Registering Trademarks
What is a Trademark or Service Mark?
A trademark is something that is used in trade in connection with goods to indicate the source of those goods and to distinguish those goods from the goods of others. A service mark is essentially the same as a trademark except that it identifies and distinguishes the source of a service rather than a good (product). The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks. I mark may be a word, name, symbol, or device.
Federal Registration of a Trademark gives the right to prevent others from using a confusingly similar mark in the United States, or from expanding their geographic use if it predates the filing date of the Federal Trademark Application.
Trademark rights do not prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the USPTO
What Must a Federal Trademark Application Include?
An application must include the following elements before the USPTO will accept it:
- the name of the applicant;
- a name and address for correspondence;
- a clear drawing of the mark;
- a listing of the goods or services; and
- the filing fee for at least one class of goods or services.
Upon receipt of a federal trademark application that meets the minimum filing requirements, the USPTO will assign a serial number and send a filing receipt.
Owner
Any trademark/service mark application must be filed in the name of the owner of the mark. The owner of the mark is the person or entity who controls the nature and quality of the goods identified by the mark and/or the services that are rendered in connection with the mark. The owner may be an individual, corporation, partnership, or other type of legal entity.
Drawing
A trademark application must include a clear drawing of the mark applied for, which may be a logo, a stylized word mark, or simply the word mark without any stylization of the letters. The USPTO uses the drawing to file the mark in the USPTO search records and to print the mark in the Official Gazette and on the registration certificate.
Description of Goods and/or Services
A trademark application must list the specific goods/services for which registration is sought. The mark must be haven used in commerce on or in connection with all the goods and/or services listed. If based on intent to use, you must have a bona fide intention to use the mark in commerce on or in connection with all the listed goods and/or services. The list of goods and/or services can be amended or shortened after filing, but not expanded or broadened.
Specimen
A specimen is an example of how you are actually using the mark in commerce on or in connection with the identified goods and/or services. This is not the same as the drawing of the mark, which merely represents what you are claiming as the mark. Normally, a specimen for a mark used on goods shows the mark on the actual goods or packaging for the goods. It may be a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods. The actual product is not submitted.
Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards generally are NOT acceptable specimens for goods. A specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e., not just a display of the mark itself. For example, if the mark sought to be registered is "XYZ," a business card that only shows the mark "XYZ" would not be acceptable. A business card that states "XYZ REAL ESTATE" would be acceptable.
Basis for Filing
The application should include your "basis" for filing. Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future.
What is “Use In Commerce?”
For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. For goods, the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce. For services, the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.
If you have already started using the mark in commerce, you may file based on that use. A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. The application should include a specimen showing use of the mark in commerce.
What is "Intent to Use"?
If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce. You do not have to use the mark before you file your application. An "intent to use" application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce.
NOTE: If you file based on intent to use, you must begin actual use of the mark in commerce before the USPTO will register the mark; that is, after filing an application based on "intent to use," you must later file another form ("Allegation of Use") to establish that use has actually begun. Only then will a trademark registration issue.
What Other Basis is there For Filing for a U.S. Trademark Registration?
Yes. Although not as common, an application for a U.S. trademark registration may be based upon international agreements which provide an opportunity to file based upon a foreign application or registration.
Also, section 66(a) of the Trademark Act permits the holder of an international registration to file a request for extension of protection of the international registration to the United States under the Madrid Protocol.
DISCLAIMER
Every case is unique and requires an experienced attorney to address your particular situation. Please do not consider any of the information provided here to replace a personal consultation with an experienced IP lawyer.
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