Basic Facts About Trademarks

Q&A from United States Patent and Trademark Office

TRADEMARK, COPYRIGHT, OR PATENT

What is a trademark or service mark?

• A trademark is a word, phrase, symbol, or design, or a combination thereof, 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 goods. Throughout this booklet, the terms “trademark” and “mark” refer to both trademarks and service marks.

Do Trademarks, Copyrights, and Patents protect the same things?

No. Trademarks, copyrights, and patents protect different types of intellectual property. A trademark typically protects brand names and logos used on goods and services. A copyright protects an original artistic or literary work. A patent protects an invention. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.

SHOULD I REGISTER MY MARK?

Is registration of my mark required?

No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several advantages, including:

• Public notice of your claim of ownership of the mark;

• 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;

• The ability to bring an action concerning the mark in federal court;

• The use of the U.S. registration as a basis to obtain registration in foreign countries;

• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;

• The right to use the federal registration symbol ®; and

• Listing in the United States Patent and Trademark Office’s online databases.

When can I use the trademark symbols TM, SM, and ®?

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 ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol “®” after the USPTO actually registers a mark, and not while an application is pending. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration. Note: 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.

WHAT DOES THE USPTO DO?

The USPTO reviews trademark applications and determines whether the applied-for mark meets the requirements for federal registration. USPTO employees will answer questions about the application process free of charge.

WHAT DOES THE USPTO NOT DO?

The USPTO does not decide whether you have the right to use a mark (which differs from the right to register). It is not mandatory to obtain a federal registration in order to acquire rights in a mark. The USPTO does not enforce your rights in the mark or bring legal action against a potential infringer. In addition, USPTO employees cannot:

• Conduct trademark searches for the public;

• Comment on the validity of registered marks;

• Answer questions prior to filing on whether a particular mark or type of mark is eligible for trademark registration; or

• Offer legal advice or opinions about common law trademark rights, state registrations, or trademark infringement claims.

HOW DO I FILE A TRADEMARK APPLICATION?

Is there a form for filing my 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. Both options allow you to pay by credit card, electronic funds transfer, or through an existing USPTO deposit account. Electronic filing has many advantages over filing on paper, including:

• On-line help. Hyperlinks provide help sections for each of the application fields.

• Validation function. TEAS checks information to help avoid the omission of important information.

• Immediate reply. The USPTO immediately issues an initial filing receipt via e-mail containing the assigned application serial number and a summary of the submission.

• 24-hour availability. TEAS is available 24 hours a day, 7 days a week (except 2 a.m. to 6 a.m. Sundays when you cannot pay by credit card, although you can create forms and save them for later filing). You can receive a filing date until midnight Eastern Standard Time on any date.

• Lower filing fees. The filing fee for using TEAS is lower than the fee for filing on paper. If you use the TEAS Plus form, the fee is even lower than the regular TEAS application.

• More accurate filing receipts. Most of your information is transferred directly from what you enter into the database and is generally not re-entered by hand at the USPTO.

If you do not have Internet access, you can access TEAS at any Patent and Trademark Depository Library (PTDL) throughout the United States. Many public libraries also provide Internet access.

What is the difference between the regular TEAS and the TEAS Plus application options?

The filing fee for a regular TEAS application is $325 per class of goods/services. The TEAS Plus application has a lower filing fee of $275 per class of goods/services, and you must meet certain additional requirements. For example, you must be able to select an entry or entries from the USPTO’s Acceptable Identification of Goods and Services Manual that accurately describe your goods/services. Additionally, you must file communications regarding the application through TEAS, and receive communications concerning the application by e-mail. If you fail to meet the TEAS Plus requirements, the USPTO will require that you pay an additional fee of $50 per class.

Are there other ways to file than by the Internet?

Yes. We recommend using TEAS, but you may file a paper application. To obtain a printed form you can call the USPTO’s automated telephone line at 1-800-786-9199. Our mailing address is Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. You may NOT submit an application by facsimile.

