What is a trademark?
A trademark is something used by a manufacturer or merchant to identify the
source of goods or services in commerce. Trademarks originally derived from the
"hallmarks" which the Guild Halls of early metalsmiths stamped into
their work to indicate who had made them, and attest to the purity of the metal.
Today, nearly anything that can distinguish your goods or services from your
competitors' can be considered a trademark. ("Hallmark" itself is a
trademark for greeting cards made by Hallmark Cards, although in that mark "Hall" had
nothing to do with Guild Halls - "Hall" was the
name of the founder of the company).
Strictly speaking, a trademark used in connection with services is called a
"Service Mark", and there are also special-purpose marks called
"Collective Marks" (such as "IGA" for members of the
Independent Grocers Alliance) and "Certification Marks" (the
"Good Housekeeping Seal of Approval" or the Underwriters Labs mark).
They all work in more or less the same way, so for the purposes of this discussion, we'll
just call all such marks "trademarks". You can find more detailed
discussions of these special marks below.
Hallmark logo is a registered trademark of Hallmark Cards, Incorporated -
IGA logo is a registered trademark of IGA, Inc.
What kinds of things can be a trademark?
Pretty much anything which can serve to distinguish your product or service
- A word or name: "Exxon" for petroleum products, "Century
21" for real estate services.
- A phrase or slogan: "I'm lovin' it" for fast food
"Where do you want to go today?" for software (Microsoft).
- A way of presenting a word: the "stripey" IBM logo, or Walt
Disney's signature on films.
- A symbol or drawing ("logo"): The Rock of Gibraltar for
Prudential Insurance, or the alligator (crocodile?) on Izod shirts.
- A character: Mr. Peanut (Kraft), or the Exxon tiger (on top
of this page!)
- A shape: the famous Coca-Cola bottle.
- A distinctive building design: KFC's striped roof, McDonald's Golden
- Details of packaging ("Trade Dress"): The L'eggs egg for
pantyhose; the red-and-white label on Campbell's Soup cans.
- In rare instances, other things, such as:
- A sound: Tarzan's yell
or the MGM lion's roar
- A spoken phrase: Aamco's "Double A" beep beep "M
C O" or the Jolly Green Giant's "Ho
- A sequence of notes: the NBC chimes (hear them: MP3
- A piece of music: the Harlem Globetrotter's "Sweet Georgia
Brown" or the Lone Ranger "William Tell Overture" theme
(For an interesting page on sound marks, with examples of all of
these and more, see the USPTO
- A color: pink for Fiberglas® insulation; or a combination of
Green body and yellow wheels, for
John Deere tractors.
- A fragrance: a floral scent applied to Clarke thread
- A light display: "pre-programmed rotating sequence of a plurality of high intensity columns
of light projected into the sky to locate a source at the base
thereof" for Ballantyne of Omaha
How do I choose a trademark?
There are lots of factors involved in choosing a trademark. Most important,
pick a distinctive trademark which will set a tone for your product or service,
set it apart from others, and make customers want to buy it. The mark needn't be
descriptive - in fact, it's better if it isn't. Trademark professionals call
this the "strength" of a mark - you want a mark which is as strong as
you can make it.
There is a spectrum of types of marks, ranging from very
strong to very weak:
Not a mark
You will want to review our "Trademark Do's and
Don'ts" page for more details.
How can I tell if I can use a mark?
Before you begin to use a mark, choose it carefully and be sure you're not
infringing on someone else's mark. With today's computerized databases, a
trademark search is relatively inexpensive and fast, and cheap insurance against
having to change your mark or defend a lawsuit later. We recommend that you
start by doing a preliminary search yourself, and
then, when you've settled on a mark you think is OK, have us do a professional
search. See our Trademark
Budget Estimator for details.
The test of a mark is "likelihood of confusion" - that is, "is
the proposed mark so close to an existing mark that it is likely to confuse the
intended consumer as to the source of the goods?" If there is any question,
play it safe and try another mark (or consider contacting the prior user and
getting his OK, if you really want to use a mark which might be a problem).
I've formed my corporation, and the state
corporation bureau approved the name.
Does this mean I can use the name as a trademark?
