What is a trademark or service mark
A trademark is generally a word, phrase, symbol, design, or a combination thereof that identifies and distinguishes the source of the goods of your company from those of others. A trademark protects brand names and logos used on goods and services.
A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods. The terms “trademark” and “mark” refer to both trademarks and service marks.
Likelihood of Confusion with Other Marks
Your trademark registration can be refused if there is a “likelihood of confusion” between your mark and a mark already registered or in a prior-filed pending application owned by someone else.
A likelihood of confusion exists when both:
(1) the marks are similar and
(2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.
Generally, two identical marks can co-exist, so long as the goods and services are not related. The exception is if the prior registered mark is a famous mark.
Similarity of Marks
For the likelihood of confusion, the marks are first examined for their similarities and differences. Similarity can be in the form of sound/visual/appearance or in the meaning (if in another language), and/or create the same general commercial impression in the consuming public’s mind, and the marks may be considered confusingly similar, depending on the relatedness of the goods and/or services.
Relatedness of Goods and/or Services
Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related.
Relatedness of the goods and/or services can be determined by considering the commercial relationship between the goods and/or services identified in the application with those identified in the registration or earlier-filed application.
The goods and/or services can be related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source. The issue is whether a likelihood of confusion would exist as to the source of the goods and/or services.
Strong v. Weak Marks
Some marks are easier to protect than others, and these are considered “strong” marks. A “strong” mark is a mark that will most easily allow you to prevent third-party use of your mark. A “weak” mark is descriptive, and others are already using it to describe their goods or services, making it difficult and costly to try to police and protect.
Generally, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic. The category your mark falls into will significantly impact both its registration and your ability to enforce your rights in the mark.
The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks because they are inherently distinctive. Fanciful marks are invented words with no dictionary or other known meaning.
Arbitrary marks are actual words with a known meaning that have no association/relationship with the goods protected. Fanciful and arbitrary marks are registrable and, indeed, are more likely to get registered than are descriptive marks. Moreover, because these types of marks are creative and unusual, it is less likely that others are using them.
Examples of fanciful and arbitrary marks:
Fanciful: BELMICO for “insurance services”
Arbitrary: BANANA for “tires”
Suggestive marks suggest, but do not describe, qualities or a connection to the goods or services. Suggestive marks are registrable and are also considered “strong” marks. If you do not choose a fanciful or arbitrary mark, a suggestive mark is your next best option.
Examples of suggestive marks:
QUICK N’ NEAT for “pie crust”
GLANCE-A-DAY for “calendars”
Descriptive marks are words or designs (e.g., depiction of a television for “television repair services”) that describe the goods and/or services. Such marks are generally considered “weaker” and therefore more difficult to protect than fanciful and arbitrary marks.
If the USPTO determines that a mark is “merely descriptive,” then it is not registrable or protectable on Principal Register unless it acquires distinctiveness– generally through extensive use in commerce over a five-year period or longer. Descriptive marks are considered “weak” until they have acquired distinctiveness.
Applicants often choose (frequently at the suggestion of marketing professionals) descriptive marks for their goods and/or services, believing that such marks reduce the need for expensive consumer education and advertising because consumers can immediately identify the product or service being offered directly from the mark.
This approach, while perhaps logical marketing advice, often leads to marks that cannot be easily protected, i.e., to extremely weak trademark rights. That is, a descriptive mark may not be registrable or protectable against later users of identical or similar marks; therefore, adoption of a descriptive mark may end up costing more money in the long term, either due to higher costs to try to police and enforce such a mark, or because it may be legally necessary to stop using the descriptive mark and select a new mark.
Examples of descriptive marks:
CREAMY for “yogurt”
WORLD’S BEST BAGELS for “bagels”
Generic words are the weakest types of “marks” (and cannot even qualify as “marks” in the legal sense) and are never registrable or enforceable against third parties. Because generic words are the common, everyday name for goods and services, and everyone has the right to use such terms to refer to their goods and services, they are not protectable.
Be aware that if you adopt a generic term to identify your goods or services, you will not be able to prevent others from using it to identify potentially competing products or services.
In addition, even a fanciful mark that is very strong can, over time, become generic if the owner either starts using the mark in a non-trademark manner (see ESCALATOR and ASPIRIN examples below) or fails to police the use of its mark properly and take appropriate action. Without proper policing over time, the original owner of a mark could lose any trademark rights it has in the mark.
