USA Trademark Application
FILING A TRADEMARK APPLICATION IN THE UNITED STATES
In today’s commercial world, intellectual property is becoming increasingly important to register. It is portrayed as a term, phrase, or emblem that represents the delivery of goods and services in the United States trademark system. The Lanham Act governs trademark law in the United States.
When a business uses a name or logo in commerce, common law trademark rights are automatically collected and are enforceable in state courts. Patents, copyrights, and trademarks may be used to protect material possession in the legal system, allowing the owner to gain recognition or financial benefits from what they manufacture or produce. The information processing system aims to promote an environment where creativity and innovation can flourish by striking the right balance between innovators’ interests and the common good.
The US Patent and Trademark Office oversees trademark registration and management at the federal level in the United States (USPTO). Aside from that, each state maintains its native trademark registration for businesses that operate in a limited geographic area and do not require the additional protection provided by federal registration.
The Trademark Act of 1946, sometimes known as the Lanham Act, provides the legal foundation for a trademark in the United States.
Federal registration is based on several registration alternatives to provide the most straightforward protection for a variety of needs and circumstances. The Principal Register requires the highest level of achievement for its registration, as well as the best level of brand protection in the United States. Brands that fail to restrain for federal registration on Principal Register have some protection under the Supplemental Register. In some circumstances, marks that were previously admissible on the Supplement Register may eventually qualify for Principal Register.
A. What types of applications may be filed?
Traditional marks (word, design, and combination marks), as well as nontraditional and non-visual marks (color, shape/configuration, sound, aroma, flavor, touch, and motion marks), collective marks, and certification marks, are all accepted by the USPTO.
- Word Mark (“standard character” drawings): All of the letters and words in the mark are written in Latin characters, and all of the figures are written in Roman or Arabic numerals. There is no design element in the mark, which solely incorporates standard punctuation or diacritical signs. There are no styled letters or numerals.
- Design Mark (stylized wording and/or design): For mark photos, JPG format is suggested, with a file size of 5 MB or less. A scanned image must have a resolution of 300 to 350 dots per inch, a length and width of 250 to 944 pixels, and a resolution of 300 to 350 dots per inch.
- Color Mark: The applicant must show that he or she has earned individuality. Color marks are visual, so they should be portrayed in color drawings with (1) a color claim specifying the color(s) that are/are a feature of the mark and (2) a separate statement indicating where the color(s) appear(s) and how it/they are employed in the mark. In the color claim and location statement, the generic name(s) of the color(s) should be used.
- Shape (Three-Dimensional) Mark (the configuration, shape, or design of a product or product packaging): The applicant must include a description of the mark that indicates that it is three-dimensional, as well as a sketch that depicts a single three-dimensional reproduction of the mark.
- Sound Mark: The applicant must send an audio file in electronic format (.wav,.wmv,.wma,.mp3,.mpg, or.avi) that is no larger than 5 MB. The applicant must describe the sound in great detail, including any words or lyrics.
- Scent or Flavor Mark: The applicant must provide sufficient evidence of acquired distinctiveness, a detailed written description of the scent or flavor, and a sample of the perfume or flavor that matches the requisite description.
- Touch Mark: The mark must be graphically represented.
- Motion Mark: If the mark contains motion (i.e., a short-duration repeated motion), the applicant may submit a drawing depicting either a single point in the movement or up to five freeze frames depicting various points in the movement, whichever better expresses the mark’s commercial impression. A specimen in .wav, .wmv, .wma, .mp3, .mpg, or.avi format can also be attached to the TEAS form. Audio files should not be larger than 5 MB, and video files should not be larger than 30 MB. The motion must also be described in detail by the petitioner.
- Collective Membership Mark: Members of a cooperative, an association, or any other collective group or organization must use the symbol. A description of the nature of the membership organization, such as by type, purpose, or area of activity of the members, must be included in the application.
- Certification Mark: Any word, name, symbol, and/or device used by someone other than the owner to certify regional or another origin, material, mode of manufacture, quality, accuracy, or other characteristics of the goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
B. What is the basis for filing a trademark application?
If the applicant is using the mark in U.S. commerce at the time the application is filed, a use-based application may be filed. The Lanham Act, Section 1(a), is codified at 15 U.S.C. 1051(a).
If the applicant has a genuine intention to use the mark in the United States in the future, an intent-to-use application may be filed; but the mark will not be registered until the applicant shows usage. The Lanham Act, Section 1(b), 15 U.S.C. 1051(b)).
A foreign applicant who has a genuine intention to use the mark in commerce and has either applied to register or has registered the mark in the applicant’s country of origin may apply. 15 U.S.C. 1126, Section 44 of the Lanham Act.
The Madrid Protocol can be used to apply. An extension of protection from an International Registration with the World Intellectual Property Organization is used to file this sort of application (WIPO). It is not directly filed with the USPTO. 15 U.S.C. 1141f, Section 66 of the Lanham Act.
