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Application Process

How do I obtain a state trademark registration?

Depending on the state, you may be able to fill out a trademark application online. Otherwise, you can fill out the application form and mail or fax it to the appropriate state office. There is a fee for filing the application.

How do I obtain a federal trademark registration?

You can fill out an application online and file it over the Internet using the USPTO TEAS at www.uspto.gov/teas/index.html. If you do not have access to the Internet, you can call the Trademark Assistance Center at 800.786.9199 or 703.308.9000 to request a paper form.

TIP: The USPTO strongly recommends using TEAS for filing. Applications filed electronically are processed faster than paper applications.

CAUTION: You cannot send an application by fax to the USPTO; applications sent by fax are not accepted.

A filing fee must be paid at the time of application. Visit the USPTO Web site for the latest information on the required fee amount at www.uspto.gov/teas/index.html.

What are some suggestions to facilitate filing of a federal trademark application and contacting the USPTO?

Who may file an application?

Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or 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 is the owner of the mark.

Do I have to include a copy of the mark with the application?

In addition to describing the mark in the application, ordinarily the applicant must submit a specimen and/or drawing.

What is a "specimen"?

A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. For federal registrations, if the actual specimens are bulky-larger than 8½ by 11 inches-then the applicant must submit photographs or good photocopies of the specimens. The photographs or photocopies may not exceed 8½ by 11 inches. If the application covers more than one "class" of goods or services, one specimen is required for each class of goods or services specified in the application.

Specimens are required in applications based on actual use in commerce and in applications based on a bona fide intention to use the mark in commerce. Specimens are not required for applications based on a foreign application or registration or for applications based on an extension of protection of an international registration to the United States.

What is a "drawing"?

A drawing is a separate page which depicts the mark an applicant seeks to register. For a federal registration in an application based on actual use, the drawing must show the mark as it is actually used, i.e., as shown by the specimens. In the case of an application based on a bona fide intention to use, the drawing must show the mark as the applicant intends to use it. In an application based on a foreign application or foreign registration, the drawing must depict the mark as it appears or will appear on the foreign registration.

SIDEBAR: Since an applicant cannot register more than one mark in a single application, the drawing must display only one mark.

For a federal registration, if I submit a specimen, is a drawing still required?

Yes. The specimen and drawing serve different purposes. A drawing is required in all applications and is used by the USPTO for several purposes, including publishing the mark in the Official Gazette and on the registration certificate. A specimen, on the other hand, is required as evidence that a mark is in actual use in commerce.

Can registration of a mark be refused?

Yes. A trademark registration will be refused if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks.

EXAMPLE: Matter which is merely the generic name of the goods on which it is used-for example, "computer"-cannot be registered.

Are there any other grounds for refusing to register a mark?

Yes. While the following list is based on federal trademark law, most states follow the same rules. The most common (though not the only) grounds for refusing registration are:

How can I check on the status of a pending trademark application?

For federal applications, once you receive a filing receipt containing the serial number of your application, you may check on the status of your application through the USPTO TARR database on the Office's Web site at http://tarr.uspto.gov. If you do not have access to the Internet, you can call the Trademark Assistance Center at 800.786.9199 (or 703.308.9000 if you live in Northern Virginia) to request a status check. Applicants should check on the status of their pending applications every 6 months.

For state registrations, you usually have to call the state agency.

If the registration is refused, can I get a refund?

Ordinarily, no. If acceptance of an application is refused, i.e., not filed, usually the fee submitted with the application is returned with the application. In other cases, the only time you are likely to receive a refund is if a fee was not required or was in excess of the amount required.

How long does it take for a mark to be registered?

It is difficult to predict how long it will take for an application to mature into a registration, because there are so many factors that can affect the process. The state registration process is usually faster than the federal registration process.

Generally, a federal applicant will receive a filing receipt approximately 6 months after filing. The filing receipt will include the serial number of the application. All future correspondence with the USPTO must include this serial number. You should receive a response from the USPTO within 6 to 7 months from filing the application. However, 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 appl

TIP: Current status information on federal trademark applications and registrations may be obtained through the TARR database on the USPTO Web site at tarr.uspto.gov.

TIP: Current status information on federal trademark applications and registrations may be obtained through the TARR database on the USPTO Web site at http://tarr.uspto.gov. If you do not have access to the Internet, you can call the Trademark Assistance Center at 800.786.9199 (or 703.308.9000 if you live in Northern Virginia) to request a status check.

How long does a trademark registration last?

For a federal trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: 1) between the fifth and sixth year following registration and 2) within the year before the end of every 10-year period after the date of registration. The registrant may file the affidavit within a grace period of 6 months after the end of the sixth or tenth year, with payment of an additional fee.

The registrant must also file a Renewal ("Section 9") application within the year before the expiration date of a registration or within a grace period of 6 months after the expiration date with payment of an additional fee.

SIDEBAR: Assuming that an affidavit of use is timely filed, registrations granted prior to Nov. 16, 1989 have a 20-year term, and registrations granted on or after Nov. 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted prior to Nov. 16, 1989 have a 20-year term, and renewals granted on or after Nov. 16, 1989 have a 10-year term.

The period of time a state trademark registration remains valid depends upon the law of each state. A common period is 5 years. After the initial registration period, the registration has to be renewed. Of course, there is a renewal fee.

How long does a federal "intent to use" applicant have to allege actual use of the mark in commerce?

An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the Examining Attorney approves the mark for publication. If an Amendment to Allege Use is not filed, then the applicant has 6 months from the issuance of the Notice of Allowance to file a Statement of Use, unless the applicant requests and is granted an extension of time.

SIDEBAR: If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted.

What are the different classes of goods and services that trademarks and service marks can be registered under?

Trademarks and service marks are divided into classes for registration purposes. Below are listed the classes used by the USPTO. Most states use the same or a similar classification system.

TIP: For more detailed information of what each class does or does not include, go to the state agency Web site or the USPTO Web site.

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