Frequently asked questions
What is a trademark or service mark?
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Trademarks are commonly found on labels, tags, packaging, containers, instruction manuals, or printed directly on the goods. Service marks are commonly found on advertising such as websites, brochures, signs, business cards and letterhead. The term "Trademark" can refer collectively to both trademarks and service marks.
Phrase/Slogan: Just-do-it ®
Sounds: NBC chimes
What is the difference between a trade name and a trademark mark?
A trade name is the name of a business or company name, which may or may not be the same as a trademark. For example, "SUBWAY" is the trademark that identifies a restaurant. However, the "SUBWAY" trademark is owned by a company whose trade name is "Doctor's Associates, Inc." A trade name can also be the same as a trade mark. For example, the trademark "COCA-COLA" is also a trade name for "The Coca-Cola Company."
The U.S. trademark registration process is available for trademarks, but not for trade names.
What is Trade Dress?
Trade dress refers to the "total image and overall appearance" of a product. This may include features such as the size, shape, color or color combinations, texture, and graphics. It includes the design of a product (i.e., the product shape or configuration), the packaging in which a product is sold (i.e., the "dressing" of a product), the color of a product or of the packaging in which a product is sold, and the flavor of a product. For services, it may include the color combination and placement colors and shapes used on a restaurant building.
Trade dress is registerable as a trademark unless it is functional (i.e., "essential to the use or purpose of the article or if it affects the cost or quality of the article.").
Do I need to do a trademark search?
A trademark search is never required, but it is recommended for several reasons:
• to minimize the risk of a refusal by the U.S. Patent and Trademark Office based on a likelihood of confusion, descriptiveness, surname, etc.
• to minimize the risk of an objection by determining whether or not a trademark has any particular meaning in a foreign language or industry
• to minimize the chances of an opposition by prior users during the publication stage of the trademark registration process.
• to minimize the chances of a cancellation by prior users during the first five years of registration.
On what basis may a trademark application be denied registration?
On what basis may a trademark application be denied registration? The Trademark Manual of Examining Procedures (TMEP) dictates how the USPTO examines trademark applications. The electronic version can be viewed here: http://tess2.uspto.gov/tmdb/tmep/ If an application does not comply with any aspect of the TMEP, the application can be refused. Below are examples of why a trademark application can be refused:
• The identification of Goods and Services is indefinite
• The entity type or state of organization of the entity is not properly indicated
• The filing basis is not properly indicated
• The specimen is not acceptable
• Descriptive wording must be disclaimed
• The description of the mark is not accurate
• The trademark is likely to be confused with another trademark
• The trademark is merely descriptive of some feature, aspect, characteristic, purpose or ingredient of the goods or services
•The trademark is primarily geographically descriptive
•The mark is ornamental in nature
•The mark is primarily merely a surname
•The mark is a title of a single work, etc.
How often are trademark applications refused?
It is very common for a trademark application to be refused at least once. As a former Trademark Examiner, John Alumit refused on average 8 out of 10 trademark applications because some aspect of the trademark application did not comply with the Trademark Manual of Examining Procedures: http://tess2.uspto.gov/tmdb/tmep/
Am I protected once I file a trademark application?
Filing a trademark application does not shield an applicant from liability, nor can it stop others from alleging trademark infringement. If the application registers, it creates a legal presumption of of ownership of the trademark and an exclusive right to use the mark nationwide on or in connection with the goods/services in the registration. However, the legal presumption can be rebutted by prior common law users who continue to use the mark. A proper trademark search followed by a trademark filing is the best a person can do to protect his or her trademark.
What does the symbols ®, TM, and SM signify?
The TM symbol may be used to alert the public that a person claims a trademark in goods, while the SM symbol may used to alert the public that a person claims a service mark in services. These symbols may be used regardless of whether or not a person files a trademark application. However, the ®symbol may only be used to alert the public that a trademark has been registered by the U.S. Patent and Trademark Office. The ®symbol therefore cannot be used until a trademark application successfully registers.
Are there prerequisites for filing a trademark application?
With the exception of trademark applications based on treaties, selling or distributing goods in commerce, or rendering services in commerce, is a prerequisite to obtaining a trademark registration in the United States. However, using a trademark before filing an application is not required. An applicant may file an Intent-to-Use application for a trademark for which the applicant has a BONA-FIDE INTENT to use in commerce. This means that the applicant must have concrete plans for actually selling or distributing goods, or rendering services, under a trademark. An applicant may not file an application for the purposes of reserving the "possibility" of using a trademark.
Moreover, an applicant cannot file a trademark application if the applicant knows the trademark is already being used by another person in connection with the same goods or services.
Any legal entity, including an individual or corporation, can file a trademark application without regard to citizenship.
How are trademark fees determined?
Trademark filing fees are based on a classification system. That is, goods and services are categorized under various international classes for the purposes of determining how much fees an applicant must pay. For example, electronic goods are classified under international class 009, clothing are classified in international class 025, toys and sporting goods are in class 028, advertising services are in class 035, educational and entertainment services are in class 041, etc. The U.S. Patent and Trademark Office as well as most law firms charge fees based on the number of classes of goods and services an application contains. Once we discuss the manner in which you use, or intend to use, a trademark, we can identify the relevant international classes. The number of international classes are also used as a basis for calculating maintenance and renewal fees.
