Trademarks are intellectual properties that include phrases, words, or symbols that identify or distinguish your company’s source from others. In addition, trademarks protect brand names and logos used on goods or services.
A service mark is similar to a trademark, but it distinguishes and identifies the source of the service rather than the goods.
Three factors are more important when proving similarity of goods and services. First, the product’s purpose and nature, then the use method, and finally, the distribution channels. These three factors must be examined in relation to the target audience.
Even if two marks are confusingly similar, confusion will only exist if the goods or services that are connected with them are related.
The commercial relationship between the goods/services and those in the registration/an earlier-filed request can help determine the relatedness of the goods/services.
It is important to have strong trademarks that are distinctive. This allows you to identify yourself as the source of your goods and services quickly. Your trademark will be stronger and more difficult to prevent others from using your trademark without your permission. Because they lack the same legal protections, weak trademarks can be costly and difficult to defend.
Some marks are more difficult to protect than others described as either strong or weak marks. For example, a strong mark can be used to stop third-party misuse of your mark. However, it is descriptive, meaning that others have already used it to describe goods and services. This makes it expensive and difficult to police and protect.
Strong trademarks are suggestive, fanciful or arbitrary. Weak trademarks can be descriptive or generic.
Fanciful and arbitrary marks are the most robust and protected types of marks. They are distinctive and inherently unique. Fanciful marks refer to words that have no known dictionary meaning. Arbitrary marks are words with a known meaning without association/relationship with the protected goods. Fanciful or arbitrary marks can be registered and are more likely than descriptive ones. These marks are also creative and uncommon, so it is less likely that other people are using them.
Examples Of Arbitrary And Fanciful Marks:
- Fanciful: BELMICO offers “insurance services.”
- Arbitrary: BANANA to “tires.”
Suggestive marks suggest qualities or a connection between the goods and services. These marks can be registered and are considered strong marks. A suggestive mark is the best alternative to a fanciful, arbitrary mark.
Examples For Suggestive Marks:
- QUICK N’ NEAT for “pie crust.”
- GLANCE-ADAY for “calendars.”
Descriptive marks are words and designs that describe goods or services (e.g., a depiction on a TV for “television repair service”). These marks are more difficult to protect than arbitrary and fanciful marks. If the USPTO decides that a mark is “merely descriptive,” it will not be registrable or protected on Principal Register unless it gains distinctiveness. This is usually achieved through prolonged use in commerce for five years or more. Until distinctiveness is achieved, descriptive marks are considered weak. Many applicants choose descriptive marks (often at the suggestion of marketing professionals) for their goods or services. They believe that these marks reduce the need to educate and advertise consumers and make it easier to identify the product or service directly from the mark. Even though this is a good marketing strategy, it can lead to many unprotected trademarks. A descriptive mark might not be protected against other users of similar or identical marks. Adopting a descriptive trademark could end up costing you more in the long term. This is either because the legal costs of trying to enforce and police the mark are higher or because the law may require that the descriptive mark be removed and replaced with a different mark.
Examples For Descriptive Marks:
- CREAMY is for “yogurt.”
- WORLD’S BEST BAGELS for “bagels.”
Generic words, which are not registered or enforceable against third parties, are the weakest type of “marks.” Generic words used daily to identify goods and services are not protected because they are common names for those goods and services. You cannot prevent others from using your generic term to identify products and services. Even a strong mark can become generic over time if its owner uses it in a non-trademark way (see ASPIRIN and ESCALATOR examples below) or fails to properly police the use of the mark and take the appropriate actions. For example, if the original mark owner fails to police its use over time, it could lose all trademark rights.
Examples For Generic Marks:
Applied-for trademarks would be considered generic when filed because they are the name for the product or good offered by the service.
- BICYCLE is for “bicycles” and “retail bike stores.”
- MILK is “a dairy-based beverage.”
- Because of non-commercial long-term use, trademarks eventually became generic.
- ESCALATOR to “move staircases,” ASPIRIN for “pain relief medication.”
Another reason for refusing the application is a surname, geographically descriptive of origin of goods/services; disparaging and offensive; a foreign word that translates into a descriptive term or generic term; an individual’s name or likeness; title of one book/movie; or matter that is solely ornamental. Some of these rejections are absolute blocks to registration. However, evidence may be available in certain circumstances.
It is significant to conduct a thorough search of your mark before applying. The results could reveal potential problems such as confusion with a previously registered or pending mark. In addition, you could avoid the hassle of applying for a registration for a mark that you may not be eligible for, as another party may have greater rights to it.
The search results might also show whether your mark or part thereof appears in generic or descriptive words in other registrations. This could indicate that your mark is weak or difficult to protect.
