Trademark Registration Info

• What is a Trademark?
• Establishing Trademark Rights
• Types of Applications for Federal Registration
• Who May File an Application?
• Foreign Applicants
• Searches for Conflicting Marks
• Laws & Rules Governing Federal Registration
• Other Types of Applications
• Where to Send the Application and Correspondence
• Use of the "TM," "SM" and "R" Symbols
• Information Numbers
• Filing Date - Filing Receipt
• Examination
• Publication for Opposition
• Issuance of Certificate of Registration or Notice of Allowance

What is a Trademark?
A TRADEMARK is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services 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. Throughout this booklet the terms "trademark" and "mark" are used to refer to both trademarks and service marks whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services. A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention. For copyright information call the Library of Congress at (202) 707-3000.

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Establishing Trademark Rights
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. (See below, under "Types of applications," for a discussion of what is meant by the terms commerce and use in commerce.) Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. (However it is strongly advised that you at least run a search on a proposed "mark" to make sure it is not already registered) However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

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Types of Applications for Federal Registration
An applicant may apply for federal registration in three principal ways. (1) An applicant who has already commenced using a mark in commerce may file based on that use (a "use" application). (2) An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). For the purpose of obtaining federal registration, commerce means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as "use in commerce." If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark. (3) Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country. For information regarding applications based on international agreements please call the information number provided below.

A United States registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws. The PTO cannot provide information or advice concerning protection in other countries. Interested parties may inquire directly in the relevant country or its U.S. offices or through an attorney.

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Who May File an Application?
The application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark. See below in the line-by-line instructions for information about who must sign the application and other papers.

The owner may submit and prosecute its own application for registration, or may be represented by an attorney. The PTO cannot help select an attorney.

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Foreign Applicants
Applicants not living in the United States must designate in writing the name and address of a domestic representative, a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." The applicant may do so by submitting a statement that the named person at the address indicated is appointed as the applicant's domestic representative under l(e) of the Trademark Act. The applicant must sign this statement. This person will receive all communications from the PTO unless the applicant is represented by an attorney in the United States.

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Searches for Conflicting Marks
An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO, but in evaluating an application, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing, will not be refunded even if a conflict is found and the mark cannot be registered. Therefore it is advisable to to determine whether there might be a conflict between two marks prior to the application process (by doing a trademark/servicemark search!). The PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same.

The PTO does not conduct searches for the public to determine if a conflicting mark is application. However, there are a variety of ways to get this same type of information. First, by performing a search in the PTO public search library. The search library is located on the second floor of the South Tower Building, 2900 Crystal Drive, Arlington, Virginia 22202. Second, by visiting a patent and trademark depository library (IMPORTANT!!! YOU CAN ONLY SEARCH FEDERAL NAMES IN THESE FACILITIES! YOU CAN NOT DO A STATE OR COMMON LAW SEARCH!! ONLY A PRIVATE TRADEMARK NAME SEARCH COMPANY CAN DO THAT TYPE OF HIGH QUALITY, COMPREHENSIVE SEARCH!! Remember!! as stated above, a party begins acquiring rights to a name upon use in interstate commerce. You will not find any of these unregistered parties by searching only federal names!) and finally by utilizing the services of either a private trademark search company, or an attorney who deals with trademark law, can provide trademark registration information. The PTO cannot provide advice about possible conflicts between marks.

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Laws & Rules Governing Federal Registration
The federal registration of trademarks is governed by the Trademark Act of 1946, as amended, 15 U.S.C. 1051 et seq.;the Trademark Rules, 37 C.F.R. Part 2; and the Trademark Manual of Examining Procedure (2d ed. 1993).

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Other Types of Applications
In addition to trademarks and service marks, the Trademark Act provides for federal registration of other types of marks, such as certification marks, collective trademarks and service marks, and collective membership marks. These types of marks are relatively rare. For forms and information regarding the registration of these marks, please call the appropriate trademark information number indicated below.

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Where to Send the Application and Correspondence
The application and all other correspondence should be addressed to "The Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513." The initial application should be directed to "Box NEW APP / FEE." An AMENDMENT TO ALLEGE USE should be directed to Attn. AAU." A STATEMENT OF USE or REQUEST FOR AN EXTENSION OF TIME TO FILE A STATEMENT OF USE should be directed to "Box ITU / FEE." (See page 5 for an explanation of these terms.)

The applicant should indicate its telephone number on the application form. Once a serial number is assigned to the application, the applicant should refer to the serial number in all written and telephone communications concerning the application.

It is advisable to submit a stamped, self-addressed postcard with the application specifically listing each item in the mailing, that is, the written application, the drawing, the fee, and the specimens (if appropriate).

The PTO will stamp the filing date and serial number of the application on the postcard to acknowledge receipt. This will help the applicant if any item is later lost or if the applicant wishes to inquire about the application. The PTO will send a separate official notification of the filing date and serial number for every application about two months after receipt.

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Use of the "TM," "SM" and "R" Symbols
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues. Please omit all symbols from the mark in the drawing you submit with your application; the symbols are not considered part of the mark.

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Information Numbers
General Trademark or Patent Information (703) 308-HELP

Automated (Recorded) General Trademark or Patent Information (703) 557-INFO

Automated Line for Status Information on Trademark Applications (703) 305-8747

(Additional status information is available at (703) 308-9400)

Assignment and Certification Branch (Assignments, Changes of Name, and Certified Copies of Applications and Registrations) (703) 308-9723

Trademark Assistance Center (703) 308-9000

Information Regarding Renewals [Sec.15], Affidavits of Use [Sec. 8], Incontestability [Sec. 15], or Correcting a Mistake on a Registration (703) 308-9500 ;for Certification, Collective, or Collective Membership Marks (703) 308-9000

Trademark Trial and Appeal Board (703) 308-9300

Assistant Commissioner for Trademarks (703) 308-8900

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Filing Date - Filing Receipt
The PTO is responsible for the federal registration of trademarks. When an application is received, the PTO reviews it to determine if it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the PTO assigns it a serial number and sends the applicant a receipt about two months after filing. If the minimum requirements are not met, the entire mailing, including the filing fee, is returned to the applicant.

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Examination
About four months after filing, an examining attorney at the PTO reviews the application and determines whether the mark may be registered. If the examining attorney determines that the mark cannot be registered, the examining attorney will issue a letter listing any grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter, or the application will be abandoned. If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.

A common ground for refusal is likelihood of confusion between the applicant's mark and a registered mark. This ground is discussed above. Marks which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.

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Publication for Opposition
If there are no objections, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. The PTO will send a NOTICE OF PUBLICATION to the applicant indicating the date of publication. In the case of two or more applications for similar marks, the PTO will publish the application with the earliest effective filing date first. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.

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Issuance of Certificate of Registration or Notice of Allowance
If the application was based upon the actual use of the mark in commerce prior to approval for publication, the PTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published, if no opposition was filed.

If, instead, the mark was published based upon the applicant's statement of having a bona fide intention to use the mark in commerce, the PTO will issue a NOTICE OF ALLOWANCE about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the NOTICE OF ALLOWANCE to either (1) use the mark in commerce and submit a STATEMENT OF USE, or (2) request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE (see forms and instructions in this booklet). The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the STATEMENT OF USE is filed and approved, the PTO will then issue the registration certificate.

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