Registration
Do I have to be a U.S. citizen to obtain a trademark registration?
No. A state registration application may or may not ask for a citizenship designation. However for a federal registration, an applicant's citizenship must be stated. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed when the mark is published in the USPTO Official Gazette and on the certificate of registration.
Can a minor file a trademark application?
This depends upon state law. If the person can validly enter into binding legal obligations in the state, then that person may sign a trademark application. Otherwise, a parent or legal guardian must sign the application clearly setting forth their status as a parent or legal guardian of the applicant.
On what bases can a foreign applicant file an application for registration?
- Use in interstate commerce or commerce between the United States and a foreign country.
- Bona fide or good faith intention to use the mark in interstate commerce or commerce between the United States and a foreign country.
- Ownership of an application filed in a foreign country (if within 6 months of the foreign filing date).
- Ownership of a foreign registration (with a copy).
- Extension of protection of an international registration to the United States under the Madrid Protocol. See the USPTO Web site at www.uspto.gov/web/trademarks/madrid/madridguide.htm for further information about the Madrid Protocol.
Do I need an attorney to file a trademark application?
No, although it may be desirable to employ an attorney who is familiar with trademark matters. For a federal trademark registration, as an applicant, you must comply with all substantive and procedural requirements of the federal Trademark Act and USPTO Trademark Rules of Practice even if you are not represented by an attorney.
Where can I find a trademark attorney?
First, ask family, friends, neighbors, business associates or your personal attorney for recommendations. If they do not know anyone, the names of attorneys who specialize in trademark law may be found in the telephone book or by contacting a local bar association. The government agencies will not recommend an attorney.
I want to register my trademark. Where do I begin?
You begin with completing an application for trademark registration. The application:
- must be completed and signed;
- include your name, domicile, location and citizenship;
- state the category of merchandise for the trademarked goods;
- describe the goods to which the trademark will be applied;
- set out the length of time the trademark has been used;
- describe the trademark itself ;
- include a drawing of the trademark; and
- include five samples of the goods with the trademark as they will be used or sold.
TIP: If you are incorporated, and the corporation is applying for the trademark, you must include the state or country of incorporation and primary place of business.
TIP: Trademark registration documents can be filed online at: http://etas.uspto.gov. You may mail documents to:
Mail Stop Assignment Recordation Services
Director of the United States Patent and Trademark Office
P. O. Box 1450
Alexandria VA 22313-1450
Where can I find trademark forms?
For federal registrations, you can access forms through the USPTO Trademark Electronic Application System (TEAS), at www.uspto.gov/teas/index.html. Additional forms may be available through the Trademark Assistance Center at 800.786.9199 or 703.308.9000. Generally, you can find state trademark forms at the Web site or through the office for the state official charged with trademark registration.
What if I need to ask a question about trademarks?
For federal trademark registrations, you can get answers to specific trademark questions or more information about trademarks in general by contacting the Trademark Assistance Center at 800.786.9199 or 703.308.9000. The state office charged with registering trademarks usually has agents available to answer general questions about state trademark matters. Their contact numbers are usually available online or in the telephone book under "State Agencies" or "State Government."
How do I find out whether a mark is already registered?
To find out if a trademark or service mark is registered, you must conduct a trademark search. There are several ways this can be done. One method is to do a "common law search." A common law search involves searching records other than the federal trademark register and pending application records. This involves checking phone directories, Yellow Pages, industrial directories, state trademark registers or the Internet, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration. A common law search is not necessary, but you may find it beneficial. It may give you an early warning that the mark you are using or intend to use is being used by someone else.
You can also hire a trademark search firm to conduct a common law search for a fee. Telephone numbers for search firms that perform these searches can be found in local phone directories and through an Internet search.
What other methods can I use to search?
For federal trademarks, you can conduct a search free of charge on the USPTO Web site using the Trademark Electronic Search System (TESS) at http://tess2.uspto.gov/bin/gate.exe?f=tess&state=es1tbf.1.1. If your mark includes a design element, you will have to search it by using a design code. You can find the design codes on the USPTO Web site at www.uspto.gov/tmdb/dscm/index.html.
You may also conduct a federal trademark search by visiting a Patent and Trademark Depository Library (PTDL) near you. A PTDL is a library which is designated by the USPTO to receive and house copies of U.S. patents and patent and trademark materials, to make them available to the public and to disseminate both patent and trademark information. To be designated, a library must meet specific requirements and promise to fulfill certain obligations. Every state, the District of Columbia and Puerto Rico has at least one PTDL. They are usually located in major cities.
SIDEBAR: Trademarks (word marks only) may be searched at the PTDLs. The Patent and Trademark Depository Librarians cannot give any legal advice nor can they perform the searches for you. They will, however, provide you with the information you need to get started. To find a Patent and Trademark Depository Library, go to the USPTO Web site at www.uspto.gov/web/offices/ac/ido/ptdl/ptdlib_1.html.
State trademark searches vary from state to state. The state office charged with trademark registration is usually required to keep a list of registered marks. Finding and searching this list can be difficult. Some allow you to do an online search; others do not. Sometimes you can find these listings at local libraries or government offices. A search fee may or may not be required.
What about using a private trademark search firm?
Private trademark search firms will conduct searches for a fee. The amount of the fee will vary depending upon what depth of search you request. There is usually a separate charge for each search-common law, state or federal search-although there is usually a package deal for a comprehensive search.
TIP: Search firms are often listed in telephone directories under the heading "Trademark Search Services" or "Patent and Trademark Search Services." The state office or USPTO will not recommend a search firm.
If you hire a trademark attorney, ordinarily he or she will have a search firm that the law firm regularly uses and will have their search firm conduct the search for you.
TIP: If you have already conducted or paid for a search, be sure to provide it to your trademark attorney. This may save the attorney time and you money.
Is it advisable to conduct a search before filing an application?
Yes. It will save you time, money and aggravation.
Can I do the search myself?
Yes. However, keep in mind that a trademark search can be complicated and time-consuming.
Can I just wait until after I file the trademark application and let the government do the search for me as part of the examination process?
Yes, you could do that, but you may be wasting time and money. If "conflicting" marks turn up at that point, you will have wasted your time and money filing the application. Also, you will have wasted the time and money you invested in creating the mark.