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About United States Trademark Registration

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About United States Trademark Registration About United States Trademark Registration Unlike in most countries, agents and attorneys cannot file trademark applications in the United States based on a simple letter of instruction. The applications are comparatively detailed and must be signed by the applicant. We normally recommend some level of searching (see "About Trademark Clearance Reports" on this website) before preparing trademark applications and advise if we see any potential problem that might make a mark unregistrable. In order to prepare a United States trademark application, we need to know the following: 1. Registrability of Mark Before filing a trademark application, we normally recommend that some level of searching be conducted to determine if there are any potential problems that might make a mark unregistrable (see "About Trademark Clearance Reports" on this website). The following marks are considered unregistrable: a mark confusingly similar to one already registered or used in the United States; utilitarian configurations or features; generic names; immoral, deceptive or scandalous matter; matter which disparages or falsely suggests a connection with a person, institution, belief or national symbol; flags, coats of arms or insignias of the United States or any other nation or state; and the name, portrait or signature of a living individual without that person's written consent (or President within the lifetime of his widow without consent). Marks which are merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or primarily surnames may only be registered if they have become distinctive of the products or services for which they have been used. 2. Kind of Mark United States trademark law recognizes four types of marks: (a) Trademarks distinguish the products of one merchant or manufacturer from those of another. "Products" means tangible articles or goods that are sold, ranging from vegetables to automobiles to dolls to video games. Trademarks may include brand names, logos, the shape and/or appearance of packages or the products themselves, sounds, odors and colors that distinguish the product of one merchant or manufacturer from those of another. (b) Service Marks distinguish the services of one provider from those of another. "Services" means commercial activity performed to the order of, or for the benefit of, someone who is not the mark owner, and must not be incidental to some other activity. Service marks identify such services as restaurants, insurance, entertainment , education, repair work, cleaning, transportation and retail store selling. Example: A shoe is a product. Selling or repairing the shoe is a service. Guaranteeing the shoe or its repair is incidental to selling the shoe or its repair, and thus is not a service unless the guarantee is purchased independently from someone other than the shoe seller or repairer. (c) Certification Marks certify that another person's goods or services are in compliance with established standards relating to geographic origin, material, method of manufacture, quality, accuracy, or other characteristics; they also can be marks certifying that a product was made or service rendered by members of a specific trade union or organization. The right to use a certification mark must be granted to all who meet the necessary standards. Certification Marks may not also be used as trademarks or service marks -- they may only be used as certification marks. (d) Collective Marks show the user's membership in a group or association. They often function as trade or service marks for the products or services of the group members (for example, a dairy cooperative), but also may function simply to identify the wearer as a group member (for example, "Girl Scouts of America"). Collective Marks may also be trademarks or service marks. 3. Type of Application The United States permits four different types of trademark applications, which generally may be combined in the same application (though one application may not claim both actual use and an intent to use a mark with respect to the same goods and services). (a) Use-based Trademark Applications are founded upon prior, continuing use in United States commerce. U.S. Commerce includes commerce across state (or U.S. territorial) lines (which normally occurs when the goods are sold or services are rendered in more than one state/territory), commerce between the United States and one or more foreign nations, commerce with a Native American Indian tribe or commerce otherwise regulated by the U.S. Congress (which is most commerce). Equally important, the use must be ordinary commercial use for the type of goods in question; small scale transactions made for the purpose of establishing or maintaining trademark rights are not "use," even if they are "in United States commerce." (b) Intent-to-use ("ITU") Applications must be based upon a bona fide intention to use the mark in U.S. commerce. Registrations based on ITU applications will not be granted until after the applicant has filed a declaration that it has begun using the mark in U.S. commerce. Again, the use must be ordinary commercial use for the type of goods or services in question. Once the registration issues, its priority date is the date on which the application was filed. (c) If the same mark previously registered in its country of origin if that country is a Paris Convention member) and is otherwise eligible for registration in the U.S., registration will be permitted upon the filing of a certified copy of the home registration, an English language translation thereof by one who swears that he or she is familiar with the original language and with English, and the applicant's allegation of a bona fide intent to use the mark in U.S. commerce (although making such use is not a prerequisite to registration). Not all goods or services for which the mark is registered abroad need be covered by the U.S. application, but no goods or services may be added. U.S. standards for identification of goods or services often require substantial changes in the translated description of the goods or services for which the mark is registered abroad. The U.S. application may, but need not, be combined with either a Use-based or an Intent- to-use application (in the latter case, registration on the Intent-to-use basis may not issue until after the applicant has filed a declaration that it has begun using the mark in U.S. commerce). (d) Registration of a mark by the owner of a pending home country application also is allowed, provided the applicant is willing to allege a bona fide intent to use the mark in U.S. commerce (although making such use is not a prerequisite to registration). U.S. registration, however, may not be obtained until the home country registration has been issued. The same rules outlined in subsection (c) above apply to the identification of goods and services. Paris Convention priority is available if the application is filed within six months of its filing in its home country. The U.S. application may, but need not, be combined with either a Use-based or an Intent-to-use application (in the latter case, registration on the Intent-to-use basis may not issue until after the applicant has filed a declaration that it has begun using the mark in U.S. commerce). 4. Specific Information Required for Prosecuting Applications (a) Requirements to receive a filing date for all applications Pursuant to rule changes effective October 30, 1999 implementing the Trademark Law Treaty, only the following elements are required to receive a filing date: (1) The name of the applicant. (2)The name and address for correspondence with the Patent and Trademark Office. (3) A clear drawing of the mark. Word marks may be typed. If the mark is not a word mark or consists of a stylized form of a word mark, a black & white printer's proof or other clear black & white rendition of the mark must be submitted. (4) A list of the goods, services, subject of certification, or goods or services of the collective on or for which the mark is or will be used (or for which it is already registered or applied for in the case of foreign registered or applied-for marks). The goods or services must be identified by their ordinary name (such as "jackets, slacks and shirts"); class headings and broad categories (such as "clothing" or "garments") are not acceptable. (5) The filing fee for at least one class of goods or services. If the applicant's basis of filing is not stated in the original application, it will be requested in the first office action. The applicant's ownership of any prior U.S. registrations or applications for the same or similar marks should also be identified in the original application to avoid any unnecessary delays in the prosecution of the application. (b) Requirements to receive a registration During the course of examination of the application, the following additional information must also be supplied, if it was not included with the original application: (1) For applications based on use of the mark in U.S. commerce: (A) the date of first use of the mark anywhere. (B) the date of first use of the mark in U.S. commerce. (C) whether such use was (and continues to be) under license or was made by a predecessor or affiliated company, and an explanation of the details. (D) three or more specimens for each class of goods or services showing the mark as it is presently used in U.S. commerce (one of which must be filed and two of which are retained for our records). It is customary, but not required, for the specimens to be identical.
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