Examples of generic marks:
Applied-for trademarks that would be considered generic at the time of filing because they are the name of the good or product offered by the service:
BICYCLE for “bicycles” or “retail bicycle stores”
MILK for “a dairy-based beverage”
Trademarks that eventually became generic because of long-term, widespread, non-trademark use: ESCALATOR for “moving staircases,” ASPIRIN for “pain relief medication”
Other Potential Grounds for the USPTO to Refuse Registration
Other grounds for rejecting the application include a surname; geographically descriptive of the origin of the goods/ services; disparaging or offensive; a foreign term that translates to a descriptive or generic term; an individual’s name or likeness; the title of a single book and/or movie; and matter that is used in a purely ornamental manner. While some of these refusals are an absolute bar to registration, others may be overcome by evidence under certain circumstances.
Why should I do a trademark search?
Conducting a complete search of your mark before filing an application is very important because the results may identify potential problems, such as a likelihood of confusion with a prior registered mark or a mark in a pending application.
A search could save you the expense of applying for a mark in which you will likely not receive a registration because another party may already have stronger rights in that mark. Also, the search results may show whether your mark or a part of your mark appears as generic or descriptive wording in other registrations and thus is weak and/ or difficult to protect.
Read more on trademark search and selection.
Is federal registration of my mark required?
No. In the United States, parties are not required to register their marks to obtain protectable rights. You can establish “common law” rights in a mark based solely on the use of the mark in commerce, without a registration. However, owning a federal trademark registration on Principal Register provides a number of significant advantages over common law rights alone, including:
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state and common law rights exist only for the specific area where the mark is used);
- Public notice of your claim of ownership of the mark;
- Listing in the USPTO’s online databases;
- The ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent the importation of infringing foreign goods;
- The right to use the federal registration symbol ® ;
- The ability to bring an action concerning the mark in federal court; and
- The use of U.S. registration as a basis to obtain registration in foreign countries.
Each time you use your mark, it is best to use a designation with it. If registered, use an® after the mark. If not yet registered, use TM for goods or SM for services to indicate that you have adopted this as a trademark or service mark, respectively, regardless of whether you have filed an application with the USPTO.
You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration. However, no specific requirements superscript manner.
What A Filing Date Is, And How It Is Determined
All applications are assigned a filing date. If you transmit your application over the Internet, the filing date is the date the transmission reaches the USPTO server in Eastern Standard Time. If you file on paper, the filing date of an application is the date the USPTO receives the application.
The USPTO relies on a filing date to assess priority among applications; i.e., the USPTO reviews applications in the order received. The filing date is important because it generally gives your application priority over applications with a later filing date.
So, if an application filed after yours is likely to cause confusion with yours, that application will be blocked or, technically, suspended until your application either registers or goes abandoned.
The priority created by a filing date is not absolute. You might have very strong rights based on the long use of your mark, for example, even if this is the first time filing for federal registration.
So, if you are second in line but you have stronger rights than the applicant in front of you, you may be able to intervene with an opposition proceeding and prevent that application from registering. So while the examination will not take place out of order, the second in line does have an opportunity to assert superior rights at the proper time in the overall registration process.
Read more on trademark filing.
Must I be a U.S. citizen to apply?
No. You are not required to be a U.S. citizen to apply for and obtain a federal registration.
Depiction Of The Mark (“The Drawing”)
Every application must include a clear image of one mark (“the drawing”). The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette and on the registration certificate. If you have variations on the mark that you wish to register, each requires its own separate application and fee
There are two types of drawings: “standard character” and “special form.”
What is a “standard character” drawing?
A standard character drawing is commonly submitted when the mark you wish to register consists solely of words, letters, or numbers. A standard character mark protects the wording itself without limiting the mark to a specific font, style, size, or color and therefore gives you broader protection than a special form drawing
A standard character drawing must have the following characteristics:
- No design element;
- No stylization of lettering and/or numbers;
- Any letters and words in Latin characters;
- Any numbers in Roman or Arabic numerals;
- Only common punctuation or diacritical marks.
When you file electronically, the system generates a standard character drawing for you, based on the information you entered on the mark here.
What is a “special form” drawing?
If your mark includes a design or logo, alone or with wording, or if the particular style of lettering or particular color(s) is important, you must select the “special form” drawing format. If you are seeking registration of a word(s) combined with a design element, the drawing must depict both the word(s) and the design element combined as one image.
When you file electronically, you must upload an image of your mark. The mark image must be in .jpg format and should have minimal white space surrounding the design of the mark. Mark images should not include the trademark, service mark, or registration symbols (TM, SM). Unless color is a feature of the mark, the mark image should be black and white.
When you file on paper, you must use standard letter-size paper and include the applicant’s name and correspondence address at the top of the drawing page as part of your application. The mark must appear in the middle of the page, and consist of the entire mark, i.e., word(s) and design.
