**Disclaimer:**
Trademark Genius does not operate as a law firm. No information on our website is to be used as legal advice. Each situation can be affected by individual circumstances. We do not guarantee the approval of the USPTO, that the trademark will be protected from infringement or that any ensuing litigation will lead to a desirable outcome.
Definitions
A Trademark is a word, phrase, symbol, or device, or any combination, used or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Overall, a trademark is a protection of identification.
A few examples include: Apple for laptops, Sprite for soft drinks or Adidas for shoes.
A few examples include: Apple for laptops, Sprite for soft drinks or Adidas for shoes.
A Service Mark is a word, phrase, symbol, or device, or any combination, used or intended to be used, in commerce to, to identify and distinguish the services of a provider from the services of other providers.
A Good is any physical product that can be touched, used, worn or owned.
A Service is any action or task provided for the consumer. Services include activities such as dry cleaning, legal services or banking, for example.
A Patent generally protects the functionality and design of an invention. It provides the owner with exclusive rights to manufacture goods or services for 20 years from the stated Patent application filing date.
A Copyright will generally protect an artist's work. Common items to be copyrighted include; books, photographs, art, movies and music.
A Common Law Trademark is whenever someone uses a company name, logo or slogan in the marketplace, even when the mark itself is not registered.
A Specimen is a real-world example of how exactly the trademark is used with a good or service. Some examples of appropriate specimens include; tags, product packaging or advertisements for services.
An Intent to Use Application can serve essentially as a company’s “placeholder” in line and validates its application. A Statement of Use needs to be submitted within 6 months of registering an intent to use trademark. If more time is needed, a maximum of 5 (6-month long) extensions are available to be requested with good cause.
A Statement of Use Application is filed to alert the USPTO that the trademark is being used. This activates the mark, following the submission of the Intent to Use Application.
The term "Use" relates to use in commerce. A Trademark that has not yet been used on products or services, but will be in the future is in "Intent to Use" status. When the Trademark becomes "Active" and being used in business a specimen can prove active use of the Trademark.
Any word, name, symbol, device, or any combination, used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
A word, phrase, symbol, or device, or any combination, used or intended to be used, in commerce, by members of the associated organization. Symbols associated with membership in a group or organization.
When a group of words is used to describe a mark, the USPTO may attempt to claim some of the individual generic or descriptive terms. Failure to disclaim the portion of requested mark may result in rejection of the application. There is an ability to fight the request to disclaim. Consider seeking legal counsel if choosing to do so.
After a trademark passes 5 years of continued use, the Declaration of Incontestability can be filed which provides further protection under trademark law. This prevents others from challenging various aspects of a trademark.
The USPTO may notify an applicant using an Office Action Letter if their mark needs to be filed in this form. Some instances that may require filing under this form are if the mark is descriptive, a surname or a geographic location.
TM, SM and ® are a method to display that the user is claiming trademark rights. TM and SM do not require filing with the Federal Registration to use. The ® symbol can only be used if filed.
A drawing is a visual representation on a page that displays the trademark. For applications for a mark that is actively being used, the drawing must show how it is used.
An abandoned trademark is one that is no longer pending processing by the USPTO and has either been denied or had an Office Action Letter sent out, that was not responded to by the deadline.
Yes. An abandoned trademark can be revived using the Petition to Revive within 2 months of the Notice of Abandonment being issued.
A Trademark Search is done to find other marks with similar pronunciation, spelling or appearance. A search is not required, but is a helpful tool to avoid easily discoverable duplications of other active trademarks.
The Common Law Search is a search for records outside of the federal register and pending mark applications. The purpose of this search is to find marks being used that have not been filed with the USPTO.
Trademark monitoring is provided through a report, alerting of any new marks that have either been filed or published that are similar to yours.
Trademark Genius offers a Monthly Trademark Monitoring Service to maintain vigilance of how your mark is being used and stop infringement in its tracks. View Monitoring
Trademark Genius offers a Monthly Trademark Monitoring Service to maintain vigilance of how your mark is being used and stop infringement in its tracks. View Monitoring
The Application Process
- The mark that will be used
- Owner's/Applicant's legal name and address
- Applicant's type of legal entity
- LLC, Corporation, Sole Proprietorship, etc.
- Name and address of individual for correspondence
- A drawing of the Trademark
- The category and class(s) of your good(s)/service
- More than one class may be selected, however the more selected the more you will need to pay
- A description of your good(s)/service
- A list of goods/services to be covered by the application
- Date mark first used in commerce + date mark shared anywhere
- A copy of a specimen
- If a copy of the specimen is not available at the time of filing, Trademark Genius will send an email reminder
The USPTO filing fee is $350 per application, this remains the same regardless of filing methods. This fee is collected by Trademark Genius, following our search, and provided to the USPTO once the application is signed and filed.
When you place an order, your order begins processing immediately. Due to the varying nature of processing times, you may request cancellation after your order has been placed - but we cannot guarantee that your order will be canceled. You may be able to cancel your order by contacting us via email at [email protected] or by calling 1-800-270-6305.
Orders that our team has already begun reviewing and processing will be subject to a cancellation fee of up to $99. Your order is no longer refundable once we have submitted it to the USPTO.