A filing basis can be claimed using any combination of Sections 1(a), 1(b), and 44.
C. What are the requirements to obtain a filing date?
- The name of the applicant.
- A name and address to which the USPTO should send correspondence.
- For design and other non-traditional marks, a clear drawing of the mark.
- A listing of the goods and/or services that are or will be sold or offered in connection with the mark.
- The filing fee for at least one class of goods or services.
D. What additional requirements must all applications meet to proceed to registration?
Information about the applicant:
- If the applicant is not an individual, the type of legal entity.
- Citizenship, or state or country of incorporation.
- The basis for filing.
- A statement that has been verified. A person having legal authority to bind the applicant, (2) a person with personal knowledge of the facts and actual or implicit authority to act on behalf of the applicant, and (3) an attorney with an actual or implied written or verbal power of attorney from the applicant may sign an application.
- A description of the mark for marks other than normal character word marks.
- A sketch of the mark desired to be registered for markings other than sound, scent, and other non-visual signs.
- An English translation or transliteration of any non-English terms in the mark, if appropriate.
- Any filing fees for extra classes that have not been paid.
- The USPTO encourages foreign applicants to designate a domestic representative to receive service of notices or proc
E. What additional requirements apply to use-based applications?
Before the mark may be registered, the applicant must include certain dates linked to the first use of the goods and/or services in the Trademark application. This is the first date that items bearing the mark were sold or transported, and this is the first day that services promoted under the mark were provided. Each class of goods and services must have two dates: I the date of first use anywhere, and (ii) the date of first use in interstate commerce, or between the US and another country. These dates will be the same for many candidates.
In addition, the applicant must submit a “specimen of use” demonstrating how the mark is used in commerce in connection with at least one item in each class of goods or services. Packaging, labels, or tags for the goods, as well as a display related to the items, are acceptable trademark specimens. Advertisements and promotional materials for the services, including pages from the applicant’s website, are examples of eligible service mark specimens.
F. What additional requirements apply to intent-to-use applications?
A bona fide intent to use the mark in commerce for all of the goods and/or services included in the application is required. The lack of a bona fide or real purpose to use the mark can be used as a defense in adversarial proceedings or to question the validity of the application or resulting registration. As a result, if documentation evidence of the applicant’s plans to use the mark is needed later, the applicant should maintain it.
Before the application can move forward to registration, the applicant must show that the mark is in use in interstate commerce in the United States and provide a specimen of use for each class of products or services. Depending on when it is filed, this document is referred to as an Amendment to Allege Use or a Statement of Use. Either document must (i) attest that the applicant or its licensee is using the mark in commerce; (ii) state the dates of first use for each class anywhere and in U.S. interstate commerce; (iii) include a specimen for each class, along with a description of the specimen; and (iv) include the required fee for each class.
G. What happens after the application is filed?
If the application is filed online, the USPTO will send an official filing receipt through email. If the application is filed on paper, the USPTO will send an official filing receipt via mail. Within 14 days of filing, a serial number will be assigned, and the application’s data should appear on the USPTO’s website. The application’s progress can be tracked at http://tsdr.uspto.gov/
An application is usually considered three to four months after it is filed. An Office Action will be issued if the USPTO examiner objects to the mark being registered on substantive grounds (such as a likelihood of confusion with other marks on the USPTO register) or raises a technical objection that must be addressed before the application can move forward (such as requiring amendments to the description of goods and/or services). Otherwise, the application would be abandoned if the applicant does not react to the Office Action within six months after its mailing date.
The application will be accepted for publishing in the Trademark Official Gazette once these issues are resolved, or if the examiner raises no objections, and a Notice of Publication will be issued with the publication date. Within 30 days of the publication date, any third party that feels the mark’s registration would do it harm may oppose the application or file a request for an extension of time to oppose.
The USPTO will issue a Certificate of Registration for use-based applications under Section 1(a) and applications under Sections 44 and 66, or a Notice of Allowance for intent-to-use applications under Section 1(a) if the application is not successfully contested (b). An applicant has 36 months from the Notice of Allowance date, known as the “allowance” period, to produce proof of use for intent-to-use petitions, otherwise, the application would be abandoned. The applicant must file either a Statement of Use or a request for an extension of time to file a Statement of Use every six months during the allotted period, indicating a continued bona fide purpose to use the mark for the products and/or services in the application. Once the USPTO accepts the Statement of Use, the Certificate of Registration will be issued.
H. How long does it usually take for an application to mature to registration?
If no substantive objections are raised, no oppositions are made, and all documents are filed online, registration usually takes 9 to 12 months to issue. If Office Actions are issued, relevant documentation (such as a foreign registration) is not yet available, the application is challenged, or documents are filed on paper, the process can take substantially longer.