Is a search of the USPTO database necessary before filing?

It is advisable to conduct a search of the USPTO database before filing your application to determine if there is a registered or pending mark that is similar to yours. You may search the USPTO’s Trademark Electronic Search System (TESS) database free of charge before filing or you may wish to hire an attorney to perform the search and assess the results for you.

How do I check the status?

You may check the status of any pending application through the Trademark Application and Registration Retrieval (TARR) database at http://tarr.uspto.gov. You must have your serial number available (a serial number generally begins with 76, 77, 79, or 85). If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199 to request a status check.

When you check your application status, make sure that you have received all communications sent to you by the USPTO and have taken appropriate action. Also, print a copy of the TARR status page for your records.

WHAT HAPPENS AFTER I FILE MY APPLICATION?

• LEGAL AND PROCEDURAL REVIEW OF APPLICATION

• PUBLICATION FOR OPPOSITION

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. Federal registration of trademarks is governed by the Trademark Act of 1946, 15 U.S.C. §1051 et seq., and the Trademark Rules of Practice, 37 C.F.R. Part 2.

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.

What is the most common reason an examining attorney refuses registration?

The most common reason for refusing registration is a likelihood of confusion with the mark in a registration or prior application. The examining attorney will search the USPTO database to determine whether there are any marks that are likely to cause confusion with your mark. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

• The similarity of the marks; and

• The commercial relationship (e.g., channels of trade or class of purchasers) between the goods/ services listed in the application and those listed in the registration or pending application.

To find a conflict, the marks do not have to be identical and the goods/services do not have to be the same. It may be enough that the marks are similar and the goods/services are related.

What are some other reasons for refusing registration?

Registration may be refused if the mark is:

• Descriptive for the goods/services;

• A geographic term;

• A surname;

• Ornamental as applied to the goods.

For a discussion of these and other possible refusals, see Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP) at http://tess2.uspto.gov/tmdb/tmep/.

PUBLICATION FOR OPPOSITION

If no refusals or additional requirements are identified or if all identified issues have been resolved, the examining attorney approves the mark for publication in the Official Gazette (OG), a weekly online publication. The USPTO will send you a Notice of Publication stating the publication date.

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 an opposition may first file a request for an extension of time to file the opposition, which could delay further action on your application. 1

The next step after publication depends on your basis for filing the application:

REGISTRATION CERTIFICATE ISSUES FOR USE IN COMMERCE APPLICATION

If no opposition 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 12 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 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 a NOA about 8 weeks after publication.

A 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.

Forms for filing both the Statement of Use and Extension of Time are at http://www.uspto.gov/teas.

HOW DO I ESTABLISH USE OF THE MARK IF I FILED AN INTENT TO USE APPLICATION?

Notice of Allowance Has Already Issued

If a NOA has already 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. You may delete goods/services for which the mark is not in use. The SOU must also include:

• 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.15

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, or the application will be declared abandoned. 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 the Extension Request. The form for filing the Extension Request is at http://www.uspto.gov/teas. The date of the grant or denial of an Extension Request does not affect the deadline for filing the SOU or next Extension Request. The deadline is always calculated from the issue date of the NOA.

Notice of Allowance Has Not Yet Issued

If the NOA has not yet 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 before the end of the 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 send reminder notices when the documents are due. Forms for filing the maintenance documents are at http://www.uspto.gov/teas.

Rights in a federally registered trademark can last indefinitely if you continue to use the mark and file all necessary maintenance documents at the appropriate times. You must file:

• 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.

For further information, including information regarding the special requirements that apply to Madrid Protocol registrations, see “Maintain/Renew a Registration” at www.uspto.gov or contact the Trademark Assistance Center at 1-800-786-9199.16

FEES FOR FILING TRADEMARK-RELATED DOCUMENTS

Current fees for all trademark filings are available online at www.uspto.gov (click “View Fee Schedule”) or can be obtained by calling the Trademark Assistance Center at 1-800-786-9199.

