Registering a Trademark/Service mark and Filing Requirements

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.  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.

Applying to register your trademark with the United States Patent and Trademark Office (USPTO) begins a legal process. Legal requirements and deadlines must be met and fees may be required throughout the process.  Not all applied-for trademarks register.  And if the requirements are not correctly satisfied, it may provide a basis for cancellation of a mark that was registered.

In order to register a trademark the following information and electronic files are required:

  1. The name, address, contact and citizenship of the owner of the mark. The owner can be an individual, partnership, DBA, corporation, a limited liability company, or some other legal entity. If the owner is an individual, it is necessary to know his or her citizenship. If the owner is a company, it is necessary to know where (state or country) the company was formed.
  2. The mark. The mark may comprise standard characters or may be a “stylized mark” with graphic elements.  It may be formed from a logo and/or design graphic image with particular fonts and colors with or without words.
  3. If the mark is a graphic image, then a properly-sized .jpg image is necessary to file the mark.  The electronic requirements for a properly sized .jpg image required by the USPTO for all black-and-white. jpg images and color .jpg images are (1) a scan of no less than 300 dots per inch and no more than 350 dots per inch; and (2) a length and width pixel range of no less than 250 pixels and no more than 944 pixels. (For example, a valid pixel dimension is 640 X 480 pixels or 300 X 600 pixels.)
  4. A list of the goods or services that the mark will be used in connection with in commerce.  This enables the attorney to determine the class of goods or services in which your mark should register in.  When a trademark is registered it prevents someone else from using the same, or a confusingly similar, mark in the same class of goods as your product or service, but not from using the mark with products and services that are not similar to yours.

For example the word and mark “Apple” is registered by Apple Inc. in the class of “Electrical and scientific apparatus” for products and goods related to computers; and it is also registered by Apple Rubber Products, Inc in the class of “Rubber goods” for products and goods related to o-rings, gaskets, and non-metallic seals.  Since these are unrelated products, neither company can prevent the other from using their respective trademarks in connection with their respective goods.  There is no likelihood of consumer confusion. In other words, a potential customer would not be confused and believe rubber gaskets and computers come from the same company source.

  1. Every trademark application must have a legal basis for filing.  There are five filing bases under federal trademark law: Section 1(a) actual use of the mark in commerce; Section 1(b) intent-to-use the mark in commerce; Section 44(d) foreign application; Section 44(e) foreign registration; and Section 66(a) Madrid Protocol.
  2. If the filing basis for registration is actual use of the mark in commerce, there are additional requirements to file the application.  The applicant must file a “specimen” showing proof and an example of the mark being used in commerce in the claimed class of goods or services.  (An application based on “intent to use” will require additional filing fees to file the specimen later in the process after the USPTO issues a “Notice of Allowance”.)  When a specimen is filed with the USPTO the following is required for each class of goods or services:
    1. An electronic image of the specimen;
    2. A description of the specimen;
    3. The date of first use of the mark anywhere; and
    4. The date of first use of the mark in commerce.

A specimen is a .jpg or .pdf image file showing the mark as used in commerce on or in connection with any item in the class of listed goods and/or services.  The file size cannot exceed 5 megabytes per attachment.  With all stylized mark applications the specimen must show the mark exactly as depicted in the .jpg image of the mark.  For standard character marks the specimen image file may be in color.  The image must be in color if color is being claimed as a feature of the mark, which is generally the case with all stylized marks.  This image file should NOT be either (1) the same file used in the mark section; or (2) a newly-created image that nonetheless shows only the mark by itself.

In order for a web page to be used as a specimen it must be a .jpg copy of the actual web page again showing the mark in connection with the product or service and a way to order the product.  The .jpg file size of the web page cannot exceed 5 megabytes.

Your specimen is an example of how the mark is used to identify your goods and services to potential customers. The best specimens show the mark on the packaging of goods or in an advertisement for services. The specimen cannot be the mark by itself – you must show how it is used on or in something related to the identified goods and/or services.