No. You may have registered your corporation (or LLC, LLP, etc.)
with your state's corporation bureau (Secretary of State, in NY), but that does
not mean that you are clear to use the name as a trademark. The state has only
reviewed your proposed company name to make sure that it is not identical with
any other company name in the state. They just want to be sure there is some
small difference which would allow them to distinguish your name from others for
purposes of billing you for your corporate tax, or allowing someone who wants to
sue you to serve papers on the proper company. For example, New York has a
"Premier Alliance Corp." in Great Neck, Long Island, and also
"Premier Alliance Consultants, LLC" in Brooklyn.
From the trademark point of view, there is clearly a likelihood of confusion
between these names, but for corporation purposes, they're just fine.
Also, most states will search corporate names only within their
own state and won't search Federal trademark registrations at all, so there
could well be a "Premier Alliance Corp." in each of the other 49
states, and a company in Nampa, Idaho has a Federal registration for the mark "Premier Alliance" for
financial planning services.
Now that I've chosen a mark, how do I
trademark my product name?
You don't - the word "trademark" is a noun, not a verb. That is,
it's something you have, not something you do. You create your trademark rights
as soon as you begin using the mark in commerce, as long as you are using it
correctly, and they continue for as long as you continue to use the mark in
commerce. The longer you use your mark, and the more widely you use it, the
stronger your trademark rights become.
Your trademark will give you the ability to stop others from using similar
marks in the same market and on similar goods or services, if they adopted the
mark after you did and with notice of your use.
In order to keep your rights, though, you must protect them. If you allow
others to adopt the same marks and use them themselves, your mark will be made
How do I protect my trademark?
Let the world know your mark is your mark - if someone does not realize that
you are claiming trademark rights in a mark, they may be able to adopt it
innocently and keep on using it even after you discover their use.
By the way, our owl logo and tag line "Our knowledge protects
are registered trademarks of Brown & Michaels, PC
One way to ensure that everyone knows about your mark is to register it.
That's called "constructive notice", and means that once you're
registered no one can claim that they didn't know you were using the mark if
they began using it after your registration. You may apply to register the mark
with the Patent and Trademark office as soon as you have begun to use the mark
in interstate commerce or foreign, or if you have the intention to do so. (See
"Why should I register my mark?", below, for the benefits of
Whether or not the mark is registered, you should be sure to give proper
notice that you intend to reserve your trademark rights. You do this by placing
a "tm" or "®" (the r-in-a-circle mark) next to the
trademark when you use it in connection with the goods. Don't use r-in-a-circle "®"
unless the trademark is registered with the U.S. Patent and Trademark Office.
Once you've established your rights to use your trademark, you must be sure
to enforce it. That is, if you become aware that someone else is using your mark
you must inform them of your rights and demand that they stop. Otherwise, they
may wind up acquiring rights to the mark, too, which might in time come to supersede
yours. Coca-cola has "truth squads" who travel around the
country ordering "coke" at restaurants, and serving warnings on those
who serve them Pepsi!
Why should I register my mark?
Registration gives you these advantages:
- The registration becomes "constructive notice" of your ownership
of the mark. That is, once your mark is registered on the Principal
Register, anyone anywhere in the United States who starts to use the mark is
presumed to know about your use. This can be important, since in the absence
of a Federal registration, if someone in another state starts using the mark
without knowledge of your use, they will have the right to continue using
it, and may also be able to stop you from expanding your use.
- You may use the r-in-a-circle ® notice.
- You may sue in Federal Court.
- Your registration can be used in disputes over internet domain names to
defeat a domain name owner who does not have a registration, at least
according to current rules.
- Statutory damages and treble damages are available, the latter in cases of
- After five years of registration on the Principal Register, you can have
the mark declared "incontestable", which means that no one can
later stop you from using it, even if you adopted after they did.
- If your mark is registered on the Principal Register, you can file it with
the US Customs and Border Protection Agency, which can help in stopping
importation of infringing goods.
If I register my mark in color or in a
specific type font,
can someone else register or use the mark in a different color or font?
