What Must An 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-filed application must include the same information to receive a filing date. However, at the time of filing, an e-mail summary, including a serial number, is sent. No paper filing receipt is generated. If through later review the USPTO determines that the application did not include the required information, we will cancel the serial number and filing date, return the application, and refund the filing fee.
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.
NAME OF THE APPLICANT
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-to-date with the USPTO. This can be done through TEAS at http://www.uspto.gov/teas/index.html. If you send a notice of change of address on paper, please include at the top of the request a "heading" listing the applicant's name, mark, and the application serial number. Mail the change of address to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria , VA 22313-1451
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-submitted drawings. If you are preparing the drawing page yourself, use white, non-shiny paper that is 8½ inches wide by 11 inches long (21.59 cm by 27.94 cm). The mark can be no larger than 3.5 inches high by 3.5 inches wide (8 cm by 8 cm). The drawing page should include a "heading" with the following elements:
- 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-OK Software Development Group
Correspondence Address: 100 Main Street, Any Town, MO 12345
Goods and Services: Computer services, namely on-line magazine in the field of business management
Date of First Use: January 15, 1995
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.
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-shirts
Date of First Use: Intent-to-Use Application
Date of First Use in Commerce: Intent-to-Use Application
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.
GOODS AND/OR SERVICES
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.
APPLICATION FILING FEE
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 1-800-PT0-9199 for up-to-date fee information.
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.
BASIS FOR FILING
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 /544-4925/.
Speak to an Experienced Trademark Attorney Today
This article is intended to be helpful and informative. But even common legal matters can become complex and stressful. A qualified trademark lawyer can address your particular legal needs, explain the law, and represent you in court. Take the first step now and contact a local trademark attorney to discuss your specific legal situation.
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