Should I submit a black-and-white drawing or a color drawing?
Generally, you may submit a black-and-white drawing even if you use your mark in color because a black-and-white drawing covers the use of your mark in any color. However, if it is important that your customers associate specific colors in your mark with your product, you may wish to limit your mark and claim those colors as part of your mark. If you do submit a color claim, then you must also submit a color drawing of your mark that matches the colors you are claiming.
What are the requirements if I submit a color drawing?
You must submit the following: (1) a “color claim” naming the color(s) and stating that the color(s) is a feature of the mark, and (2) a separate statement describing the mark and stating where the color(s) appears in the mark.
What is the difference between goods and services?
Goods are products, such as bicycles or candles. Services are activities performed for the benefit of someone else, such as bicycle rental services or catering.
The difference between goods and services may be confusing. Are your customers paying for a product or paying you to perform a specific activity? If your customer is paying you for a product, such as a candle or a bicycle, then you have goods. However, if your customer is paying you to perform an activity, such as catering or bicycle rental, then you have services. You may list both goods and services in an application.
You must list the specific goods/services for which you want to register your mark. If you are filing based upon “use in commerce,” you must be using the mark in commerce on all the goods/services listed. If you are filing based upon a “bona fide intent to use the mark,” you must have good faith or bona fide intent to use the mark on all the goods/services listed.
Any entry you choose must accurately describe your goods/services. A failure to correctly list the goods/services with which you use the mark, or intend to use the mark, may prevent you from registering your mark. You will not be given a refund of any fees paid.
If the term does not contain an accurate listing for your goods/services, do not merely select an entry that seems “close.” Instead, you must create your own identification, describing your goods/services using clear, concise terms that the general public easily understands.
If you list vague terms, such as “miscellaneous services” or “company name,” your application will be considered void, and you must file a new application.
If using the TEAS PLUS form, you must choose your goods/services from the ID Manual. Therefore, you should check the ID Manual prior to filling out the form. If no ID Manual entry accurately identifies your goods/services, you may not use the TEAS PLUS form. However, you may use the regular TEAS form.
May I change the goods/services after filing my application?
You may clarify or limit the goods/services but you may not expand or broaden the goods/services. For example, if you filed for “shirts,” you may limit the goods to specific types of shirts such as “t-shirts and sweatshirts.”
However, you may not change the goods to “pants.” Likewise, if you file for “jewelry,” you may change the goods to specific types of jewelry such as “jewelry, namely, earrings.” However, you may not change the goods to a service such as “jewelry stores.”
Basis For Filing
The application must specify your “basis” for filing. Most U.S. applicants base their application on either their current use of the mark in commerce or their intent to use the mark in commerce in the future
What is the difference between a “use-in-commerce” application and an “intent-to-use” application?
On either basis, prior to registration, you must demonstrate that you have used the mark in commerce in connection with all the goods/services listed in your application by submitting an acceptable specimen.
The basic difference between these two filing bases is whether you have started to use the mark on all the goods/services. If you have already used your mark in commerce in connection with all the goods/services listed in your application, you may file under the “use-in-commerce” basis.
If you have not yet used your mark but intend to use it in the future, you must file under the “intent-to-use” basis. An “intent-to-use” basis requires filing an additional form and fee that are unnecessary if you file under “use in commerce.” It is also possible to file an application wherein some of the goods/services are in use, and others are intended to use, but the application must clearly identify this.
What is a “use-in-commerce” basis?
For applications filed under the use-in-commerce basis, you must be using the mark in the sale or transport of goods or the rendering of services in “interstate” commerce between more than one state or U.S. territory or in commerce between the U.S. and another country. For goods, the mark must appear on the goods (e.g., tags or labels), the container for the goods, or displays associated with the goods. For services, the mark must be used in the sale or advertising of the services.
How do I establish my “use-in-commerce” basis?
- Provide the date of first use of the mark anywhere and the date of first use of the mark in commerce.
- Submit a specimen (example) showing how you use the mark in commerce. See the “SPECIMEN FOR USE-BASED APPLICATIONS” section.
What is the difference between the “date of first use anywhere” and the “date of first use in commerce”?
The date of first use anywhere is the date on which the goods were first sold or transported, or the services were first provided under the mark, even if that use was only local.
The date of first use in commerce is the date on which the goods were first sold or transported, or the services were first provided under the mark between more than one state or U.S. territory or in commerce between the U.S. and another country. The date of first use anywhere must be the same as or earlier than the date of first use in commerce.
What is an “intent-to-use” basis?