The standard for both infringement and registration is "likelihood of
confusion". So, if you register the logo in black and white, without claim
to color, no one can register or use a confusingly similar logo in any color (or
no color) without infringing (and the PTO will not register such a mark).
not quite so clear if you DO claim color, since such a claim means that you
consider the colors to be an essential part of the mark. For an example of where
color matters, think of the Mobil sign, where the "o" is red and the
"M-bil" is blue. They registered both as a word mark and in color,
because they want to preclude others from using "Mebil" (word mark)
and also "Force" with the "o" in red and the "F-rce"
For logos (design marks), the
answer would depend on the logo, really - if your logo was a simple cross, and
you register it in sky blue with a claim to the color, you wouldn't
have much of a claim against other crosses in other colors (like, for instance,
the Red Cross). There are just too many similar logos for you to claim any
exclusivity. On the other hand, if your logo were really unique (Mobil's Pegasus
flying horse, say) and you register it with a claim to a color, the protection
would probably extend to the same unique logo (and maybe other flying horses) in
Bottom line - unless the color is essential, don't claim it.
to type fonts ("stylized marks"), the same standard applies.
Think of the striped "IBM" logo for example - IBM wants to protect the
look of the mark (i.e. NEC should not use NEC in a similar striped fashion, even
if the word NEC is not confusingly similar to the word IBM). On the other hand,
they also want to protect "IBM" as a word. Many companies which have
stylized marks also register as word marks ("standard characters"), to
cover both situations.
IBM logo is a trademark of International Business Machines
"Mobil" and the flying horse logo are trademarks of Exxon-Mobil
Corporation. For an interesting history of these marks (and the Exxon tiger, too) see the
If I register my mark in one class, can
someone else register the mark in another class?
The class is really just for the convenience of the USPTO.
"Likelihood of Confusion" depends on the goods/services covered by the
mark more than the class number. If you register for fan belts for farm machines
in class 007, that probably would be confused with the same mark for fan belts
for land vehicles in class 012 (but probably not with belts for blue jeans in
class 025). On the other hand, all scientific and
technical goods are in class 009, so you could easily have the same mark
registered to different people for floppy disks and x-ray machines, which both
fall in that class.
How long is my trademark valid?
Your rights in a trademark continue as long as you use the mark.
Federal registrations are valid for ten years, but they may be renewed over
and over, so long as you are still using the mark in interstate commerce. The
oldest continuously registered mark dates back to the 1870's. While your
attorney may be able to remind you to file renewals, you should be sure to keep
track of the renewal dates yourself, too, so that you will not have your
registration lapse for failure to file the appropriate forms.
Note that during the first ten-year term (only) you'll need to file a
"section 8 affidavit" during the fifth year of registration,
indicating that you're still using the mark, to keep the registration alive.
You'll also need to file a "section 8 affidavit" with each renewal
application over the life of the registration. As with renewals, be sure to keep
track of the dates these forms are due, and be sure they are filed on time, or
your registration will lapse.
What does registration cost?
The cost of registration depends on the type(s) of goods or services on which
you are using the mark, and whether or not the Patent and Trademark Office has
any problems with the application. You should expect to spend $1000 or more to
register a single mark in a single class of goods or services.
For each additional class of goods or services, there's an additional fee to
the Trademark Office. For example, if you're using the mark on t-shirts (class
25) and mugs (class 21), or perhaps for custom printing services for t-shirts
(class 42), each class of goods requires a separate filing fee. The same is true
when you renew the registration, etc.
We have a detailed trademark costs estimator on
What information do I need to provide for an application to
register a trademark?
For us to prepare an application for you, you will need to provide the
Information on the Mark
- The mark you want registered.
- If the mark is anything other than a word or words in English which can
be registered in typed form without any special typography, then we will
need a clear drawing of the mark. This drawing will become the image on the
printed registration, when it issues, so it is important that it be as clear
and crisp as possible. We can accept the drawing in printed form, suitable for scanning, or
(better yet) in electronic form as a GIF, JPG or TIFF image file.
If you use the mark on a web site, give us the URL and we can download an
image from the site. Note that a drawing image is required for word marks only if they must be in a specific type font or
format, or if they use any special or non-English characters ("stylized").
- If the drawing is in color, we need to know whether or not you
actually want to register the colors - in most cases it's better
to file the application without reference to color, in case you will be
using the mark in black-and-white or other colors at some point.
- If color is a
necessary part of the mark (think of the "Mobil" logo, with
the blue letters and red "o"), then we need a verbal description of
the colors as used in the mark, and how they are used. Do not assume we will recognize
"turquoise" or "teal", or realize that only part of
a letter is aquamarine, and the rest is royal blue - if something needs to be sky
blue or taupe shading to burnt umber, say so. The drawing must also
be in color, and must match the verbal description.