For example, suitable specimens include:

  1. Labels – typically an adhesive-backed sheet bearing printed information including the trademark.  Shipping or mailing labels may be accepted if they are fixed to the goods, or to the container for the goods, and if proper trademark usage is shown.
  2. Tags – commonly a printed sheet bearing the trademark, which sheet is tied or otherwise physically attached to the goods.
  3. Containers – typically a box or package bearing the trademark and containing the goods, although it includes any type of commercial packaging which is normal for the particular goods as they move in the trade.
  4. Displays directly associated with the goods at the point of sale, such as banners, shelf talkers, window displays, menus and other similar devices.  To serve as a satisfactory specimen the display should be intended to catch the attention of purchasers at the point of sale, prominently present the mark and associate it with the goods or relate it to the goods.  If the display is in printed material, such as in a catalog, it is acceptable as a display associated with the goods if (a) it includes a picture of the relevant goods, (b) it includes the mark sufficiently near the picture to associate it with the goods, and (c) it includes information necessary to order the goods.  If it does not, then likely it will be deemed to be advertising and therefore insufficient as a specimen.  It is not necessary that the display be in close proximity to the goods.  Displaying a trademark on company uniforms may at times be sufficiently associated with the goods to constitute proper trademark specimens.  Because the distinction between displays and advertising is at times quite unclear, other types of specimens should be used when possible.
  5. Facsimiles – while labels, tags, and containers showing the mark as actually used in commerce are preferred as specimens, in appropriate cases facsimiles also may be used as specimens.  For example, if the mark is physically embossed or stamped on the article, a photograph showing both the mark and enough of the article so that its nature can be identified will be accepted as a facsimile specimen.
  6. Magazines – marks used on publications do not require submission of a complete copy of the publication unless it is reasonably necessary for a proper examination of the application, e.g., when descriptiveness may be an issue.
  7. Webpage – web pages that display the product and provides means of ordering the product can qualify as a “display associated with the goods” as long as the mark appears on the web page in a manner that associates the mark with the goods.

The following articles are NOT suitable as specimens for trademark applications:

  1. Advertising material – any material, whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use, for use of a mark as a trademark requires use of the mark on or in connection with goods, not in advertising.
  2. Informational charts are also not acceptable as trademark specimens (but instructional sheets or booklets distributed with the product packaging would be acceptable.)
  3. Other materials which are not acceptable as trademark specimens include marketing circulars or brochures, price lists, announcements, publicity releases, listings in catalogs and trade directories, and business stationery.  Business cards are acceptable for services but not for goods.  They must show 3 things: mark, description of service, and contact information to purchase the service.
  4. Internal materials – materials used by the applicant in its internal business operations as opposed to its business with customers – are unacceptable as trademark specimens.  Such materials include internal memoranda, business plans, shipping documents, checks, invoices, and weigh bills.
  5. Bags and other packaging materials bearing the name of a retail store and used by the store for packaging items sold to customers generally are not acceptable as specimen to show trademark use of the store name on products sold by the store.  However, they would be acceptable for retail store services.
  6. Materials incorporating the ® symbol adjacent the mark when it has not yet been federally registered.
  7. If the mark contains the name or image of any living person then permission from the living person to both use and register it as a trademark must be submitted with the application.
  8. If the mark contains foreign words then a translation of the words must be submitted with the application.
  9. If the mark contains any words or terms that have a specific industry meaning, then their meaning must be submitted with the application.
  10. If the mark contains any acronyms, then what the acronym represents must be submitted with the application.
  11. If the filing basis of the mark relies on a foreign application or registration, then a certified copy of any foreign application or registration (and its translation) must be submitted with the application.

Once an application has been filed, the total time for an application to be processed may be anywhere from five months to several years, depending on the basis for filing and the legal issues that may arise during the examination of the application.

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