If you have not yet used the mark but plan to do so in the future, you may file based on good faith or bona fide intent to use the mark in commerce. A bona fide intent to use the mark is more than an idea and less than market-ready.
For example, having a business plan, creating sample products, or performing other initial business activities may reflect a bona fide intent to use the mark.
Is there any other possible filing basis?
Yes. Based on international agreements/treaties, an owner may file an application in the U.S. based on a foreign application/registration issued by another country (a “Section 44” application). Also, a foreign owner may file an international application in its home country and request an extension of protection to the U.S. (a “Section 66(a)” application). See Trademark Manual of Examining Procedure (TMEP) Chapters 1000 and 1900 for more information.
How do I protect my mark outside the United States?
A USPTO registration is effective only in the U.S., even though the goods/services are assigned an “international” classification number. If, after filing a U.S. application, you want to protect your mark outside the U.S., you may file an international application or file directly in that country.
Specimen For Use-Based Applications
What is a “specimen” of use, and how does it differ from the “drawing”?
A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen is not the same as the drawing. The drawing shows only your mark, whereas a specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on the labels or on your website).
What is a proper specimen for the use of a mark on goods (products)?
Usually, a specimen for a mark used on goods shows the mark as it appears on the actual goods or on labeling or packaging for the goods. For example, your specimen may be a tag or label displaying the mark or a photograph showing the mark on the goods or its packaging.
The specimen may not be a “mock-up” of these items but must be a sample of what you actually use or a photograph of the actual packaging. Showing a display of the mark alone is not sufficient; the specimen must show the mark on or in direct connection with the goods.
A specimen that shows the mark being used in a purely ornamental or decorative manner may not be an acceptable specimen. A slogan or a design across the front of a t-shirt or other clothing or a tote bag, for example, would not be acceptable since it is likely to be perceived as ornamental or decorative rather than a trademark.
However, a small word or design, such as a small animal on a shirt pocket, may create the commercial impression of a trademark and be accepted as a specimen.
Is my website a proper specimen for goods?
A website is an acceptable specimen if the mark appears near a picture of the goods (or a text description of the goods), and your customers can order the goods from the website. A website that merely advertises the goods is not acceptable. You must provide an actual screenshot of the website; i.e., merely providing the website address is not acceptable.
What is NOT a proper specimen for goods?
Invoices, announcements, order forms, leaflets, brochures, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods.
What is a proper specimen for the use of a mark with services?
A specimen for a mark used in connection with services must show the mark used in providing or advertising the services. For example, your specimen maybe a photograph of a business sign, a brochure about the services, an advertisement for the services, a website or webpage, a business card, or stationery showing the mark. The specimen must show or contain some reference to the services; that is, it is not just a display of the mark itself.
What is NOT a proper specimen for services?
Printer proofs for advertisements or news articles about your services are not acceptable because they do not show your use of the mark.
What Happens After Filing And What To Do
What must I do after I file the application?
You must diligently monitor the status of your application. This means you must:
Check the status of your pending application regularly. We recommend that you check your application’s status every 3 to 4 months. The assigned examining attorney will review your application approximately 3 months after the filing date.
The overall registration process may take up to a year, or even longer, depending on several factors, for example, the basis of the filing the application and the completeness of the application at the time of filing. For a general process timeline for an application filed under Section 1(b), intent to use, basis. Our diamond package does this for you automatically.
- Respond to any issued Office action or notice within the appropriate timeframes, generally within 6 months of the issue date.
- Promptly contact the USPTO and request corrective action if you believe something is incorrect in the file.
Legal And Procedural Review Of Application
Approximately 3 months from the date your application is filed, the application is assigned to an examining attorney to determine whether federal law permits registration. The examining attorney will examine the written application, the drawing, and any specimen, to ensure that they satisfy all of the federal legal requirements.
The examining attorney may issue a letter (Office action) explaining any reasons for refusing registration or other requirements. If you receive an Office action, you must submit a response within 6 months of the issue date of the Office action. Your filing fee will not be refunded if the application is refused registration.
Publication For Opposition
If no refusals or additional requirements are identified or if all identified issues have been resolved, the examining attorney will approve the mark for publication in the Official Gazette (OG), a weekly online publication. The USPTO will send you a Notice of Publication.
If you have authorized e-mail communication, the USPTO will e-mail you a “Notification of ‘Notice of Publication’” approximately 3 weeks before the future publication date in the OG. On the actual publication date, you will receive a second e-mail, namely, “Official Gazette Publication Confirmation,” with a link to the OG.
What Happens After Publication?
