How do I obtain a state trademark registration?
Depending on the state, you may be able to fill out a trademark application online. Otherwise, you can fill out the application form and mail or fax it to the appropriate state office. There is a fee for filing the application.
How do I obtain a federal trademark registration?
You can fill out an application online and file it over the Internet using the USPTO TEAS at www.uspto.gov/teas/index.html. If you do not have access to the Internet, you can call the Trademark Assistance Center at 800.786.9199 or 703.308.9000 to request a paper form.
TIP: The USPTO strongly recommends using TEAS for filing. Applications filed electronically are processed faster than paper applications.
CAUTION: You cannot send an application by fax to the USPTO; applications sent by fax are not accepted.
A filing fee must be paid at the time of application. Visit the USPTO Web site for the latest information on the required fee amount at www.uspto.gov/teas/index.html.
What are some suggestions to facilitate filing of a federal trademark application and contacting the USPTO?
- File electronically through the USPTO TEAS at www.uspto.gov/teas/index.html whenever possible. TEAS can be used to file an application for registration of a mark, response to examining attorney's Office action, notice of change of address, amendment to allege use, statement of use, request for extension of time to file a statement of use, affidavit of continued use, affidavit of incontestability and for other filings.
- When a document is filed electronically, the USPTO receives it within seconds after filing and immediately issues a confirmation of filing via e-mail that includes the date of receipt and a summary of the submission. This confirmation is evidence of filing should any question arise as to the filing date of the document. Also, documents filed electronically are processed faster than paper documents. The data provided by the applicant is entered directly into the USPTO's databases, so data entry errors are unlikely. When documents are filed electronically, it is very unlikely that they will be lost or misplaced within the USPTO.
- Carefully review all documents before filing to make sure all issues have been addressed and all the necessary elements are included.
- Do not file large or "bulky" specimens. Rather, submit a picture of the mark on the specimen. Bulky specimens are specimens that are larger than 8½ by 11 inches and which do not lie flat. The USPTO encourages applicants to send photographs of the goods, as long as the mark is clear from the photograph. If filing electronically, the specimen should be submitted as a digitized image in .jpg format.
- Place the serial number or registration number (once known) on each paper or exhibit filed, including any required checks. If, for some reason, neither number is available, put some other identifying information on the correspondence (such as a mark, name of the applicant or filing date).
- Promptly inform the USPTO of any change in correspondence address. This can be done through TEAS.
- Use the USPTO Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov to check on the status of any application. You should check the status of your application every 6 months.
Who may file an application?
Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or 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 is the owner of the mark.
Do I have to include a copy of the mark with the application?
In addition to describing the mark in the application, ordinarily the applicant must submit a specimen and/or drawing.
What is a "specimen"?
A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. For federal registrations, if the actual specimens are bulky-larger than 8½ by 11 inches-then the applicant must submit photographs or good photocopies of the specimens. The photographs or photocopies may not exceed 8½ by 11 inches. If the application covers more than one "class" of goods or services, one specimen is required for each class of goods or services specified in the application.
Specimens are required in applications based on actual use in commerce and in applications based on a bona fide intention to use the mark in commerce. Specimens are not required for applications based on a foreign application or registration or for applications based on an extension of protection of an international registration to the United States.
What is a "drawing"?
A drawing is a separate page which depicts the mark an applicant seeks to register. For a federal registration in an application based on actual use, the drawing must show the mark as it is actually used, i.e., as shown by the specimens. In the case of an application based on a bona fide intention to use, the drawing must show the mark as the applicant intends to use it. In an application based on a foreign application or foreign registration, the drawing must depict the mark as it appears or will appear on the foreign registration.
SIDEBAR: Since an applicant cannot register more than one mark in a single application, the drawing must display only one mark.
For a federal registration, if I submit a specimen, is a drawing still required?
Yes. The specimen and drawing serve different purposes. A drawing is required in all applications and is used by the USPTO for several purposes, including publishing the mark in the Official Gazette and on the registration certificate. A specimen, on the other hand, is required as evidence that a mark is in actual use in commerce.
Can registration of a mark be refused?
Yes. A trademark registration will be refused if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks.
EXAMPLE: Matter which is merely the generic name of the goods on which it is used-for example, "computer"-cannot be registered.
Are there any other grounds for refusing to register a mark?
Yes. While the following list is based on federal trademark law, most states follow the same rules. The most common (though not the only) grounds for refusing registration are:
- the proposed mark consists of or comprises immoral, deceptive or scandalous matter;
- the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs or national symbols or bring them into contempt or disrepute;
- the proposed mark consists of or comprises the flag or coat of arms or other insignia of the United States or of any state or municipality or of any foreign nation;
- the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
- the proposed mark so resembles a mark already registered in the Patent and Trademark Office that use of the mark on applicant's goods or services are likely to cause confusion, mistake or deception;
- the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;
- the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;
- the proposed mark is primarily merely a surname; and
- the proposed mark consists of matter that, as a whole, is functional.
How can I check on the status of a pending trademark application?