No. To obtain protected rights in the United States, parties do not need to register their trademarks. Instead, a mark can be granted “common law” rights based on its use in commerce. Federal trademark registration on Principal Register offers many advantages over common law rights, including:
The legal application that you own the mark and exclusive rights to use it nationwide in connection with the goods/services registered. Whereas a state registry gives rights within the boundaries of one state and common law rights cover the area where the mark is used.
Use U.S. registration to get registration in other countries. It is best to include a designation whenever you use your trademark. For example, use an (R) after your mark if it is already registered. To indicate that the mark has been adopted as a trademark or service mark, you can use TM for goods or SM to indicate that it is not yet registered. The registration symbol may only be used with the registered mark and the goods/services recorded in the federal trademark registry. There are no superscript requirements.
Each application is assigned a filing date. If your application is transmitted via the Internet, the filing day is when the transmission reaches the USPTO server in Eastern Standard Time. If you apply on paper, the filing day of the application is the date that the USPTO received it.
To determine priority, the USPTO uses a filing date. The USPTO reviews all applications as they were received. The filing date is crucial because it prioritizes your application over later applications. If an application is filed after yours, that could cause confusion with yours will be blocked or technically suspended until your application registers or is abandoned. However, a filing date does not guarantee priority.
Even though this is your first federal registration, you might still have substantial rights due to the long-term use of your trademark. For example, suppose you are second in the line but have more substantial rights than the applicant. In that case, you might be able to intervene in an opposition proceeding to stop that application from being registered. While examination will not be performed in an orderly fashion, the second-in-line has the right to assert special rights at the appropriate time during the overall registration process.
No. You don’t have to be a U.S. citizen to apply for and receive a federal registration.
Each application must contain a clear image (the drawing) of one mark. The USPTO uses this drawing to upload the mark to the USPTO’s search database and print it in the Official Gazette. Each application for registration of variations of the mark you want to register is unique and requires a separate fee. There are two types: “standard form” and “special type.”
A standard character drawing protects only words, letters, and numbers. Standard character marks protect the wording but do not limit the mark to any particular font, style, size, or color. This gives you more excellent protection than unique form drawings.
These characteristics must be present in a standard character drawing:
- No design element;
- There is no stylization of numbers and letters;
- All letters and words should be in Latin Character
- Any number in Roman numerals or Arabic numerals
- Only use standard punctuation and diacritical marks
The system will generate a standard character drawing for your electronic filing. It is based on the information that you have entered here.
A special form drawing protects a particular design that may include colors, words or characters.
You must choose the “special form” drawing format if your mark contains a design or logo. If you wish to register a combination of words and design elements, the drawing must show both the word(s) as well as the combined image.
Upload an image of the mark when you file electronically. The mark image should be in.jpg format. There should be minimal white space around the mark’s design. The trademark, service mark, or registration symbols (TM and SM) should not be included in mark images.
You must file on standard letter-size paper. Include the name of the applicant and the address of correspondence at the top of the drawing page. The entire mark must be included on the page. It should appear in the middle of each page.
A black-and-white drawing can be submitted even if your mark is in color. This is because a black and white drawing allows you to use any color of your mark. If you want your customers to associate specific colors with your product, you might limit your mark and claim these colors as part of your mark. You must submit a claim for color.
The following must be submitted: (1) A “color claim” that names the color(s) and states that they are a feature of your mark; (2) a separate statement that describes the mark and states where it appears in the mark.
Goods are products such as candles or bicycles. Services are activities performed for someone else’s benefit, such as catering or bicycle rental.
It can be challenging to differentiate between services and goods. For example, is your customer paying you for a particular product or service? For example, you have goods if your customer pays you for a product such as a bicycle or a candle. On the other hand, if your customer pays you for an activity such as catering or renting a bicycle, you are considered to be providing services. In an application, you can list either goods or services.
It is necessary to list the goods/services you wish to register your trademark. If you file based on “use in commerce,” the mark must be used on all listed goods/services. If you file based on a “bona fide intention to use” the mark, you must have good faith or bona fide intentions to use it on all goods/services.
You must describe your goods/services accurately in any entry you make. You may be denied registration of your mark if you fail to accurately list the goods/services you use or intend to use. There will be no payback for fees paid.
You should not select an entry that does not accurately list your goods/services. Instead, create your identification. Use clear and concise terms that are easy to understand by the general public. Your application will be void if you use vague terms such as “miscellaneous service” or “company name.” You must submit a new one.
