Wondering whether you meet all legal requirements for a trademark? Find out how to file and manage your trademark in this quick guide.
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Is there a way to submit my trademark application?
Yes. You can file your application directly over the Internet using the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas. Two options are available: regular TEAS and TEAS Plus.
You can also pay through an existing USPTO account by credit card or electronic funds transfer. The advantages of electronic filing are numerous over filing on paper:
- Online help. Hyperlinks give service sections for all application fields. You can also get help from the Trademark Assistance Center (TAC).
- Validation function. TEAS inspects information to prevent it from being omitted.
- Instant reply. The USPTO immediately sends an email receipt with the initial filing receipt. This includes the assigned application serial and a summary.
- 24-hour availability. The TEAS can be accessed 24 hours, seven days per week (except Sundays at 2 a.m.-6 a.m.). You cannot pay by credit card on Sundays. However, you may create forms and save them for later files. You can get a filing date up until midnight Eastern Standard Time any day.
- Lower filing fees. The filing fee for using TEAS is much lower than the paper filing fee. You can use the TEAS PLUS form to get a lower price than regular TEAS applications.
- You will receive more accurate filing receipts. Most of your information can be transferred directly from the database. It is usually unnecessary to enter the same information again at the USPTO.
Access TEAS is available at any Patent and Trademark Resource Center (PTRC) in the United States, even if you don’t have Internet access.
What’s the difference between the TEAS Plus and the regular TEAS application options?
To illustrate, you will need to choose an entry from the USPTO Acceptable ID of Goods and Services Manual that accurately describes your goods/services. You will also need to file communications regarding your application through TEAS.
Additionally, you can receive communications via email about your application. Failure to comply with the TEAS Plus requirements will result in the USPTO charging $50 per class.
What is a trademark filing date, and how is it determined?
Every application has a filing day. If you send your application via the Internet (in Eastern Standard Time), the filing date is when the transmission reaches USPTO servers.
The filing date is when the USPTO has received the application if you file on paper. The USPTO relies upon a filing day to determine priority for priority assessment. In other words, the USPTO reviews each application in the order received. It is essential because it will generally prioritize your application over other applications filed later.
If another application is filed after you’s, it will cause confusion, and, technically, the application will be stopped or suspended until yours registers or goes to an abandoned state.
The priority given by a filing date may not be absolute. For example, if you have been using your mark for many years, you may have powerful rights.
Even if you’re second in line, you may be able to interfere with an opposition proceeding to prevent the application from being registered. Although examination will not occur in an unorderly manner, the second inline has the opportunity to claim superior rights at the correct time in the overall registration procedure.
The filing date is not a guarantee that your mark will become registered. To be granted registration, it is necessary to comply with all the application requirements and overcome any refusals made by USPTO during the examination.
Fee For trademark Application Filing
Application fees are determined by the type of application (paper, regular, or TEAS Plus) and the number of International Class Goods or Services included in the application. Paper applications have a higher filing fee, while TEAS Plus applications have the lowest.
For current prices, see the Trademark Fee Information page at http://www.uspto.gov/trademarks/tm_fee_info.jsp.
Each International Class requires its filing fee. You can use the schedule to calculate the costs for each class (each class of goods or services requires a separate filing fee), but it is not suitable for the actual identification of the goods and services that you want to list in your application.
In addition, the schedule is not recommended since general class headings cannot be accepted for filing purposes. Instead, use the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) at http://tess2.uspto.gov/netahtml/tidm.html.
The TEAS forms and TEAS plus forms are available for payment via credit card, electronic money transfer, or an existing USPTO deposit bank account.
If you prefer filing on paper, the USPTO website has the form you need to authorize credit card payments. You can also download it or send a check/money order made payable to the “Director of USPTO.”
Filing fees cannot be refunded. The filing fee for an application that meets all requirements is not refundable if denied on legal grounds.
