Recent Trademark News
Welcome!
Our law firm is dedicated to providing businesses and entrepreneurs with the highest quality affordable trademark and service mark protection. Services include searches, registration, protection from infringement, cease and desist letters, maintenance, monitoring and representation in litigation.
Home Strategic Names Trademark Search Trademark Registration TM Monitoring Contact Us Other Services
Please add our site to your favorites! Internet Explorer-
Free Initial Consultation!
Call Us at (248) 470-
Reprinted from http://www.uspto.gov/go/tac/doc/basic/index.html
Protecting Your Business Assets
Trademarks, service marks, and trade dress are important intangible assets that become more valuable over time with increasing use and increasing public identification of your goods and services with your mark. Before investing in a new mark, you need to be certain that your new mark is clearly distinguishable from other existing marks. A mark that directly or indirectly causes the public to be confused about the true source of your goods and services can expose your company to expensive and protracted litigation that may seriously damage the goodwill of your business.
A trademark attorney is most qualified to assist you in perfecting legal rights in an appropriate mark by conducting a thorough search for any potentially conflicting marks registered with the United States Patent and Trademark Office or marks in common use anywhere in the country. You need to be very careful about who advises you about the strength and utility of your mark because the unique character of your mark is a legal question and only an attorney can process a trademark application on behalf of a corporation. Furthermore, attorneys have access to common law reference materials that are not generally available to the public for searching.
Even businesses that are not involved in interstate commerce need to search for potentially conflicting marks because the business can be exposed to claims by conflicting trademark holders and local common law mark holders.
The strength or quality of a mark depends upon several important characteristics. Ideally, you should create a new mark that has no inherent meaning. You instill meaning in the new mark through your marketing efforts that identify your new mark with the goods and services you intend to associate with the mark. The result of this creative process should be a unique expression that has the power to promote your associated goods and services to the public.
It is not always economically efficient to develop an entirely original mark. Oftentimes, it may be necessary to use more generic expressions for your mark. These more generic expressions may also obtain trademark protection, although such a mark may not be as strong as a completely original mark.
Words and symbols that describe your goods and services, that describe the geographic location, that are surnames, or that are merely ornamental offer the least protection and may not be federally registerable on the Principal Register of the USPTO. If your mark falls into one of these categories, please see Supplemental Registration on the Other Services page.
Basic Facts: Trademarks
A trademark or service mark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes a company’s goods or services from its competitors.
Basic Facts About Trademarks
Table of Contents
TRADEMARK, COPYRIGHT OR PATENT?
What is a trademark or service mark?
Do Trademarks, Copyrights and Patents protect
the same things?
Is registration of my mark required?
When can I use the trademark symbols TM, SM
and ®?
HOW DO I FILE A TRADEMARK APPLICATION?
Is there a form for filing my application?
Are there other ways to file besides
the Internet?
Must I hire an attorney?
WHAT MUST THE APPLICATION INCLUDE?
Do I have to be a U.S. citizen to apply?
· NAME AND ADDRESS FOR CORRESPONDENCE
· DEPICTION OF THE MARK ("THE DRAWING")
What is a "standard character" drawing?
What is a "stylized or special form" drawing?
What
if I want to show color on the drawing?
Can I change the goods and/or services after filing my application?
What is "use in commerce"?
What is "intent to use"?
Is there any other possible
filing basis?
· SPECIMEN
What is a "specimen" of use?
What is a proper specimen for use of a mark on goods
(products)?
What is a proper specimen for use of a mark with services?
How do I file
the specimen?
When do I file the specimen?
Who can sign the application?
How do I sign a TEAS application?
WHAT HAPPENS AFTER I FILE MY APPLICATION?
· LEGAL AND PROCEDURAL REVIEW OF APPLICATION
Does the examining attorney search for conflicting marks?
Can I search for conflicting
marks before filing?
Are there other reasons the examining attorney might refuse
my mark?
· CERTIFICATE OF REGISTRATION OR NOTICE OF ALLOWANCE
ADDITIONAL REQUIREMENTS FOR "INTENT TO USE" APPLICATIONS
What is an Allegation of Use?
When do I file an Allegation of Use?
Is there a deadline
for filing the Statement of Use after the Notice of Allowance issues?
What is a Request
for an Extension of Time to file a Statement of Use?
MAINTAINING A FEDERAL TRADEMARK REGISTRATION
Trademark, copyright or patent?
What is a trademark or service mark?
· A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.
