The trademark process can be challenging if you are not familiar with it. This page outlines trademark frequently asked questions (FAQs) and provides useful information from the United States Patent and Trademark Office (USPTO) on registering a trademark with the USPTO.
If you have further questions or concerns, or if you need further clarification on any issue, contact us.
The term “trademark” is often used to refer to any of the four types of marks that can be registered with the United States Patent and Trademark Office (USPTO). The two primary types of marks that can be registered with the USPTO are trademarks and service marks.
Trademarks - used by their owners to identify goods, that is, physical commodities, which may be natural, manufactured, or produced, and which are sold or otherwise transported or distributed via interstate commerce.
Service marks - used by their owners to identify services, that is, intangible activities, which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.
The other types of marks that can be registered in the USPTO are certification marks and collective marks, but they occur infrequently and have some different requirements for registration than the more commonly applied for trademarks and service marks.
NOTE: Since the benefits conferred by registration are essentially the same for all types of marks, the term "trademark" is often used in general information that applies to service marks, certification marks, and collective marks as well as to true trademarks (marks used on goods) as defined above.
Rather than simply relying on common law or unregistered rights, the benefits associated with a federally registered trademark include:
An applicant is responsible for observing and complying with all substantive and procedural issues and requirements whether or not represented by an attorney. Although not required, most applicants use 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 trademark attorney may help you avoid many potential pitfalls.
A federal trademark application should include:
Only licensed attorneys may represent you before the United States 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.
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 United States Patent and Trademark Office (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.
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.
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.
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.
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.
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.
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.
The registration is valid as long as you timely file all post registration maintenance documents.
For a 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 ten-year period after the date of registration. The registrant may file the Section 8 Affidavit within a grace period of six months after the end of the sixth or every tenth year, with payment of an additional fee. The registrant must also file a Section 9 renewal application (Section 9 Renewal) within the year before the end of each successive 10-year period following the date of registration, or within a grace period of six months thereafter, with payment of an additional fee. Assuming the Section 8 Affidavit and Section 9 Renewal are timely-filed as indicated above, the registration will be renewed for a 10-year term.
NOTE: If the Section 8 Affidavit and Section 9 Renewal are not timely filed, the registration will be cancelled. Registrations cancelled due to the failure to file a Section 8 Affidavit and Section 9 Renewal cannot be revived or reinstated.
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.
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).
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."
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.
It is advisable to conduct a search before filing your trademark application. A search for pending, registered and dead trademarks may be conducted on the USPTO website using the Trademark Electronic Search System (TESS) or by visiting the Public Search Facility located on the first floor of the Madison East building at 600 Dulany St., Alexandria, VA 22313 between 8:00 a.m. and 8:00 p.m.
Also, certain information may be searched at a Patent and Trademark Depository Library (PTDL). If you need assistance in searching for trademarks, you may wish to locate an attorney specializing in trademark law.
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 United States Patent and Trademark Office (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.
No. You can establish rights in a mark based on use of the mark in commerce, without a federal registration. However, owning a federal trademark registration on the Principal Register provides a number of important benefits.
It is difficult to predict exactly how long it will take an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately three weeks after filing, which will include the serial number of the application. All future correspondence with the United States Patent and Trademark Office (USPTO) must include this serial number. You should receive a response from the USPTO within six to seven 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 which may arise in the examination of the application.
A trademark is intellectual property that may be transferred or sold. The law permits the transfer or sale of a trademark by means of a legal document called an assignment. A properly executed assignment transfers all rights from the existing owner to another person (referred to as the Assignee). When the trademark is transferred, the Assignee becomes the new owner of the Trademark and has the same rights as the original owner. The United States Patent and Trademark Office (USPTO) records all assignment documents and any document that affects title. Documents that affect title include, but are not limited to, mergers, changes of names, security agreements, various liens, licenses, probate documents, and bankruptcy petitions.
NOTE: With all assignments, the assignment information provided by the user will be recorded as provided and will not be verified or modified by the USPTO.
The United States Patent and Trademark Office (USPTO) examines trademark applications to determine if there is likelihood of confusion between the mark in the application and a previously registered trademark or another mark in a prior-pending application. If no conflict is found and all other statutory requirements are met, the examining attorney can approve the mark for publication. The USPTO has no powers of enforcement concerning the use of trademarks in the marketplace.