- If the mark is not in English, we will need a translation of the mark
- If the mark is not rendered in the standard western (Latin) alphabet
(that is, it is in the Cyrillic or Arabic or some other alphabet, or
consists of Chinese or Japanese characters), we will need a
transliteration of the mark - that is, what does it sound like when it
- If the mark is something which can't be represented in a simple
drawing (a sound, a color (as such), etc.) we need a description of what
the mark is. We may need other material as well, for example a recording
of a sound - we will advise you accordingly once we know what the mark
- If you own previous registrations for the same (or very similar) mark,
please give us the registration number(s).
Information on the Mark Owner
- The name of the trademark owner.
- What kind of entity is the trademark owner? (i.e., a Pennsylvania
Corporation, New York Partnership, individual United States citizen, Spanish
Limited Liability Company).
Note: If the owner is an individual from a country which does not always
follow the US standard of given name first, followed by family name, please
avoid confusion by either capitalizing the family name ("CHOU
Hong-Sin" or "Hong-Sin CHOU") or specifically indicating
which is the family name ("Chou Hong-Sin - Chou is the family
- The address of the trademark owner.
Note that neither we nor the USPTO are familiar with the particular
addressing conventions of every country.
- In the US, the standard address is:
## Any Street - XXX
City, State ZIP
where "##" is the house number, XXX is an apartment or
office number or the like, and ZIP is the postal code.
- If the address is a named building, then it would appear as:
XXX M & T Bank Building
## Any Street
City, State ZIP
- If your country uses any other standard, to avoid confusion please
indicate which parts of the address are Building name/number, Street
Address, City name, and which is a postal code. If part of the address
is a prefecture or state or other political entity, it would help to
label that as such, too ("Mie Prefecture").
- If the trademark owner is a foreign entity, and/or if the application is
to be based on a foreign application or registration, there are other
requirements - contact us for details.
Information on the Use of the Mark
- A description of the goods or services on which the mark is (or will be)
- The USPTO requires a very detailed list of
goods in applications - not just "clothing", but "t-shirts,
skirts, socks, men's jackets and dirndls". If you're filing an
"intent to use" application, you can list any item on which you
intend to use the mark - but if you are filing based on actual use in
commerce, you must make sure that you have used the mark on every
item on the list. Many applications and registrations have been declared
invalid for fraud because the owner was not selling some of the items on a
long list of goods.
- You can find a searchable list
of acceptable descriptions on the USPTO website. Any description you
find on that list will be accepted by the Trademark Examiner - but
remember that the most important thing is to describe your goods or
services accurately, not to find wording the Examiner will automatically
accept. If what you're selling or doing does not appear to be listed, come
up with your own accurate description rather than pick something close,
- Also, if you provide services, you need to describe them as services.
That is, suppose your business is embroidering custom t-shirts for others,
who then sell the t-shirts under their own brands or in their own stores.
In such a case, the consumer of your services is the company who hires you
to do the embroidery, not the person who wears the shirt, and your
description should be "embroidery of t-shirts" in services class
040, not "t-shirts" in goods class 025 (clothing). Of
course, if you sell the t-shirts directly to consumers through a catalog
or on-line, then a two-class registration in both classes might be
- Services must be provided for others - if you do your own
advertising for your own business, that does not constitute providing
advertising services. Similarly, if you make up mugs with the name and
logo of your car dealership to use in the waiting room, that's just
incidental to your business of selling cars - it does not mean you can
register your mark for mugs in class 021.
- We will need to tell the USPTO the date the mark was first used in
connection with the goods/services, and the date the mark was first used in
interstate or international commerce (if the application is based on use -
otherwise let us know the application will be filed on an "intent to
- If the application is based upon actual use, you will need to supply a
"specimen" of the mark as actually used on the goods or services. If you have a web page with clear pictures of the
goods, you can just send us the URL and we can get the specimen from there.
Note that the specimen is not the same as the drawing. For the
drawing, we need a good clear image of the mark. For the specimen, we need a
picture of the mark as used on the goods or services.
- For goods,
this means either actual labels, or photographs of the goods showing the
mark physically applied to the product - advertising material is not
acceptable, unless it contains a photograph of the goods showing the mark.
For services, advertising material is acceptable, or business cards, flyers,
program brochures or catalog pages, etc.
What are some trademarks you've registered?