You must select your goods/services in the ID Manual using the TEAS PLUS Form. Before you fill out the form, ensure to read the ID Manual. You cannot use the TEAS PLUS Form if your ID Manual entry does not accurately identify your goods/services. You can still use the regular TEAS Form.
While you can clarify or limit the services/goods, you cannot expand the goods/services. For example, if you file for “shirts,” you can limit the goods and services to certain types of shirts, such as sweatshirts or t-shirts. However, you cannot change the goods to other types of jewelry like earrings.
Your “basis” must be stated in the application. Most U.S. applicants base the application on their current use of the trademark in commerce and their plans to use it.
Either way, you will need to prove that you have used your mark in commerce with the goods/services you are applying for by submitting a specimen. These filing bases differ because you must show that you have used the mark on all goods and services.
You can apply the “use in commerce” basis if your mark has been used for all of the goods/services mentioned in your application. You must file under “intent to use” if you haven’t yet used your mark but plan to do so in the future.
An “intent to use” basis requires filing an additional form and a fee. This is not required if you filed under “use in commerce.” You can also apply where some goods/services have been used, and others are intended to use. However, the application must indicate this.
You must use the mark for applications filed under the use in commerce basis. In addition, the mark must be on goods, such as the tags, labels, containers, and displays associated with them. Finally, the mark must also be used to promote or sell services.
Indicate the date of the first use of your mark anywhere and the date you used it in commerce.
The date of the first usage anywhere is when the goods or services were first offered under the mark, even if this was a local sale or transport. The date of first commerce use is when the goods or services were first offered under the mark in commerce between more than one U.S. state or territory or between U.S. states and other countries. The date of the first usage anywhere must be the same or earlier than the first use in commerce.
You may file a bona fide or good faith intent to use the trademark in business if you haven’t used the mark yet but intend to. Bonafide intent is more than an idea. It’s not market-ready. A bona fide plan to use the mark could be reflected in a business plan, sample products, or other initial business activities.
Yes. Based on international agreements/treaties, an owner may apply to the U.S. based on a foreign application/registration issued by another country (a “Section 44” application). In addition, a foreign owner can also file an international application in their home country to request protection extension to the U.S. (a Section 66(a).) For more information, see Trademark Manual of Examining Procedures (TMEP) Chapters 1000 or 1900.
The USPTO registration only applies to the United States, even though the goods/services have been assigned an international classification number. However, you can file an international application if you wish to protect your trademark outside the U.S. For more information about protecting your mark under the Madrid Protocol, see http://www.wipo.int/madrid/en/.
A specimen is a sample that shows how the mark is used in commerce for your goods and services. The drawing is different from the specimen. A drawing only shows your mark, while a specimen depicts the mark as your buyers encounter it (e.g., on labels or your website).
A specimen of a mark on goods usually shows the mark exactly as it appears on the goods or packaging. Your specimen could be either a label or tag displaying the mark or a photograph of the goods or packaging.
These items may not be “mock-ups,” but the specimen must show what you use and a photo of the packaging. It is not enough to display the mark; the specimen must also show the mark directly related to the goods.
An acceptable specimen may not include a specimen showing the mark used only in an ornamental or decorative way. For example, it is unlikely that a slogan or design on a t-shirt, any other clothing, or a bag would be accepted as it will be perceived as decorative or ornamental rather than a trademark. On the other hand, a small word or design on a shirt pocket might be a trademark and accepted as a specimen.
Websites are acceptable specimens if the mark is located near the image of the goods or a text description of them. Customers can also order from the website. Websites that only advertise the goods are not acceptable. Additionally, it is unacceptable to provide a screenshot of the website.
Invoices and announcements, orders forms, leaflets, brochures, or publicity releases are good examples of goods.
A specimen of a mark used in connection to services must include the mark used for providing or advertising those services. For example, your specimen could be a photograph of a sign at a business, a brochure about services, an advertisement for services, a website, webpage, business card, or stationery displaying the mark. In addition, it must contain some reference to services.
Printing proofs of your services in advertisements and news articles are not acceptable as they don’t show the use of the mark.
You must monitor your application’s status with diligence. This means that you should:
Regularly check the status of your pending applications. It is recommended that you review the status of your application every 3-4 months. Your application will be evaluated by the assigned examining lawyer within three months of its filing date.
The registration process can extend over to one year or longer depending on many factors, such as the basis for applying and whether the application was complete at the time it was filed. Here is a timeline of the general process for an application filed on an intent-to-use basis. This is what our diamond package does automatically.
Within the time frames required, respond to any Office action or notice. Generally, this is within six months from the date of issue.
If you find a mistake in the file, contact the USPTO immediately and ask for corrective action.