The Trademark Electronic Application System (TEAS) allows you to fill out online USPTO forms. You can submit the forms directly to the USPTO over the Internet and pay by credit cards, electronic funds transfer, or through an existing USPTO deposit account.
All forms filed via TEAS are stamped Eastern Time when received on the United States Patent and Trademark Office (USPTO) server. The time stamp is applied at the moment the payment process is completed and the Success screen is displayed. The time stamp applied by the TEAS server is the official time the USPTO received the application or form; the time the transmission was begun is not a factor considered when assigning the filing date. The official filing date and time can be found at the bottom of your e-mail confirmation. Any submission that arrives as of 11:59 p.m. Eastern Time will be given that day’s filing date (i.e., regardless of USPTO’s “normal” business hours).
To use a TEAS form, each and every time you should (1) double-click on the browser icon on your desktop; (2) proceed to the TEAS site; and (3) click on the link for the desired form. Although you can open more than one form at a time through these steps, you should process ONE form at a time, and close the browser after completing the form. This will ensure a “unique” server session for each TEAS form to be processed. If you already have a TEAS form open on your desktop, never open another form via your browser’s “File New Window” option. Also, do not open a new form through a link or bookmark while you have another form open. Failure to follow the steps outlined above may result in improper data displaying within the form.
Also, the TEAS forms work best when they are accessed directly via a web browser. Do not attempt to access the forms via a browser embedded in another program. For instance, do not attempt to access the forms from within your Outlook or Lotus Notes web browser feature. Accessing the forms in this manner may disable some of the forms’ features. You should always open your browser (Internet Explorer, Netscape, Firefox, Safari, etc.) directly and then use the TEAS forms.
Yes, you have 60 minutes to complete a form. However, the 60-minute period is not an “absolute” period; i.e., you do not have to complete the form, start to finish, within 60 minutes. If the USPTO’s server does not detect any activity at all within 60 minutes, it will end your session at the 60-minute point.
HOWEVER, at 54 minutes into your session, you will receive a pop-up window warning you that your session will expire in six minutes (it will actually provide the precise “end” time within the window, such as 11:29:14 EST). To “renew” your session, you simply need to click on the “O.K.” button at the bottom of the pop-up window, and you will automatically get another 60-minute time period. If you do not click on the button within the remaining six minutes of the session, your session will completely end at the 60-minute mark, and you will be returned directly to the initial form wizard to start the process again. You will not be able to retrieve any information lost from the timed-out session.
Additionally, if you will be working within the ID Manual for an extended period of time, it is critical that you keep your form session “alive.” To do so, it is recommended that you select no more than 20 entries at a time, then click the “Insert Check Entries” button. On the next page that displays all of your selections, use the “Add Goods/Services by Searching IDManual” button to return to the Manual to continue the process; repeat this process until all of your items are displayed in the overall listing on the page for assigning a filing basis.
Also, the TEAS forms work best when they are accessed directly via a web browser. Do not attempt to access the forms via a browser embedded in another program. For instance, do not attempt to access the forms from within your Outlook or Lotus Notes web browser feature. Accessing the forms in this manner may disable some of the forms’ features. You should always open your browser (Internet Explorer, Netscape, Firefox, Safari, etc.) directly and then use the TEAS forms.
For help in resolving technical glitches with the Trademark Electronic Application System (TEAS), e-mail TEAS@uspto.gov. Your e-mail should include the following information:
The Trademark Official Gazette (TMOG) is published every Tuesday, including federal holidays. The purpose of the TMOG is to give notice of certain actions that are being taken with respect to the marks listed in the TMOG on the particular date of issue. Publication in the TMOG starts the period for opposition for some of the marks listed in the TMOG.
The TMOG contains a depiction of the mark, the identification of goods and/or services, and owner information for:
The TMOG contains a depiction of the mark, the identification of goods and/or services, and owner information for: (1) marks published for opposition that are expected to register on the Principal Register; (2) marks registered on the Principal Register under 15 U.S.C. § 1051(d) on the date of the particular TMOG issue in which the marks appear; (3) marks registered on the Supplemental Register on the date of the particular TMOG issue in which the marks appear; and (4) updated registration certificates. The TMOG also contains a list, by International Class, of the registrations issued on the Principal Register on the date of the particular TMOG issue and an index of registrants appearing in that issue.
Once the USPTO publishes a trademark in the TMOG, any party who believes he or she will be damaged by the registration of the trademark has 30 days either to: (1) file an opposition to the trademark with the Trademark Trial and Appeal Board (TTAB); or (2) request an extension of time to file a notice of opposition.