How long does the trademark process take?
On average the trademark filing process takes 18 months. After an application is filed, it normally takes between 3-6 months before an application is assigned to a U.S.P.T.O. Examiner for examination.
What is an Allegation of Use?
When a trademark application is filed based on Intent-to-Use because the applicant is not yet using the mark in commerce in connection with all of the goods or services, the applicant must later prove use of the mark in commerce by filing an Allegation of Use. An Allegation of Use may take the form of an Amendment to Allege Use or a Statement of Use. In either case, the Allegation of Use must include a specimen showing how the trademark is being used, the date of first use anywhere, the date of first use in commerce, and the Allegation of Use fees. If the Allegation of Use is filed prior to a trademark being approved for publication, it is termed an Amendment to Allege Use. After a mark has been approved for publication, the applicant must wait for a Notice of Allowance to issue. When a Notice of Allowance issues, the applicant would be given 6 months to file a Statement of Use subject to the ability file a Request for Extension of Time to file a Statement of Use.
What is an office action?
An office action is a refusal issued by a Trademark Examiner when a trademark application does not comply with the U.S. trademark laws. An office action can be final or non-final. A non-final office action is issued whenever an issue is raised for the first time. A final office action is issued whenever a response to a non-final office action does not remove an objection or refusal raised in the non-final office action. In response to a final office action, an applicant may appeal the decision before the Trademark Trial and Appeal Board (TTAB) and/or may file a Request for Reconsideration as an attempt to remove the objection or refusal before the deadline for appeal.
What is a provisional refusal?
A provisional refusal is the same as an office action, but is a term commonly used with respect to international applications filed with the USPTO.
What is a final refusal?
A final refusal is also known as a final office action. An office action can be final or non-final. A non-final office action is issued whenever an issue is raised for the first time. A final office action is issued whenever a response to a non-final office action does not remove an objection or refusal raised in the non-final office action. In response to a final office action, an applicant may appeal the decision before the Trademark Trial and Appeal Board (TTAB) and/or may file a Request for Reconsideration as an attempt to remove the objection or refusal before the deadline for appeal.
What is a Request for Reconsideration?
A Request for Reconsideration is a response filed by the applicant after a Final Office Action ("final refusal"). It serves as an attempt to remove the objection or refusal raised by the Trademark Examiner before the deadline for appealing to the Trademark Trial and Appeal Board (TTAB).
How long does a trademark registration last?
A trademark registration can last indefinitely, as long as a trademark owner continues to use the trademark and files a maintenance declaration between the 5th and 6th years, and renews the trademark registration every 10 years.
Will a trademark registration stop others from infringing my trademark?
The U.S. Patent and Trademark Office (USPTO) is not an enforcement agency, so it will not enforce a trademark registration against alleged infringers. However, the USPTO will refuse registrations to others if it believes that another person has filed a trademark application that is likely to be confused with that of a registered trademark. The USPTO will also publish trademark applications to give the public an opportunity to oppose the registration of a trademark. The refusal and opposition stages of the trademark process helps to discourage trademark infringement and encourage potential infringers to adopt a different trademark.
What is a Cease and Desist Letter?
A cease and desist letter in the context of trademark enforcement is a written demand letter by a trademark owner identifying the trademark owner and his trademark rights, and alleging that another person's has infringed upon those trademark rights by adopting or using a trademark that may cause confusion as to source The cease and desist letter explains why confusion is likely to result and may identify instances of actual confusion. It normally ends with a list of demands, including a demand to stop using a trademark or abandon all or some part of a trademark application or registration. A deadline to comply with those demands is customarily indicated, along with a suggestion that litigation may ensue if the demands are not satisfied.
What is the Madrid Protocol?
The Madrid Protocol is one of two treaties that constitute the Madrid System administered by the World Intellectual Property Organization (WIPO). The United States is a party to the Madrid Protocol, which allows U.S. residents, nationals, and persons having a real and effective industrial or commercial establishment in the U.S. to file an international application. An international application is based on a U.S. trademark application and registration ("basic application"). If the U.S. Patent and Trademark Office certifies the international application, WIPO will recognize the application as an international registration which can be examined in any country that is a party to the Madrid System provided the applicant pays the government fees of each country designated. For countries that are not members of the Madrid System, an applicant must file a new trademark application requiring the services of a foreign attorney, thereby increasing the costs of foreign trademark filings.
What is the Paris Convention?
The United States has assumed certain obligations from agreements adopted at the Paris Convention for the Protection of Industrial Property of 1883. Through the Paris Convention, an applicant may file an application in a foreign country, or a foreign applicant may file an application in the United States, without having to prove use of the trademark to obtain a trademark registration. This means that a Statement of Use need not be filed. Instead, an applicant may submit a copy of the Certificate of Registration from the applicant's home country (and translation if necessary) reflecting the same trademark, the same trademark owner, and the same goods/services. Moreover, an applicant may claim the filing date of the applicant's home country application or registration when filing abroad, provided that the application filed abroad is done so within six months of the filing date of the home country application or registration.
Can a Trademark Be sold or licensed?
Yes. A trademark can be assigned and licensed as intellectual property, and may constitute a corporate asset. However, a trademark application based on an Intent-to-Use filing basis is not property that can be assigned or licensed until the trademark is actually in use. This means that a Statement of Use must be filed prior to assigning a trademark.