The length of time for processing can vary. Per the USPTO, the application will begin to be reviewed in around 3 months time. The review itself takes approximately 1 month to complete. If reviewed and deemed acceptable, the USPTO will publish the mark in the Official Gazette in order to screen for any public challenges to the trademark. Once 30 days have passed and there are no challenges to the mark, it is prepared for registration which generally takes 3 months.
Yes. There are fees involved with changes, they are dependent on how far along the trademark is in the process. If a change is needed after the mark has been published to the Official Gazette, a Post-Publication Amendment will need to be filed. Drastic changes to the trademark itself may require filing a new application instead, along with separate filings fees.
If the USPTO has a concern with an application, they will voice the concern using a “Office Action” letter. The applicant can either choose to respond to the letter or abandon their application. There is a deadline on the letter and if it is not replied to by the date stated, the application will be abandoned. If an applicant chooses to respond to the concern, and this response is still challenged by the USPTO, an appeal process can take place with the Trademark Trial and Appeal Board (TTAB). The proceedings with TTAB contain complex procedural rules that can be difficult to follow, at this point of the process seeking an attorney as needed may be advised.
Trademark Genius offers an Office Action Response service to aid in responding to the USPTO and getting your Trademark back on track for registration. View details here: Office action Service
Trademark Genius offers an Office Action Response service to aid in responding to the USPTO and getting your Trademark back on track for registration. View details here: Office action Service
The status of your application can be viewed by visiting the USPTO’s Trademark Status & Document Retrieval portal, you will need your serial number.
Trademark Status & Document Retrieval: https://tsdr.uspto.gov/
If you have questions regarding your status, inquiry is available in a variety of methods on the USPTO contact information page:
USPTO Contact Information Page: https://www.uspto.gov/trademarks/contact-trademarks
Trademark Status & Document Retrieval: https://tsdr.uspto.gov/
If you have questions regarding your status, inquiry is available in a variety of methods on the USPTO contact information page:
USPTO Contact Information Page: https://www.uspto.gov/trademarks/contact-trademarks
In order to maintain trademark protection following registration, a Declaration of Continued Use needs to be filed on each of the following dates:
1. 5th-6th anniversary of Date of Filing (first Declaration of C. filed)
2. 9th-10th anniversary of Date of Filing (second Declaration of C. filed)
3. Every 10 years of Date of Filing (recurring filing moving forward)
Trademark Genius offers a Trademark Renewal service to aid in a seamless renewal and ensure your Trademark remains properly protected. View Filing a Renewal
1. 5th-6th anniversary of Date of Filing (first Declaration of C. filed)
2. 9th-10th anniversary of Date of Filing (second Declaration of C. filed)
3. Every 10 years of Date of Filing (recurring filing moving forward)
Trademark Genius offers a Trademark Renewal service to aid in a seamless renewal and ensure your Trademark remains properly protected. View Filing a Renewal
Basic Questions
The most common grounds for refusal by the USPTO are the following:
- Likelihood of Confusion
- Merely Descriptive and Deceptively Misdescriptive
- Geographically Descriptive and Geographically Deceptively Misdescriptive
- Ornamentation
- Surname
A good description is short, at least two words but no longer than a sentence. It is important that it is specific, but not too descriptive or vague. The description cannot be the category/class of the mark.
Common law rights are limited to the geographic location where the mark is used. Registered trademarks are protected nationwide and provide constructive notice of the owner’s claim to the mark as evidence of ownership. Registered trademarks can also file for registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Whoever first uses the trademark in commerce or has filed an Intent to Use Application.
Registration of the company name protects the word, phrase, symbol, or device, or any combination, used or intended to be used, in commerce, distinguishing it from other companies. Trademarking a logo protects the appearance of the logo itself, specifically the design. Logos are able to be trademarked however not required. If a logo is to be registered it will need to be done so additionally, with its own processing fees.
The USPTO has constructed a list of their approved categories to be chosen from. There is the ability to register a mark within multiple classes, however separate filing fees apply for each category.
USPTO Master List Search: https://idm-tmng.uspto.gov/id-master-list-public.html
USPTO Master List Search: https://idm-tmng.uspto.gov/id-master-list-public.html
In most cases, no. Registering a trademark will also protect the web address associated, as long as the address is the trademark name followed by a “.com”.
No. Plurals do not need to be registered separately due to the strong correlation to the trademark name.
A Cease and Desist letter is to be sent by the trademark owner to the infringing party, demanding to discontinue the use of the trademark. If the infringing party either disregards or denies the cease and desist, an infringement lawsuit is an option to pursue. Consider seeking legal counsel if choosing to do so.
Yes. However, all changes in assignment must be notified to the USPTO.
Software is something that can be both a good and a service, what defines the category it is placed in, is the nature of the way it is used. Software that is sold to the consumer as a disc or download falls into the product category. If an action or task is completed, yet the consumer does not keep any of the software used, it would be considered a service.
The nature of trademarks is to protect the identification of a good or service. To properly protect a story or novel, a copyright is the most adequate method.
No. U.S. Citizenship is not required, however an active citizenship must be disclosed in the record when filing.
No. A registered trademark has protection nationwide in the U.S. only. To obtain registration in other countries, the owner must either have an application pending or an already registered trademark and check if the desired country is a member of the Madrid Protocol. If the country is a member, an International Application can be filed with the International Bureau of the World Property Intellectual Organization.
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