Many people considering trademark protection have questions about the requirements and procedures, and this outline is intended to answer many common questions.
TRADEMARKS AND SERVICE MARKS: A trademark is, generally, a word, phrase, symbol, design, or sound, or a combination of these items, used to identify the source of goods (i.e, the manufacturer) on which the mark is affixed. A service mark is similar but identifies the source of a service (i.e., the provider). A federal trademark or service mark is associated with goods or services used in interstate commerce. Use of a mark on the Internet may satisfy the requirement that a mark be used in interstate commerce. A federal trademark or service mark is acquired by registering the mark with the United States Patent and Trademark Office (USPTO), and registration is accomplished by submitting an application for trademark registration.
USPTO FILING FEES: The USPTO trademark application filing fee is $275 per class of goods or services for which registration is sought. Information about trademark classes can be found here: https://www.nolo.com/legal-encyclopedia/trademark-classes.html
LEGAL FEES: APPLICATION FILING: A lawyer ordinarily will charge a fee--separate from the filing fee--to prepare and submit a trademark registration application to the USPTO. Usually this fee includes time devoted to a basic search for conflicting marks and time devoted to preparing the application.
LEGAL FEES: OTHER SERVICES: The USPTO response to a trademark registration application (other than registering a mark) is referred to as an “office action.” Generally, a lawyer will charge time spent responding to an office action is charged separately. An office action might take the position, for instance, that an applied-for mark is merely descriptive of the goods or services to which it is affixed or is too similar to an existing mark, either of which precludes registration. It is often possible to persuade the USPTO that its initial impression is misplaced and obtain registration. Failure to respond to an office action or failure to persuade the USPTO will result in non-registration of the applied-for mark.
STATEMENT OF USE: If an applicant does not currently use an applied-for mark but intends to use the mark in interstate commerce--a Statement of Use is required after the mark is actually used in interstate commerce.
SEARCH SERVICES: While an attorney usually will conduct a preliminary on-line investigation to discover potentially conflicting marks, it is also possible to commission a detailed search of a mark. Professional trademark search services perform an extensive search for possible conflicting marks, including marks registered at the USPTO, marks registered separately in any of the 50 states and unregistered marks: owners of any of these marks may challenge the registration of a mark during the application process or even after registration. Professional trademark search services provide a trademark search much more economically than an attorney can perform the same search.
REQUIRED INFORMATION: The following information is necessary to prepare a trademark application:
Information about the applicant:
■ full legal name of the applicant;■ applicant entity type (e.g. corporation, partnership, proprietorship (i.e., individual));■ entity place of establishment (the name of the country where the entity is legallyestablished); and■ if the applicant is a partnership, the names and citizenship of the general partners.
Information about use of the mark:
■ The date the mark was first used in interstate commerce: If the mark has not been used in interstate commerce, the applicant must intend to use the mark in interstate commerce within six months.■ If the mark is not simply standard Roman characters (essentially a word or words), a clear drawing of the mark: It is best if the mark drawing can be provided as a .jpg image file between 250 and 944 pixels high and 250 and 944 pixels wide.■ If the mark contains color, an indication of whether color is claimed as a feature of the mark: If color is claimed, identify the name of the color(s) and describe where the color(s) appears on the mark.■ If the mark includes non-English wording, an English translation. If the mark includes non-Latin characters, a transliteration of those characters into Latin characters.■ If the mark includes a living individual’s name or portrait, written consent of the individual.■ If the applicant owns one or more previous U.S. registrations for the same mark, the U.S. registration numbers for those registrations.■ A full listing of the goods and|or services on which the mark is affixed or is to be affixed. The listing will be used to identify the class(es) in which registration will be sought.■ Occasionally, additional necessary information is identified during the application preparation process.
WHAT TO EXPECT: Rights in a trademark or service mark (primarily the ability to prevent others from using the mark) begin the day an application to register the mark is submitted. The registration process, however, can last a year or even longer. After an application is submitted or approved, the mark owner should to attend to trademark policing and renewal.