Basis For trademark Filing
Your “basis” is what the application should specify. Most U.S. applicants base a filing on either current or future use of the mark.
What is the difference between a “use–in commerce” and an “intent-to-use” application?
The first use date anywhere refers to when the goods or services were initially provided under the mark. This applies even if the use was local.
The date of the first use in commerce refers to the date the goods were sold, transported or the services first provided under the trademark between more than one U.S. territory or state.
The date that the mark was first used anywhere must be equal to or earlier than when it was first used in commerce.
What is an “intent to use” basis?
If you plan to use the mark in the future but have not yet used it, you can file based on good faith or bonafide intent to use it in commerce.
For example, if you have an idea but are not ready to market the mark, a bona fide intention to use it is more than merely an idea. An example of a bonafide intent to use a mark is having a business plan or creating sample products.
Is there another filing basis?
Yes. Based on international agreements/treaties, an owner may apply to the U.S. based on a foreign application/registration issued by another country. In addition, foreign owners may also file international applications in their home countries to extend protection to the U.S.
How can I protect my mark in other countries?
Even though the registration is valid only in the U.S.A, the “international” classification number assigned to the goods/services is not applicable.
Therefore, you can either file an international or direct application if you need to protect your mark abroad after filing a U.S. request. But make sure, you do a proper trademark search. As shared by several entrepreneurs, not doing your preliminary due-diligence can spell trouble in the long run.
Information to include with the trademark application
- Owner of the mark (“applicant”)
- Name and address are for correspondence
- Depiction of “the drawing”
- Fee for application filing
- Basis for filing
- Specimen permitted for use-based applications
Applicant owner of the mark
The applicant must apply the name and address of the owner of the mark. The owner is the owner of the person, entity, or organization that controls the nature and quality of the goods/services identified as the trademark owner.
The mark owner is not necessarily the person filling out this form. The owner could be an individual, a corporation, a partnership or LLC, or another type of legal entity.
To apply, must I be a U.S citizen?
No. No. You don’t need to be a U.S. Citizen to apply for and get a federal registry.
Name and address are for correspondence
USPTO must know the applicant’s name and street address to communicate the application. Therefore, it is strongly recommended that the applicant provide an email address to authorize the USPTO for electronic communication.
This will allow the USPTO to send notices about the application by email. Applicants who use the TEAS Plus form need to authorize email communication. Note: The USPTO does not accept responsibility for any email not received due to the applicant’s security, antispam software, or other problems in the applicant’s email system.
Domestic representatives may be named and provided the address by applicants who are not residents of the United States. Domestic representatives are people who reside in the U.S. and may be served with notices or processes regarding proceedings that affect the mark.
Warning about Privacy Concerns
Except for payment information submitted to the USPTO, all data, including your street address and email address, and telephone number, will become part of a public record.
It will be accessible online on the USPTO website and other websites that index USPTO data, such as Google.com. Some applicants may use a Post Office number to protect their physical address.
Your telephone number is required to help the USPTO contact you. Please do not provide your telephone number if you do NOT wish it to become public. Non-USPTO Communications regarding Your Trademark
Third parties websites and Internet engines may post and use the information you have provided to the USPTO. Other companies may also use this information to mail or email you solicitations about your trademark. These companies could use names that are similar to the USPTO name.
This includes the terms “United States” (or “U.S”), and solicitations that mimic legal or commercial solicitations may consist of information from the USPTO. Many refer to the U.S. Code and other government agencies. Most require payment of “fees.”
Be sure to thoroughly read any trademark-related communication before deciding whether or not to respond.
Claim to trademark infringement
If a trademark owner thinks you are not entitled to use your trademark, you might receive a “cease-and deist” letter.
(1) demands that you cease using your mark due to what the letter will claim is an illegal or infringing usage and,
(2) That you face possible legal actions if you don’t stop using it.
Therefore, it is advisable to retain an attorney to represent you because of legal implications regarding your rights in your trademark and the threat of legal action against yourself.