For the following documents, fees are based on the total number of International Classes that the USPTO assigns to your goods/services. For a listing of the International Classes, see the “International Schedule of Classes of Goods and Services” at the end of this booklet.

Initial Application

TEAS Plus application - $275 per international class

TEAS application - $325 per international class

Paper application - $375 per international class

Intent to Use documents

Amendment to Allege Use (AAU) - $100 per international class

Statement of Use (SOU) - $100 per international class

Request for Extension of Time to file SOU- $150 per international class

Post Registration maintenance fees

Declaration of Continued Use or Excusable Nonuse under Section 8 (§8 declaration) - $100 per international class

Combined Declaration of Continued Use and Application for Renewal under Sections 8 and 9 (combined §§8 and 9) - $500 per international class

FOR MORE INFORMATION:

• USPTO website at www.uspto.gov, Trademark Basics For instructional videos, application processing timelines and frequently asked questions (FAQs)

• Trademark Assistance Center 1-800-786-9199 (TrademarkAssistanceCenter@uspto.gov) For general trademark information and printed application forms

• Patent and Trademark Depository Libraries

Patent and Trademark Depository Libraries (PTDLs) are a nationwide network of public, state, and academic libraries that disseminate patent and trademark information and support the diverse intellectual property needs of the public. The PTDLs have trained specialists who may answer specific questions regarding the trademark process, but they do not provide legal advice. More information on PTDLs, including a list of the PTDLs in your state, is available at www.uspto.gov under “Products & Services.” 17

INTERNATIONAL SCHEDULE OF CLASSES OF GOODS AND SERVICES

GOODS

Class 1 (Chemicals): Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2 (Paints): Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3 (Cosmetics and cleaning preparations): Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4 (Lubricants and fuels): Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 5 (Pharmaceuticals): Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6 (Metal Goods): Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; nonelectric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7 (Machinery): Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

Class 8 (Hand tools): Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9 (Electrical and scientific apparatus): Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.

Class 10 (Medical apparatus): Surgical, medical, dental, and veterinary apparatus and instruments, artificial limbs, eyes, and teeth; orthopedic articles; suture materials.

Class 11 (Environmental control apparatus): Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes.

Class 12 (Vehicles): Vehicles; apparatus for locomotion by land, air, or water.

Class 13 (Firearms): Firearms; ammunition and projectiles; explosives; fireworks.

Class 14 (Jewelry): Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.

Class 15 (Musical Instruments): Musical instruments.

Class 16 (Paper goods and printed matter): Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 17 (Rubber goods): Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18 (Leather goods): Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 19 (Nonmetallic building materials): Building materials (non-metallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.

Class 20 (Furniture and articles not otherwise classified): Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21 (Housewares and glass): Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel-wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22 (Cordage and fibers): Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23 (Yarns and threads): Yarns and threads, for textile use.

Class 24 (Fabrics): Textiles and textile goods, not included in other classes; beds and table covers.

Class 25 (Clothing): Clothing, footwear, headgear.

Class 26 (Fancy goods): Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27 (Floor coverings): Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28 (Toys and sporting goods): Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29 (Meats and processed foods): Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30 (Staple foods): Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31 (Natural agricultural products): Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.

Class 32 (Light beverages): Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33 (Wine and spirits): Alcoholic beverages (except beers).

Class 34 (Smokers’ articles): Tobacco; smokers’ articles; matches.19

SERVICES

Class 35 (Advertising and business): Advertising; business management; business administration; office functions.

Class 36 (Insurance and financial): Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37 (Building construction and repair): Building construction; repair; installation services.

Class 38 (Telecommunications): Telecommunications.

Class 39 (Transportation and storage): Transport; packaging and storage of goods; travel arrangement

Class 40 (Treatment of materials): Treatment of materials.

Class 41 (Education and entertainment): Education; providing of training; entertainment; sporting and cultural activities.

Class 42 (Computer and scientific): Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43 (Hotels and restaurants): Services for providing food and drink; temporary accommodations.

Class 44 (Medical, beauty & agricultural): Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45 (Personal): Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.