· A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms "trademark" and "mark" refer to both trademarks and service marks.
Do Trademarks, Copyrights and Patents protect the same things?
No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention. For copyright information, go to http://lcweb.loc.gov/copyright/. For patent information, go to http://www.uspto.gov/main/patents.htm.
Is registration of my mark required?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,
· constructive notice to the public of the registrant's claim of ownership of the mark;
· a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or 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; and
· the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
When can I use the trademark symbols TM, SM and ®?
Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. We do not decide whether you have the right to use a mark (which differs from the right to register). Even without a registration, you may still use any mark adopted to identify the source of your goods and/or services. Once a registration issues, it is up to the owner of a mark to enforce its rights in the mark based on ownership of a federal registration.
USPTO employees will gladly answer questions about the application process. However,
USPTO employees cannot:
· conduct trademark searches for the public;
· comment on the validity of registered marks;
· answer questions on whether a particular mark or type of mark is eligible for trademark registration; or
· offer legal advice or opinions about common law trademark rights, state registrations, or trademark infringement claims.
How do I file a Trademark Application?
Is there a form for filing my application?
Yes. Using the Trademark Electronic Application System (TEAS) available at http://www.uspto.gov/teas/index.html, you can file your application directly over the Internet. Features of electronic filing include:
· On-
· Validation Function. Helps avoid the possible omission of important information.
· Immediate Reply. The USPTO immediately issues an initial filing receipt via e-
· 24 Hour Availability. TEAS is available 24 hours a day, 7 days a week (except 11 p.m. Saturday to 6 a.m. Sunday), so receipt of a filing date is possible up until midnight EST.
If you do not have Internet access, you can access TEAS at any Patent and Trademark Depository Library (PTDL) throughout the United States. Many public libraries also provide Internet access.
Are there other ways to file besides the Internet?
Yes. While we greatly prefer that you file electronically using TEAS, you may either
mail or hand deliver a paper application to the USPTO. You can call the USPTO's automated
telephone line at (800) 786-
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-
Applications delivered by hand or courier should be taken to: Trademark Assistance
Center, James Madison Building -
Must I hire an attorney?
No. However, if you prepare and submit your own application, you must comply with all requirements of the trademark statute and rules. If you choose to appoint an attorney to represent your interests before the USPTO, we will correspond only with your attorney. The USPTO cannot help you select an attorney.
What must the application include?
An application must include the following elements before the USPTO will accept it:
· the name of the applicant;
· a name and address for correspondence;
· a clear drawing of the mark;
· a listing of the goods or services; and
· the filing fee for at least one class of goods or services.
If your application does not meet these requirements, the USPTO will return the application papers and refund any fees submitted.
If you file a paper application, and it meets the minimum filing requirements, the USPTO will assign a serial number and send a filing receipt. You should review this receipt for accuracy, and notify the USPTO of any errors, following the directions on the receipt.
An electronically-
If you transmit your application over the Internet, the filing date is the date the transmission reaches the USPTO server. Otherwise, the filing date of an application is the date the USPTO receives the application.
NOTE: Receiving a filing date does not mean that you have satisfied ALL registration requirements. To obtain a registration, you must comply with all application requirements, and overcome any refusal(s) issued by the examining attorney during examination.
Although only the minimum filing requirements must appear in your initial application to receive a filing date, submitting all available information requested in the application form will help reduce delays in processing your application. See below for more information about these requirements.
The application must be filed in the name of the owner of the mark. The owner of the mark is the person or entity who controls the nature and quality of the goods identified by the mark and/or the services rendered in connection with the mark. The owner may be an individual, corporation, partnership, or other type of legal entity.
Do I have to be a U.S. citizen to apply?
No. However, if you do not reside in the United States, you may appoint a "domestic representative" as part of the application process (see below).
NAME AND ADDRESS FOR CORRESPONDENCE
The name and address for correspondence is the address where the USPTO will send communications concerning the application. It may be that of the applicant or the applicant’s legal representative. Also, an applicant residing outside the United States may list a domestic representative, that is, the name and address of any person residing in the U.S. "upon whom notices or process may be served for proceedings affecting the mark."
You must keep your mailing address up-
Commissioner for Trademarks
P.O. Box 1451
Alexandria , VA 22313-
DEPICTION OF THE MARK ("THE DRAWING")
Every application must include a clear drawing of the mark you want to register. We use the drawing to file the mark in the USPTO search records and to print the mark in the Official Gazette and on the registration certificate.