You must pay a fee of $300.00 for each class of goods or services that you oppose when filing a notice of opposition. An opposition submitted without the required fee will not be accepted. There is no fee for filing an extension of time to file a notice of opposition.
The TTAB requests that all TTAB submissions be made online using the TTAB electronic system ESTTA at http://estta.uspto.gov/.
If you need more information on filing a notice of opposition, contact the TTAB Assistance Center at 571-272-8500 or toll-free at 1-800-786-9199, or refer to the online information at http://www.uspto.gov/trademarks/process/appeal/index.jsp.
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application." The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system. The resulting "international registration" serves as a means for seeking protection in member countries, each of which apply their own rules and laws to determine whether or not the mark may be protected in their jurisdiction. Neither the Madrid Protocol nor the Madrid Agreement provide for registration of an "internationally effective" trademark.
Trademark Electronic Application Submission International (TEASi) is an e-filing system that allows for the filing of the forms required under the Madrid Protocol to the United States Patent and Trademark Office (USPTO). The Madrid Protocol is an international treaty that establishes a framework for the international registration of trademarks. It allows a trademark owner to file for registration in any of the countries (called Contracting Parties) that have joined the Madrid Protocol by filing a single application, called an “international application” or “Madrid application.” The international application is based on an application or registration in the trademark owner’s own country (a basic application or basic registration). The International Bureau (IB) of the World Property Intellectual Organization (WIPO) administers the international trademark applications under the Madrid System for the International Registration of Marks (the Madrid System). TEASi allows USPTO customers to submit electronic forms for the filing of an application for international registration, subsequent designation, request for transformation, request to note replacement, and response to a notice of irregularity issued by the International Bureau of WIPO. TEASi can be accessed through the USPTO website at http://www.uspto.gov/trademarks/teas/teasi.jsp.
Under 37 C.F.R. § 7.11(a), the United States Patent and Trademark Office (USPTO) will grant a date of receipt to an international application that is submitted through the Trademark Electronic Application System International (TEASi) and contains all of the following:
In addition to the USPTO certification fees, there are fees that must be paid to the World Intellectual Property Organization (WIPO). These WIPO fees payable in connection with the filing of an international application consist of:
(1) the basic fee (WIPO’s fee for processing the international application) and
(2) either the complimentary fee(s) or the individual fee(s), depending on the Contracting Parties designated.
An additional fee is required for the submission of any color image. The calculation can be determined from the WIPO fee calculator. The total is reflected in U.S. dollars, as converted from Swiss francs. See WIPO’s website at http://www.wipo.int/madrid/en/fees/ for more details.
To file an international application through the USPTO, an applicant must have a U.S. application, called a "basic application" or a U.S. registration, called a "basic registration." The mark and the owner of the international application must be the same as the mark and the owner of the basic application or registration. The international application may be based on more than one USPTO application or registration provided the mark and the owner are the same for each basic application and/or registration.
The international application must include a list of goods and services that is identical to or narrower than the list of goods or services in the basic application or registration. The international applicant must pay the U.S. certification fee(s) at the time of submission and identify at least one Contracting Party in which an extension of protection (that is, registration in a Contracting Party) is sought.
A list of the minimum requirements for obtaining a date of receipt of an international application in the USPTO is set forth in 37 C.F.R. § 7.11(a).
The requirements for a complete international application are set forth in Article 3 of the Protocol and Rule 9 of the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (Common Regulations). The Common Regulations are currently available on the WIPO website at http://www.wipo.int/madrid/en/.
An international applicant must pay fees to the USPTO and to the International Bureau. The USPTO charges a fee for certifying international applications and transmitting them to the International Bureau, called a "certification fee." The certification fee is $100.00, per class, if the international application is based on a single U.S. application or registration. The certification fee is $150.00, per class, if the international application is based on more than one U.S. application or registration.
The International Bureau requires payment of fees based on whether the reproduction of the mark is in black and white and/or in color, the particular Contracting Parties designated in the international application and the number of classes of goods and services indicated in the international application. The schedule of fees, individual fees and International Bureau Fee Calculator are posted on the WIPO web site at: http://www.wipo.int/madrid/en/. The international application fees must be paid directly to the International Bureau in Swiss francs.
No. Once an international application is submitted to the USPTO, it cannot be amended, changed, or corrected in any way. The applicant must contact the International Bureau with any questions of concerns.
