Our Miami Trademark Lawyers answer trademark frequently asked questions.
BEFORE FILING AN APPLICATION
What is a trademark?
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.
What is a service mark?
A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.
Must I register my trademark?
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 important benefits.
What are the benefits of federal trademark registration?
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.
Do federal regulations govern the use of the designations “TM” or “SM” or the ® symbol?
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 a “common-law” mark. No registration is necessary to use a “TM” or “SM” symbol and you may continue to use these symbols even if the USPTO refuses to register your mark. Those symbols put people on notice that you claim rights in the mark, although common law doesn’t give you all the rights and benefits of federal registration. You may only use the federal registration symbol “®” after the USPTO actually registers a mark, not while an application is pending. And it may only be used on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Although there are no specific requirements on where the symbol should be placed relative to the mark, most businesses use the symbol in the upper right corner of the mark. Note: Because 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.
Should I have an attorney?
Although not required, most applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration. A private trademark attorney may help you avoid many potential pitfalls.
SEARCHING FOR SIMILAR TRADEMARKS
Should I conduct a search for similar trademarks before filing an application?
It is advisable to conduct a search before filing your application.
Where can I conduct a trademark search for trademarks in pending applications and federal registrations?
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.
FILING THE APPLICATION AND OTHER DOCUMENTS
Who may file an application?
Only the owner of the trademark may file an application for registration. The owner controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.
May a minor file a trademark application?
The question of whether an application may be filed in the name of a minor depends on your state’s law. If the minor may validly enter into binding legal obligations, and may sue or be sued, in the state in which he or she is domiciled, the application may be filed in the name of the minor. Otherwise, the application must be filed in the name of a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. An example of the manner in which the applicant should be identified in such cases is: “John Smith, United States citizen, (parent/legal guardian) of Mary Smith.”
Must I be a U.S. citizen to obtain a federal registration?
No. However, your citizenship must be provided in the application. If you have dual citizenship, then you must indicate which citizenship will be printed on the certificate of registration.
What is the difference between “use in commerce” and “intent to use” in commerce?
The basic difference between these two filing bases is whether you have used the mark on all the goods/services. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis. An “intent to use” basis will require filing an additional form and fee that are unnecessary if you file under “use in commerce.”
What is a specimen?
A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on your labels or on your website).
What is a drawing?
The “drawing” is a clear image of the mark applicant seeks to register. The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette and on the registration certificate. There are two types of drawings: “standard character” and “special form.” For more information on the different types of drawings see Basic Facts About Trademarks.
Can you register the name of a musical group or band?
A band name may function as a service mark for “entertainment services in the nature of performances by a musical group” if it is used to identify live performances.
AFTER FILING THE APPLICATION
Is registration of my mark guaranteed?
No. The examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2.
The most common reasons for refusing registration are because the mark is:
•Likely to cause confusion with a mark in a registration or prior application;
•Descriptive for the goods/services;
•A geographic term;
•Ornamental as applied to the goods.
The examining attorney may also issue requirements concerning, for example:
•The goods a services listed in the application;
•The description of the mark;
•The quality of the drawing;
How long will it take for my mark to register?
The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. You may view the application processing timelines here.
How do I file a Statement of Use or Extension Request after the Notice of Allowance is issued?
The Applicant has six (6) months from the mailing date of the notice of allowance to file either a Statement of Use or an Extension Request.
If the applicant is using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must submit a statement of use form, specimen and the required fee(s) within 6 months from the issue date the notice of allowance to avoid abandonment. Applicant cannot withdraw the statement of use; however, the applicant may file one extension request with the statement of use to provide more time to overcome deficiencies in the statement of use. No further extension requests may be filed.
If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request form and the required fee(s) to avoid abandonment. The applicant must continue to file extension requests every 6 months calculated from the issue date of the notice of allowance until the statement of use is filed. A total of 5 extension requests may be filed.
If I filed based on an “intent to use” the mark, when must I allege actual use of the mark in commerce?
You must file your Allegation of Use either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted.
May I assign or transfer the ownership of my trademark to someone else?
Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications.
AFTER THE TRADEMARK HAS REGISTERED
How long does a trademark registration last?
The registration is valid as long as you timely file all post registration maintenance documents. You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated. For more information see Maintain/Renew a Registration.
Where should I place the ® symbol?
There are no specific requirements on where the “®” symbol should be placed relative to the mark, but most businesses use the symbol in the upper right corner of the mark. The “®” symbol indicates that you have federally registered your trademark with the United States Patent and Trademark Office. It puts the public on notice that your mark is registered and that you have nationwide rights in it. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because 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.
Are there any restrictions on use of the “®” symbol?
There are three important restrictions on use of the “®” symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the federal registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because 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.
Is a federal registration valid outside of the United States?
No. However, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.
What if someone else is using my registered mark on related goods and services?
You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting an attorney specializing in trademark law. Local bar associations and phone directories usually have attorney listings broken down by specialties. Time can be of the essence. Click here for further information.
My spouse owned a trademark registration and has since died. Do I own it now?
Perhaps. Because this depends on state law, the USPTO cannot provide a definite answer for all factual situations. You should consider contacting an attorney.
OTHER TRADEMARK FREQUENTLY ASKED QUESTIONS
What are “common law” rights?
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.
What is “interstate commerce”?
For goods, “interstate commerce” generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involves offering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).
Will my information be public?
All data you submit to the USPTO, including your phone number, e-mail address, and street address, but not your credit card and banking information, is public record and is viewable on the Internet. Do not submit personal identifying information that is NOT required for a filing, such as a social security number or driver’s license number.
What are trademark monitoring and document filing services?
You may receive unsolicited communications from companies requesting fees for trademark-related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies that offer these services are not affiliated or associated with the USPTO or any other federal agency.