TEAS (Trademark Electronic Application System) generates a proper drawing for you,
based on the information you enter. See TMEP §807.05 for more information about electronically-
· applicant’s name;
· correspondence address;
· listing of goods and/or services; and
· dates of use (if already using the mark in commerce); or, wording "Intent to Use."
The representation of the mark must then appear below the heading, in the middle of the page, in the proper format for either a "standard character" drawing or a "stylized or special form" drawing. Once filed, you cannot make a material change to your mark.
What is a "standard character" drawing (formerly known as a "typed" drawing)?
You may submit a standard character drawing if:
· All letters and words in the mark are depicted in Latin characters;
· All numerals in the mark are depicted in Roman or Arabic numerals;
· The mark includes only common punctuation or diacritical marks; and
· The mark does not include a design element.
37 C.F.R. §2.52(a).
You must also submit the following statement:
The mark is presented in standard character format without claim to any particular font style, size or color.
You may depict the mark in any font style; may use bold or italicized letters; and may use both uppercase and lowercase letters, all uppercase letters or all lowercase letters. See TMEP §807.03 for further information.
The Office has created a standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing, available on the Office's website at http://teas.uspto.gov/standardCharacterSet.html. If the applicant wants to register characters that are not in the set, then the applicant must file a special form drawing.
NOTE: Actual size would be 8½" x 11" (21.6 cm x 27.9 cm).
Applicant’s Name: A-
Goods and Services: Computer services, namely on-
Date of First
Use in Commerce: May 15, 1995
Standard Character Claim: The mark is presented in
standard character format without claim to any particular font style, size or color.
The Mark:
THEORYTEC
What is a "Stylized or Special Form" drawing?
If the particular style of lettering is important or the mark includes color or a design or logo, you must select the "stylized or special form" drawing format. The drawing page should show a black and white image of the mark unless color is claimed as a feature of the mark, no larger than 3.5 inches by 3.5 inches (8 cm by 8 cm). The drawing in special form must be a substantially exact representation of the mark as it appears on the specimen or on the foreign registration, as appropriate.
The following is an example of a proper special form drawing:
NOTE: Actual size would be 8½" x 11" (21.6 cm x 27.9 cm), with an image no larger than 3.5 inches by 3.5 inches (8 cm by 8 cm).
Applicant’s Name: Pinstripes, Inc.
Applicant’s Address: 100 Main Street, Any Town,
MO 12345
Goods and Services: Clothing, namely baseball caps and t-
The Mark:
PINSTRIPES
What if I want to show color on the drawing?
If you want to register a mark in color, you must submit a color drawing. 37 C.F.R. 2.52(b)(1). You must also submit: (1) a color claim naming the colors that are a feature of the mark; and (2) a separate statement describing where the color(s) appear on the mark. See TMEP §807.07 for further information.
You must list the specific goods/services for which registration is sought, regardless of the basis for the application. For information on "basis," see BASIS FOR FILING.
· If based on use in commerce, you must already be using the mark in commerce on or in connection with all the goods and/or services listed.
· If based on intent to use, on a foreign application or registration, or on a request for extension of protection of an international registration to the United States pursuant to section 66(a) of the Trademark Act, you must have a bona fide intention to use the mark in commerce on or in connection with all the listed goods and/or services.
When specifying the goods and/or services, use clear, concise terms, i.e., common commercial names and language that the general public easily understands. If you fail to list any recognizable goods or services, we will return your application and refund your fee.
Please note that the terms in the classification listing of goods and services in the "International Schedule of Classes of Goods and Services" are generally too broad and should not be used alone as an identification. Also, an international class number alone is never an acceptable listing. For a listing of acceptable wording for goods and services, see the USPTO’s Acceptable Identification of Goods and Services Manual, at http://tess2.uspto.gov/netahtml/tidm.html.
Can I change the goods and/or services after filing my application?
You can clarify or limit the goods and/or services. However, you may not expand or broaden the identification of goods and/or services after filing the application.
For current fees for trademark applications and amendments, please see the current
USPTO Fee Schedule. Fee increases, when necessary, usually take effect on October
1 of any given year. Please call 1-
For a listing of classes, see International Schedule of Classes of Goods and Services.