We have a web page showing a sample of some of the
trademarks and service marks we've registered for clients.
What about those special types of trademarks
- Service Marks distinguish one person's services from another.
Normally, if you just sell goods, the act of selling the goods does not
require a service mark. You might have a service mark and a trademark for the
same business, though. For example, if you're using your mark on clothing sold
in many stores, and also on a chain of clothing stores selling various brands
of clothing, you
might have a trademark for the name or logo on the clothing, and a service
mark for "retail clothing services" (for example, "Old
Navy"). If you sell pies in your chain
of restaurants, you might have a service mark for "restaurant
services" and a trademark for "pies". There are some slight
differences in how you apply for service mark registrations, as opposed to
trademarks, but basically the two function and are treated the same.
- Collective Marks are used to indicate membership in an organization,
for example the "IGA" mark used on supermarkets and grocery stores
indicates membership in the Independent Grocer's Alliance. This differs from
service marks for the same services (say, "Piggly Wiggly" or "Tops"
for "retail grocery services") in that the mark is owned by the
Alliance, but the stores are owned by individuals. "FTD" (and the
winged Mercury logo at left) is another example of a collective mark, used by
the individual member stores of the Florists' Transworld Delivery Association.
The union label in clothing or printed goods is somewhat similar to this use.
- Collective Membership Marks indicate membership in an organized group.
For example, the letters "AAA" inside an oval indicates membership
with the American Automobile Association, or the diamond logo of the ARRL at
right indicates membership in the American Radio Relay League.
- Certification Marks certify that goods or services of others
meet certain standards established by the owner. Note that you cannot apply a
certification mark to your own goods or services, you certify the goods or
services of others, and they apply the mark to their goods or services. You
will most commonly see certification marks used to certify:
- Geographic Origin: goods from a specific geographic region, such as
"Harris Tweed" cloth, from the Isle of Harris in Scotland.
Testing Standards: goods or services are tested in relation to the
quality, materials, or mode of manufacture. The "UL" mark
indicating Underwriters Laboratory approval, the "Woolmark" logo,
or the Good Housekeeping Seal of Approval are examples of certification
Woolmark logo at right is a registered mark of Woolmark Americas,
- Compatibility with a Standard: The Windows logo, which Microsoft
allows software which meets certain standards of compatibility with the Windows
operating system to display, is an example of this type of certification mark. The
quality of the software isn't necessarily at issue, just that it works with
Does my US registration protect my trademark
A US trademark registration does not have any direct effect in other
countries. However, under the provisions of various treaties a US registration
(or even an application to register) may be used as the basis for filing
applications to register your mark in other countries. The variations from
country to country are too complex to detail here. If you are interested in
pursuing trademark registrations in other countries, contact
Brown and Michaels for details.
What is the "Madrid Protocol"?
The "Madrid Protocol" is a system coordinated by the World
Intellectual Property Organization (WIPO) whereby a trademark owner can protect
a mark in many different countries by filing one application, based on a
national application to register the mark in the owner's country. The
application is filed in one receiving office in one language, without the need
to separately file in each country. The application fees depend on which
countries are selected and, since they are stated in Swiss Francs, will change
with the exchange rate.
The Madrid Protocol was established in 1996, but initially this system
not available to US nationals. The US signed the Protocol in 2002, and
effective November 2, 2003, it became possible to file Madrid Protocol
applications through the USPTO.
More information on the Madrid Protocol is available on another
page on this website.
I just received a mailing from the US
Trademark Registry asking for money... what do I have to do?
There has been a plague of companies lately sending out what
look like "notices" or "invoices" regarding pending
trademark applications. These companies all have names which sound like
government agencies - "US Trademark Registry" or "United States
Trademark Registration Office" or "Register of
International Patents and Trademarks" or "something like that, and they
usually have official-looking graphics (sometimes actual copies of government
agency seals). They usually offer to list your trademark in some registry or
catalog or database, or to file it with Customs and Border Protection, or to set
up a monitoring service with a fee marked "NOW DUE". They are supposed
to warn that the "notice" is really an invoice offering you a service
you don't need, but if they do that at all it's usually buried deep in
low-contrast small-type boilerplate. These services are skirting the edge of fraud - and
sometimes are well over the line. The latest is a "USTM" (ustm.us.com)
which sends notices saying (incorrectly) that the registration was canceled, and
someone else has tried to register it (untrue).