After publication in the OG, there is a 30-day period in which the public may object to the registration of the mark by filing an opposition. An opposition is similar to a court proceeding but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. A third party who is considering filing opposition may first file a request for an extension of time to file the opposition, which could delay further action on your application.
The next step after publication depends on your basis for filing the application:
Registration Certificate Issues For “Use-In-Commerce” Application
If no opposition or extension of time to oppose is filed or if you successfully overcome an opposition, you do not need to take any action for the application to enter the next stage of the process. Absent any opposition-related filings; the USPTO generally will issue a registration certificate about 11 weeks after publication if the application is based upon the actual use of the mark in commerce (Section 1(a)) or on a foreign or international registration (Section 44(e) or Section 66(a)).
Notice Of Allowance (NOA) Issues For “Intent-To-Use” Application
If no opposition or extension of time to oppose is filed or you successfully overcome an opposition, you do not need to take any action for the application to enter the next stage of the process. Absent any opposition-related filings; the USPTO generally will issue an NOA about 8 weeks after publication.
An NOA indicates that your mark has been allowed but does not mean that it has registered. As the next step to registration, within 6 months of the issue date of the NOA, you must:
- Submit a “Statement of Use” if you filed based on intent to use (Section 1(b)) and are now using the mark in commerce;
- Begin using the mark in commerce and then submit a “Statement of Use;” or
- Submit a six-month “Request for an Extension of Time to File a Statement of Use” if you need additional time to begin using the mark in commerce.
How To Establish The Use Of The Mark For An “Intent-To-Use” Application
Notice of Allowance (NOA) Has Already been Issued
If an NOA has already been issued, you establish use by filing a Statement of Use (SOU) form that contains a sworn statement that you are now using the mark in commerce on all the goods/services.
If you wish to file an SOU before the mark is in use in commerce on all listed goods/services, you must delete or divide out the goods/services for which the mark is not in use.
- A filing fee of $100 per class of goods/services;
- The date of first use of the mark anywhere and the date of first use of the mark in commerce; and
- One specimen (or example) showing how you use the mark in commerce for each class of goods/services.
Once the USPTO issues the NOA, you have 6 months to file the SOU. The 6-month period runs from the issue date shown on the NOA, not the date you receive it. If you have not used the mark in commerce, you must file a Request for an Extension of Time to File a Statement of Use (Extension Request) before the end of the 6-month period. This is to avoid the application from being declared abandoned, meaning that the application process has ended and your mark will not register.
You may request 5 additional extensions for up to a total of 36 months from the NOA issue date, with a statement of your ongoing efforts to make use of the mark in commerce. A filing fee of $150 per class of goods/ services must accompany each Extension Request.
The date of the grant or denial of an Extension Request does not affect the deadline for filing the SOU or the next Extension Request. The deadline is always calculated from the issue date of the NOA.
Notice of Allowance (NOA) Has Not Yet been Issued
If the NOA has not yet been issued and the application has not yet been approved for publication, you may file an Amendment to Allege Use, which includes the same information as the SOU (see above). You may not file the Amendment to Allege Use during the “blackout period” after approval of the mark for publication and before issuance of the NOA. In that situation, you must wait until after the blackout period to file your SOU.
Maintaining A Federal Trademark Registration
To maintain your trademark registration, you must file your first maintenance document between the 5th and 6th year after the registration date and other maintenance documents thereafter. Your registration certificate contains important information on maintaining your federal registration.
The USPTO does not currently send reminder notices when the documents are due. If the documents are not timely filed, your registration will be canceled and cannot be revived or reinstated, making the filing of a brand new application to begin the overall process again necessary.
Throughout the life of the registration, you must police and enforce your rights. While the USPTO will prevent another pending application for a similar mark used on related goods or in connection with related services from proceeding to registration based on a finding of likelihood of confusion, the USPTO will not engage in any separate policing or enforcement activities.
Rights in a federally registered trademark can last indefinitely if you continue to use the mark and file all necessary maintenance documents with the required fee(s) at the appropriate times, as identified below. The necessary documents for maintaining a trademark registration are:
- Declaration of Continued Use or Excusable Nonuse under Section 8 (§8 declaration); and
- Combined Declaration of Continued Use and Application for Renewal under Sections 8 and 9 (combined §§8 and 9).
A §8 declaration is due before the end of the 6-year period after the registration date or within the 6-month grace period thereafter. Failure to file this declaration will result in the cancellation of the registration.
A combined §§8 and 9 must be filed before the end of every 10-year period after the registration date or within the 6-month grace period thereafter. Failure to make these required filings will result in cancellation and/or expiration of the registration.