The filing fee must be paid in United States currency. The USPTO accepts payment by credit card, check or money order, or through an existing USPTO deposit account. Personal, business and certified checks are accepted and should be made payable to "Director of the USPTO." A form for authorizing charges to a credit card can be accessed through all TEAS forms. If you are filing on paper, you can download the form for authorizing credit card charges from the USPTO website at http://www.uspto.gov/web/forms/2038.pdf. NOTE: If the application meets the minimum filing requirements and is given a filing date, the application filing fee cannot be refunded.
The application should include your "basis" for filing. Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future.
What is "use in commerce"?
For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:
For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.
If you have already started using the mark in commerce, you may file based on that use. A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.
What is "intent to use"?
If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce. You do not have to use the mark before you file your application.
An "intent to use" application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement.
NOTE: If you file based on intent to use, you must begin actual use of the mark in commerce before the USPTO will register the mark; that is, after filing an application based on "intent to use," you must later file another form ("Allegation of Use") to establish that use has begun. See "Additional Requirements for ‘Intent to Use’ Applications" for more information.
Is there any other possible filing basis?
Yes. Although not as common, you may base your application on international agreements. Under certain international agreements, if you qualify, you may file in the U.S. based on a foreign application or on a registration in your country of origin. See TMEP Chapter 1000.
Also, section 66(a) of the Trademark Act permits the holder of an international registration to file a request for extension of protection of the international registration to the United States under the Madrid Protocol. See TMEP Chapter 1900 at http://tess2.uspto.gov/tmdb/tmep/1900.htm for further information about the Madrid Protocol.
What is a "specimen" of use?
A specimen is an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services. This is not the same as the drawing of the mark, which merely represents what you are claiming as the mark.
What is a proper specimen for use of a mark on goods (products)?
Normally, a specimen for a mark used on goods shows the mark on the actual goods or packaging for the goods. You may submit a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods. Do not submit the actual product.
Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards generally are NOT acceptable specimens for goods.
What is a proper specimen for use of a mark with services?
A specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e., not just a display of the mark itself. For example, if the mark sought to be registered is "XYZ," a business card that only shows the mark "XYZ" would not be acceptable. A business card that states "XYZ REAL ESTATE" would be acceptable.
How do I file the specimen?
If filing electronically, you must attach an image of your specimen in .jpg format. In order to show the context in which the mark is used, the image should include as much of the label or advertisement as possible.
If filing a paper application, the specimen submitted with the application must be flat and no larger than 8½ by 11 inches. If you submit a larger specimen, the USPTO will create a facsimile of the specimen, insert it in the application file wrapper, and destroy the original submission. However, specimens consisting of videotapes, audiotapes, CDs or computer diskettes are acceptable for marks, such as sound marks, that cannot be used any other way.
When do I file the specimen?
· For an application based on "use": If you are using the mark in commerce and you file based on that use, you should submit one specimen for each class of goods/services listed in the original application.
· For an application based on "intent to use": You must submit one specimen for each class of goods/services when filing the "Allegation of Use." See section "Additional Requirements for ‘Intent to Use’ Applications".
· For an application based solely on a foreign application or registration: No specimen is required.
Who can sign the application?
A person who is properly authorized to sign a verification on behalf of the applicant is:
· a person with legal authority to bind the applicant; or
· a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or
· an attorney as defined in 37 C.F.R. §10.1(c) who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.
How do I sign a TEAS application?
In a TEAS application, you do not apply a conventional signature. Instead, you enter
a "symbol" that you have adopted as a signature. The USPTO will accept any combination
of letters, numbers, spaces and/or punctuation marks placed between two forward slash
("/") symbols. Examples of acceptable signatures for TEAS applications include /john
doe/, /drl/, and /544-
What happens after I file my application?
LEGAL AND PROCEDURAL REVIEW OF APPLICATION
After the USPTO determines that you have met the minimum filing requirements, the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes and includes all required fees. Federal registration of trademarks is governed by the Trademark Act of 1946, 15 U.S.C. §1051 et seq., and the Trademark Rules of Practice, 37 C.F.R. Part 2.
A complete examination includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.
If the examining attorney decides that a mark should not be registered, the examining
attorney will issue a letter (Office action) explaining any substantive reasons for
refusal, and any technical or procedural deficiencies in the application. If only
minor corrections are required, the examining attorney may contact the applicant
by telephone or e-
If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO.
Does the examining attorney search for conflicting marks?
Yes. After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:
· the similarity of the marks; and
· the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.
If a conflict exists between your mark and a registered mark, the examining attorney
will refuse registration on the ground of likelihood of confusion. If a conflict
exists between your mark and a mark in a pending application that was filed before
your application, the examining attorney will notify you of the potential conflict.
