronic Application System allows you to fill out and file an application form online, paying by credit card, electronic funds transfer, or through an existing USPTO deposit account. TEAS can also be used to file other documents including a response to an examining attorney’s Office action, a change of address, an allegation of use, and post registration maintenance documents.

Where do I send mail or make deliveries?

Although we recommend you file documents online using TEAS, paper mail may be sent to the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

Submissions sent using other delivery services such as Federal Express, United Parcel Service, and DHL is not encouraged, but if used, must be delivered to: Trademark Assistance Center, Madison East, Concourse Level Room C 55, 600 Dulany Street Alexandria, VA 22314.

Who may file an application?

Only the owner of the trademark may file an application for registration. The owner controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.

May a minor file a trademark application?

The question of whether an application may be filed in the name of a minor depends on your state’s law. If the minor may validly enter into binding legal obligations, and may sue or be sued, in the state in which he or she is domiciled, the application may be filed in the name of the minor. Otherwise, the application must be filed in the name of a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. An example of the manner in which the applicant should be identified in such cases is: “John Smith, United States citizen, (parent/legal guardian) of Mary Smith.”

Must I be a U.S. citizen to obtain a federal registration?

No. However, your citizenship must be provided in the application. If you have dual citizenship, then you must indicate which citizenship will be printed on the certificate of registration.

What is the difference between “use in commerce” and “intent to use” in commerce?

The basic difference between these two filing bases is whether you have used the mark on all the goods/services. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis. An “intent to use” basis will require filing an additional form and fee that are unnecessary if you file under “use in commerce.”

What is a specimen?

A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on your labels or on your website).

What is a drawing?

The “drawing” is a clear image of the mark applicant seeks to register. The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette and on the registration certificate. There are two types of drawings: “standard character” and “special form.” For more information on the different types of drawings see Basic Facts About Trademarks.

Can you register the name of a musical group or band?

A band name may function as a service mark for “entertainment services in the nature of performances by a musical group” if it is used to identify live performances.

What can I do to help the application proceed as smoothly as possible?

1. File the application and all other documents electronically through the Trademark Electronic Application System (TEAS).

2. Carefully review all documents before filing to make sure all issues have been addressed and all the necessary elements are included.

3. Authorize email correspondence and promptly inform the USPTO of any change in correspondence address, including your email address. This can be done through TEAS, available here.

4. Check the status of your application every 3-4 months using the Trademark Status and Document Retrieval (TSDR) system. If the USPTO has taken any action, you may need to respond promptly. All USPTO actions are available for viewing using the TSDR system.

AFTER FILING THE APPLICATION

Is registration of my mark guaranteed?

No. The examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2.
The most common reasons for refusing registration are because the mark is:

• Likely to cause confusion with a mark in a registration or prior application;
• Descriptive for the goods/services;
• A geographic term;
• A surname;
• Ornamental as applied to the goods.

For a discussion of these and other possible refusals, see Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP).
The examining attorney may also issue requirements concerning, for example:

• The goods and services listed in the application;
• The description of the mark;
• The quality of the drawing;
• The specimens.

How can I check the status of my application?

Once you receive a serial number for your application, you can check the status of your application through the Trademark Status and Document Retrieval (TSDR) system. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199 to request a status check. You should check on the status of your pending application every 3-4 months. If the USPTO has taken any action, you may need to respond promptly. All USPTO actions are available for viewing using TSDR.

How long will it take for my mark to register?

The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. You may view the application processing timelines here.

How do I file a Statement of Use or Extension Request after the Notice of Allowance is issued?

The Applicant has six (6) months from the mailing date of the notice of allowance to file either a Statement of Use or an Extension Request.

If the applicant is using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must submit a statement of use form, specimen and the required fee(s) within 6 months from the issue date the notice of allowance to avoid abandonment. Applicant cannot withdraw the statement of use; however, the applicant may file one extension request with the statement of use to provide more time to overcome deficiencies in the statement of use. No further extension requests may be filed.

If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request form and the required fee(s) to avoid abandonment. The applicant must continue to file extension requests every 6 months calculated from the issue date of the notice of allowance until the statement of use is filed. A total of 5 extension requests may be filed.

If I filed based on an “intent to use” the mark, when must I allege actual use of the mark in commerce?

You must file your Allegation of Use either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted.

May I assign or transfer the ownership of my trademark to someone else?

Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee. For the guidelines for filing an assignment and the assignment form itself, click on Assignments or contact the Assignment Recordation Branch at 571-272-3350.

AFTER THE TRADEMARK HAS REGISTERED

How long does a trademark registration last?

The registration is valid as long as you timely file all post registration maintenance documents. You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated. For more information see Maintain/Renew a Registration.

Where should I place the ® symbol?

There are no specific requirements on where the “®” symbol should be placed relative to the mark, but most businesses use the symbol in the upper right corner of the mark. The “®” symbol indicates that you have federally registered your trademark with the United States Patent and Trademark Office. It puts the public on notice that your mark is registered and that you have nationwide rights in it. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.

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Are there any restrictions on use of the “®” symbol?

There are three important restrictions on use of the “®” symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the federal registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.

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Is a federal registration valid outside of the United States?

No. However, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. See TMEP Chapter 1000 and TMEP Chapter 1900 for further information.

What if someone else is using my registered mark on related goods and services?

You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting an attorney specializing in trademark law. Local bar associations and phone directories usually have attorney listings broken down by specialties. Time can be of the essence. Click here for further information.

My spouse owned a trademark registration and has since died. Do I own it now?

Perhaps. Because this depends on state law, the USPTO cannot provide a definite answer for all factual situations. You should consider contacting an attorney. Local bar associations and phone directories usually have attorney listings. Click here for further information.

OTHER TRADEMARK QUESTIONS

What are “common law” rights?

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.

What is “interstate commerce”?

For goods, “interstate commerce” generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involves offering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).

Will my information be public?

All data you submit to the USPTO, including your phone number, e-mail address, and street address, but not your credit card and banking information, is public record and is viewable on the Internet. Do not submit personal identifying information that is NOT required for a filing, such as a social security number or driver’s license number.

For more information, please consult the FAQs Personal Information in Trademark Records.

What are trademark monitoring and document filing services?

You may receive unsolicited communications from companies requesting fees for trademark-related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies that offer these services are not affiliated or associated with the USPTO or any other federal agency.

May a trademark filing company represent me before the USPTO?

Only licensed attorneys may represent you before the U.S. Patent and Trademark Office (USPTO). If you hire someone to represent you, he or she must be an attorney licensed to practice law in a U.S. state and be a member in good standing of the highest court of that state. Attorneys from other countries, except certain Canadian attorneys and agents representing Canadian filers, may NOT practice before the USPTO.

How can I view my documents if I cannot use TSDR?

You can access a copy of your documents by using the TDR Application Programming Interface (API), which relies on specific URLs rather than the TSDR interface presented through the USPTO website. You should follow these examples:

1. To access all documents for Serial Number 72131351 as a PDF, enter the following in your search box: http://tdrapi.uspto.gov/ts/cd/casedocs/bundle.pdf?sn=72131351
2. To access all documents for Registration Number 3,500,030 as a PDF, enter the following in your search box: http://tdrapi.uspto.gov/ts/cd/casedocs/bundle.pdf?rn=3500030
3. To access all documents for Reference Number Z1231384 as a PDF, enter the following in your search box: http://tdrapi.uspto.gov/ts/cd/casedocs/bundle.pdf?ref=Z1231384

Where can I find trademark “sound mark” examples?

You can view examples of sound marks at http://www.uspto.gov/trademarks/soundmarks/index.jsp.