The application will be allocated to an examining lawyer to determine if federal law allows registration. This happens approximately three months after the filing date. To ensure compliance with federal law, the examining attorney will review the application in writing, drawing, and specimen.
An Office action is a written communication from the examining attorney explaining why registration was denied or other requirements. You must respond within six months after receiving an Office action. If the application is denied registration, your filing fee will not refund.
Publication to opposition is when there are no additional requirements or refusals, or all issues are resolved, and the examining lawyer approves publication of the mark in the Official Gazette, a weekly online publication. You will receive a Notice to Publication from the USPTO indicating the publication.
The USPTO will e-mail you a notification of ‘Notice of Publication’ approximately three weeks before the publication date in the OG if you have allowed e-mail communication. You will be e-mailed a second e-mail on the publication date. This is “Official Gazette Publication Confirmation.” It contains a link to the OG.
The public has a 30-day window to object to the registration by filing an objection after publication in the OG. A Trademark Trial and Appeal Board is the USPTO administrative tribunal handling oppositions. Opposition is very similar to a court proceeding. An opposition request may be filed by a third party interested in filing an opposition. This could delay any further action.
The next step is dependent on the basis you used to apply.
You don’t require to do anything if there is no opposition or extension of the deadline to oppose or you have overcome an objection. The USPTO will generally issue a registration certificate within 11 weeks of publication if there are no opposition-related filings. This is true if the application is based on the actual use in commerce or on a foreign registration.
You don’t require to do anything to allow your application to move on to the next stage if there is no opposition or extension of the deadline to oppose. The USPTO will generally issue an NOA within eight weeks of publication if there are no opposition-related filings.
The NOA signifies that your mark is allowed but not registered. You must complete the following steps to register within six months from the date of the NOA’s issue:
- If you have filed based upon intent to use and use the mark in commerce, submit a “Statement Of Use.”
- Start using the mark in commerce, then submit a Statement of Use.
- If you require additional time to use the mark in commerce, submit a “Request for an Addition of Time to File a Statement Of Use” within six months.
Notification of Allowance (NOA), Has Already Been Issued
You can establish use if an NOA has been issued by filing a Statement Of Use (SOU), which contains a sworn declaration that you are using the mark in commerce for all goods/services. You must remove or divide the goods/services not in use if you want to file an SOU.
The SOU must also contain:
- There is a $100 filing fee per category of goods/services.
- The date of first usage of the mark anywhere and the date of its first use in commerce.
- A single example (or specimen) of how the mark is used in commerce for each type of goods/service.
You have six months from the date the USPTO issues your NOA to file the SOU. The six-month period starts from the date the NOA was issued, not when you received it. You must file a plea for an extension of time to file a statement of use (Extension Request) if you have not used your mark in commerce within six months.
Otherwise, the application will be declared abandoned, and your mark will no longer register. Additional extensions may be requested for up to 5 months after the NOA issue date. Each Extension Request must be accompanied by a $150 filing fee per class of goods/services. The deadline to file the subsequent Extension Request or the SOU does not change based on the date of grant or denial. The NOA issue date is used to calculate the deadline
You can file an Amendment to Allege usage if the NOA hasn’t been issued yet and the application hasn’t yet been published. This includes the same information that the SOU (see above). The Amendment to Allege Use must be filed within the “blackout” period after publication of the mark and before the issuance of the NOA. You must file your SOU after the blackout period in such cases.
You must file your first maintenance paper between 5 and 6 years after your registration date. All subsequent maintenance documents should be filed within the same period. Important information about maintaining your federal registration is contained in your registration certificate. Unfortunately, the USPTO doesn’t send reminder notices to remind you when documents are due. Failure to timely file the documents will result in your registration being canceled. This means that you cannot have your registration reinstated or revived.
You must enforce and police your rights throughout the registration’s life. The USPTO will stop any other pending application for similar marks on related goods and in connection to related services from proceeding with registration based upon a finding of likelihood of confusion. However, the USPTO won’t engage in separate policing or enforcement activities.
If you use the trademark and file the necessary maintenance documents along with the applicable fees at the correct times, your rights in a federally registered mark can last indefinitely. These documents are required to maintain a trademark registration:
- Declaration of continued utilization or excusable nonuse under Section 8 (SS8 Declaration);
- Combined Declaration of Continued Usage and Application for Renewal under Sections 8 and 9 (combined SSSS8 & 9).
- An SS8 declaration must be filed before the expiration of the 6-year grace period or the registration date. The registration will be canceled if the declaration is not filed.
- A combined SSSS8/9 must be filed within six months of the expiration of the 6-month grace period. Failure to file these filings can result in the cancellation or expiration of your registration.