There is only one US
government agency which deals with trademarks - The United States Patent and
Trademark Office (USPTO). If you used an attorney to file an application to
register a trademark, the USPTO will never communicate directly with you. If
you filed your own application, you will receive communications from the USPTO, but
only by e-mail from an address at the uspto.gov domain or by postal mail if you
did not file with an e-mail address for correspondence. Under no circumstances
will they request any fees for listing your trademark in any database or
Here's what the USPTO has to say about these
WARNING: Non-USPTO Solicitations That May Resemble Official
Be aware that private companies not associated with the United
States Patent and Trademark Office (USPTO) often use trademark application and
registration information from the USPTO’s databases to mail or e-mail
trademark-related solicitations. Trademark applicants and registrants
continue to submit a significant number of inquiries and complaints to the
USPTO about such solicitations, which may include offers: (1) for legal
services; (2) for trademark monitoring services; (3) to record trademarks with
U.S. Customs and Border Protection; and (4) to “register” trademarks in
the company’s own private registry.
These companies may use names that resemble the USPTO name, including, for
example, the terms "United States" or “U.S.” Increasingly,
some of the more unscrupulous companies attempt to make their solicitations
mimic the look of official government documents rather than the look of a
typical commercial or legal solicitation by emphasizing official government
data like the USPTO application serial number, the registration number, the
International Class(es), filing dates, and other information that is publicly
available from USPTO records. Many refer to other government agencies
and sections of the U.S. Code. Most require “fees” to be paid.
Some applicants and registrants have reported paying fees to these private
companies, mistakenly thinking that they were paying required fees to the
USPTO. So, be sure to read trademark-related communications carefully
before making a decision about whether to respond. All official
correspondence will be from the “United States Patent and Trademark
Office” in Alexandria, VA, and if by e-mail, specifically from the domain
If you receive a trademark-related solicitation that you believe is
deceptive, you may file an on-line consumer complaint with the Federal Trade
Commission (“FTC”), at www.FTC.gov.
Although the FTC does not resolve individual consumer complaints, it may
institute, as the nation’s consumer protection agency, investigations and
prosecutions based on widespread complaints about particular companies or
business practices. If you wish to contact the USPTO regarding such
solicitations, please e-mail TMFeedback@uspto.gov.
When notifying us about or forwarding a misleading communication, please also
specify whether the recipient thought it was an official USPTO communication
and whether fees were mistakenly paid.
The following are examples of just some of the non-USPTO
solicitations about which we have received complaints within the past
several months. None of these are official U.S.
government or international governmental notices. Please click on the
name below if you wish to see an image of that entity’s solicitation.
You can add "Register of Protected Trademarks" to that
If you get any mailing you do not understand from any
official-sounding "agency" other than the USPTO, do not send any
money to them! If it's offering a listing in a catalog or database or
"registry" for a fee, discard it. Contact the attorney who is handling
the trademark for you and ask about the notice, if you are unsure what it
How can I take advantage of the reduced
"TEAS RF" and "TEAS-Plus" filing fees?
The normal USPTO electronic filing fee for applications filed
through the Trademark Electronic Application System (TEAS), presently $325, is
discounted an additional $50 per class (TEAS Reduced Fee) or $100
(TEAS-Plus) if the application is electroincally filed and if it meets certain
These requirements are as follows:
To qualify for the TEAS-Plus Discount
The application must be
filed electronically through TEAS.
The goods and services must be selected from a list of
acceptable identifications of goods and services
Must contain at least the following information at the time of
applicant’s name and address;
The applicant’s legal entity;
citizenship of an individual applicant, or the state or country of
incorporation or organization of a juristic applicant;
If the applicant is a
partnership, the names and citizenship of the applicant’s general
A name and address for correspondence;
An e-mail address for
correspondence, and an authorization for the Office to send correspondence
concerning the application to the applicant or applicant’s attorney by
Must have one or more bases for filing that satisfy all
the requirements for that basis (i.e. 1(a) actual use, 1(b) intent to use,
44(d) foreign application or 44(e) foreign registration);
The identification of goods and/or services must be
selected from from the Office’s Acceptable
Identification of Goods and Services Manual. No changes or additions are
permitted, except if the listing in the manual requires completion. For
example, if the listing is "Parts for Motor Vehicles, namely...",
you can fill in "brake drums and brake shoes", but you cannot add
"and watermelons, cantaloupes and mangos."