If the earlier-
Can I search for conflicting marks before filing?
Yes. You should search the USPTO records before filing your application to determine
if any party is already claiming rights in a particular mark. You may conduct a search
on-
Additionally, registered and pending trademarks may be searched at a Patent and Trademark Depository Library (PTDL). PTDLs are located throughout the U.S. See PTDL for a listing of their locations, or http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html. Private trademark search firms will conduct a search for a fee. A listing of search firms can be found in the Yellow Pages of local phone directories or through an Internet search. The USPTO cannot assist you in selecting a search firm.
You can check the status of any pending application or registration through the Trademark
Application and Registration Retrieval (TARR) database, available on-
Are there other reasons the examining attorney might refuse my mark?
Yes. In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:
· primarily merely descriptive or deceptively misdescriptive of the goods/services;
· primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services;
· primarily merely a surname; or
· ornamental.
This is not a complete list of all possible grounds of refusal. See Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP), available at http://tess2.uspto.gov/tmdb/tmep/, for a complete discussion of the grounds for refusal of registration of a mark.
If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.
The USPTO will send a NOTICE OF PUBLICATION to the applicant stating the date of
publication. Any party who believes it may be damaged by registration of the mark
has thirty (30) days from the publication date to file either an opposition to registration
or a request to extend the time to oppose. An opposition is similar to a proceeding
in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO
administrative tribunal. If no opposition is filed or if the opposition is unsuccessful,
the application enters the next stage of the registration process. A Certificate
of Registration will issue for applications based on use, or a Notice of Allowance
will issue for intent-
CERTIFICATE OF REGISTRATION OR NOTICE OF ALLOWANCE
If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published.
If the mark is published based upon the applicant's bona fide intention to use the mark in commerce, the USPTO will issue a NOTICE OF ALLOWANCE about twelve (12) weeks after the date the mark was published, if no party files either an opposition or request to extend the time to oppose. The applicant then has six (6) months from the date of the NOTICE OF ALLOWANCE to either:
· use the mark in commerce and submit a STATEMENT OF USE; or
· request a six-
Both forms are available at http://www.uspto.gov/teas/index.html. See Additional Requirements for 'Intent to Use' Applications. If the STATEMENT OF USE is filed and approved, the USPTO will issue the registration certificate.
Additional requirements for "intent to use" applications
Before the USPTO will register a mark that is based upon a bona fide intention to use the mark in commerce, the owner must:
· use the mark in commerce; and
· file an Allegation of Use.
What is an Allegation of Use?
An Allegation of Use is a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant (see signature) attesting to use of the mark in commerce. With the Allegation of Use, the owner must submit:
· a filing fee of $100 per class of goods/services; and
· one specimen showing use of the mark in commerce for each class of goods/services.
A form for filing the allegation of use is available at http://www.uspto.gov/teas/index.html.
When do I file an Allegation of Use?
You may file the Allegation of Use only
· on or before the day the examining attorney approves the mark for publication in the Official Gazette (an Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use); or
· on or after the day the USPTO issues the Notice of Allowance (an Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use).
The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed. If you file an Allegation of Use between the period after the mark is approved for publication but before the Notice of Allowance is issued, the USPTO will return it.
Is there a deadline for filing the Statement of Use after the Notice of Allowance issues?
Yes. Once the USPTO issues the Notice of Allowance, you have six (6) months to file
the Statement of Use. The six-
What is a Request for an Extension of Time to file a Statement of Use?
An Extension Request is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner (see signature), stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee of $150 per class of goods/services must accompany the Extension Request. The form for filing the Extension Request is available at http://www.uspto.gov/teas/index.html.
The Extension Request, if granted, gives the owner an additional six (6) months to either:
· use the mark in commerce and file a Statement of Use; or
· file another Extension Request.
You may continue to file Extension Requests every six (6) months. However, you must
use the mark and file a Statement of Use within three (3) years of the date the Notice
of Allowance issues. The USPTO will not register a mark if, after thirty-
Maintaining a federal trademark registration
Rights in a federally-
· Affidavits of Continued Use or Excusable Nonuse under 15 U.S.C. §1058; and
· Applications for Renewal under 15 U.S.C. §1059.
Forms for filing these documents are available at http://www.uspto.gov/teas/. For
further information on maintaining a federal trademark registration, please contact
the Post Registration Division at (571) 272-