For federal applications, once you receive a filing receipt containing the serial number of your application, you may check on the status of your application through the USPTO TARR database on the Office's Web site at http://tarr.uspto.gov. If you do not have access to the Internet, you can call the Trademark Assistance Center at 800.786.9199 (or 703.308.9000 if you live in Northern Virginia) to request a status check. Applicants should check on the status of their pending applications every 6 months.
For state registrations, you usually have to call the state agency.
If the registration is refused, can I get a refund?
Ordinarily, no. If acceptance of an application is refused, i.e., not filed, usually the fee submitted with the application is returned with the application. In other cases, the only time you are likely to receive a refund is if a fee was not required or was in excess of the amount required.
How long does it take for a mark to be registered?
It is difficult to predict how long it will take for an application to mature into a registration, because there are so many factors that can affect the process. The state registration process is usually faster than the federal registration process.
Generally, a federal applicant will receive a filing receipt approximately 6 months after filing. The filing receipt will include the serial number of the application. All future correspondence with the USPTO must include this serial number. You should receive a response from the USPTO within 6 to 7 months from filing the application. However, 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 appl
TIP: Current status information on federal trademark applications and registrations may be obtained through the TARR database on the USPTO Web site at tarr.uspto.gov.
TIP: Current status information on federal trademark applications and registrations may be obtained through the TARR database on the USPTO Web site at http://tarr.uspto.gov. If you do not have access to the Internet, you can call the Trademark Assistance Center at 800.786.9199 (or 703.308.9000 if you live in Northern Virginia) to request a status check.
How long does a trademark registration last?
For a federal trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: 1) between the fifth and sixth year following registration and 2) within the year before the end of every 10-year period after the date of registration. The registrant may file the affidavit within a grace period of 6 months after the end of the sixth or tenth year, with payment of an additional fee.
The registrant must also file a Renewal ("Section 9") application within the year before the expiration date of a registration or within a grace period of 6 months after the expiration date with payment of an additional fee.
SIDEBAR: Assuming that an affidavit of use is timely filed, registrations granted prior to Nov. 16, 1989 have a 20-year term, and registrations granted on or after Nov. 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted prior to Nov. 16, 1989 have a 20-year term, and renewals granted on or after Nov. 16, 1989 have a 10-year term.
The period of time a state trademark registration remains valid depends upon the law of each state. A common period is 5 years. After the initial registration period, the registration has to be renewed. Of course, there is a renewal fee.
How long does a federal "intent to use" applicant have to allege actual use of the mark in commerce?
An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the Examining Attorney approves the mark for publication. If an Amendment to Allege Use is not filed, then the applicant has 6 months from the issuance of the Notice of Allowance to file a Statement of Use, unless the applicant requests and is granted an extension of time.
SIDEBAR: If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted.
What are the different classes of goods and services that trademarks and service marks can be registered under?
Trademarks and service marks are divided into classes for registration purposes. Below are listed the classes used by the USPTO. Most states use the same or a similar classification system.
TIP: For more detailed information of what each class does or does not include, go to the state agency Web site or the USPTO Web site.
- CLASS 1 (Chemicals)
- CLASS 2 (Paints)
- CLASS 3 (Cosmetics and cleaning preparations)
- CLASS 4 (Lubricants and fuels)
- CLASS 5 (Pharmaceuticals)
- CLASS 6 (Metal goods)
- CLASS 7 (Machinery)
- CLASS 8 (Hand tools)
- CLASS 9 (Electrical and scientific apparatus)
- CLASS 10 (Medical apparatus)
- CLASS 11 (Environmental control apparatus)
- CLASS 12 (Vehicles)
- CLASS 13 (Firearms)
- CLASS 14 (Jewelry)
- CLASS 15 (Musical Instruments)
- CLASS 16 (Paper goods and printed matter)
- CLASS 17 (Rubber goods)
- CLASS 18 (Leather goods)
- CLASS 19 (Nonmetallic building materials)
- CLASS 20 (Furniture and articles not otherwise classified)
- CLASS 21 (Housewares and glass)
- CLASS 22 (Cordage and fibers)
- CLASS 23 (Yarns and threads)
- CLASS 24 (Fabrics)
- CLASS 25 (Clothing)
- CLASS 26 (Fancy goods)li2
- CLASS 27 (Floor coverings)
- CLASS 28 (Toys and sporting goods)
- CLASS 29 (Meats and processed foods)
- CLASS 30 (Staple foods)
- CLASS 31 (Natural agricultural products)
- CLASS 32 (Light beverages)
- CLASS 33 (Wine and spirits)
- CLASS 34 (Smokers' articles)
- CLASS 35 (Advertising and business)
- CLASS 36 (Insurance and financial)
- CLASS 37 (Building construction and repair)
- CLASS 38 (Telecommunications)
- CLASS 39 (Transportation and storage)
- CLASS 40 (Treatment of materials)
- CLASS 41 (Education and entertainment)
- CLASS 42 (Computer, scientific and legal)
- CLASS 43 (Hotels and Restaurants)
- CLASS 44 (Medical, beauty and agricultural)
- CLASS 45 (Personal)