The goods or services must be correctly classified
(note: since the description must be taken from the Manual, this will be
automatically filled in when you choose the goods)
In an application based on foreign application or
registration, the scope of the goods and/or services covered by the section
44 basis may not exceed the scope of the goods and/or services in the
foreign application or registration;
There must be a clear drawing of the mark. If the
applicant does not claim standard characters, the applicant must attach a
digitized image of the mark in .jpg format. If the mark includes color, the
drawing must show the mark in color;
If the mark includes color, there must be a statement
naming the color(s) and describing where the color(s) appears on the mark,
and a claim that the color(s) is a feature of the mark;
If the mark is not in standard characters, you need to
provide a description of the mark;
If the mark includes non-English wording, you must file
an English translation of that wording;
If the mark includes non-Latin characters, you need a
transliteration of those characters (what they sound like, in English
If the mark includes an individual’s name or
portrait, you need either (i) a statement that identifies the living
individual whose name or likeness the mark comprises and written consent of
the individual, or (ii) a statement that the name or portrait does not
identify a living individual
If the applicant owns one or more registrations for the
same mark, you must make a claim of ownership of the registration(s)
identified by the registration number(s)
TEAS-Plus status must be maintained throughout
prosecution of the application by doing all post-application filing
electronically and remaining within the TEAS-Plus requirements for descriptions,
etc., and a valid e-mail address must be maintained at all times for receipt of
communications from the USPTO.
If TEAS-Plus status is lost, a processing fee of $50 must be paid.
The following kinds of applications cannot use the
Applications for certification marks
Applications for collective marks or collective
Applications for registration on the Supplemental
which need to file something which cannot be filed through the TEAS system
(for example, if a video tape is required, or something which can only be
supplied in print form). Note that sound marks can be filed through
TEAS-Plus, using a WAV or MPG file (which must be filed in a special way).
We receive many requests to file applications to register marks for many
different kinds of goods. TEAS-Plus is really most suitable for applications
with only a few items on the list of goods, chosen from the USPTO's list. If
your application has more than four or five items in the list of goods, it takes
much longer to search and select the goods from the USPTO's list than it does to
simply type the descriptions. In that case, the small savings in USPTO fee will
be more than outweighed by the increase in cost for our time to use
It is also very important to realize that just because a description is
chosen from the "acceptable descriptions" list, that doesn't mean that
you should use it to save $100. That could cost you a whole lot more money
in the long term, because what matters isn't being acceptable but being accurate.
If you choose something from the list, the examiner will accept it as a
description. However, the specimen of use must show the actual goods or services
you are selling. If those goods or services are something other than what you
selected from the list, the Examining Attorney will reject your application
because the specimen does not show use on the listed goods or services. Because
you can't change the goods or services to change the scope of the application,
you would find yourself without the ability to overcome the rejection. Your only
recourse would be to file a complete new application.
Also, remember that's it's easy to check off items from the list of goods,
and they will be accepted - BUT if you choose something from the list of
acceptable descriptions because it's so very easy to check, you must actually
be selling those goods or services under the mark. If you are not actually
selling those goods or services (or don't have a bona fide intent to sell them,
in the case of an Intent to Use application), any registration you might could
be invalidated by an infringer on the grounds of "fraud on the trademark
To qualify for the TEAS Reduced Fee (TEAS-RF) Discount
The application must be
filed electronically through TEAS.
At time of filing, the application must have an e-mail address for
correspondence, and an authorization for the Office to send correspondence
concerning the application to the applicant or applicant’s attorney by
A valid e-mail address must be maintained at all times whle
the application is pending for receipt of communications from the
While the application is pending, the applicant must file
the following communications, if required, only electronically through TEAS:
Responses to office actions;
Requests to change correspondence address or owner's
Appointments or revocations of powers of attorney or
Amendments to allege use;
Statements of use or requests for extensions of time to
file statements of use; and
Requests to delete a section 1(b) (Intent to Use) basis.
If TEAS-RF status is lost, a processing fee of $50 must be
We expect that most of the applications we will file for our
clients will be filed as TEAS-RF applications, since we have followed these
procedures for many years.
You're not done yet! You should also look at our Trademark Do's
and Don'ts web page.
Back to Trademarks Page
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