Information on the Trademark Application Process
How Jay S. Horowitz, P.C. Can Help You Register Your Trademark

INFORMATION ON THE TRADEMARK APPLICATION PROCESS

1. What is a Trademark? A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services 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 these materials, the terms "trademark" and "mark" are used to refer to both trademarks and service marks.

2. Why You Should Register a Trademark. Companies obtain rights to the use of a name or mark (words or logo) merely by using the mark in commerce. These rights, known as common law rights, basically provide that the first user of a mark (in commerce) has priority over subsequent users of the same or a confusingly similar mark. The general law of trademarks is that the first user of a mark has priority over subsequent users. However, even though you have used a mark for a longer period of time than other companies, it may be difficult to enforce ownership of your mark by merely relying on common law rights.

The owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide. Having a federal registration of a mark can provide a significant advantage to a party involved in a court proceeding to determine the right to use a mark. For example, if you obtain a federally registered trademark, you would have the right to sue any party who uses the same or a confusingly similar mark which "infringes" on your use of the mark. Without a federally registered trademark, there are circumstances where you may not be able to sue a party for trademark infringement in federal court. Additionally, having a federal registration for your mark can enable you to collect money damages for the infringement of your mark which you may not be able to receive if you relied on common law rights. After five years of continuous usage of a mark after obtaining a federal registration, your mark is considered "incontestable," meaning that third parties cannot attack your registration even if they began using their mark before you did. A federal trademark registration can assist you in obtaining special damages and criminal penalties in counterfeit cases and allow you to prevent the importation of products bearing infringing marks.

Unlike copyrights and patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms.

3. Applications For Federal Trademark Registration. The owner of a mark may file an application for federal registration if the mark has already been used in interstate commerce (a "use" application) or if the mark has not yet been used but the owner has a bona fide intention to use the mark in interstate commerce (an "intent to use" application). Use in interstate commerce means the mark has been used in connection with the actual sale of a product or service to someone in another state or country.

The application requires submission of the following information: (1) the name and address of the owner of the mark, which is usually an individual, corporation, partnership, or limited liability company; (2) a description of the mark itself, which usually consists of words, a drawing, or words combined with a drawing; (3) a description of the goods or services that the mark is (or will be) used with; (4) a U.S. Patent & Trademark Office classification number; (5) the date the mark was first used (anywhere), the date the mark was first used in interstate commerce, or a statement that the applicant has a bona fide intention to use the mark in the future; and (6) a description of how the mark is (or will be) used in connection with the products or services.

A "use" application must be submitted with at least three specimens illustrating how the mark is actually used in commerce. The application must be filed with a filing fee, which is currently $335.00 per classification. Applicants who file "intent to use" applications must also file a declaration after use of the mark in interstate commerce has begun. There is an additional $100.00 filing fee required at that time.

4. The Application Process. After an application is filed, the Patent & Trademark Office will issue a "Filing Receipt" which shows the serial number assigned to the application and the filing date that gives an application priority over applications which may be filed subsequently. Each application is assigned to an Examining Attorney who reviews the application and searches the Patent & Trademark Office records to determine whether there would be any likelihood of confusion with any marks which were registered or for which applications are pending. If the Examining Attorney determines that the mark is not available for registration, he or she will make an initial refusal. The applicant will have an opportunity to respond to the Examining Attorney's comments. Often the Examining Attorney will determine that the mark is available for registration but will request that changes be made in the description of goods or services that are used with the mark. These issues can be negotiated with the Examining Attorney. When all issues are resolved, the Examining Attorney approves the mark for publication. The mark is then published in the Trademark Official Gazette. Parties who believe they would be damaged by registration of the mark have 30 days in which they can initiate an opposition proceeding. An opposition proceeding is conducted before the Trademark Trial and Appeal Board.

If after publication, no parties file an opposition to a "use" application, the Patent & Trademark Office will issue a Certificate of Registration about two to three months after the mark has been published. When a registration is issued, the owner can use the symbol in connection with the use of the mark. If there is no opposition to an "intent to use" application, the Patent & Trademark Office will issue a Notice of Allowance. A declaration (or a request for a six month extension of time if the mark is not yet being used) must be filed along with a filing fee within six months from the date of the Notice of Allowance. Upon acceptance of such a declaration, a Certificate of Registration will be issued.

The entire process, from submission of the application to registration, usually takes between nine and twelve months.

5. Term and Maintenance of Registration. A federal trademark registration can last indefinitely if the owner continues to use the mark to identify its goods or services and continues to renew its registration. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit (with an accompanying filing fee) setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is cancelled. Each renewal must also be accompanied by a filing fee.



HOW JAY S. HOROWITZ, P.C. CAN HELP YOU REGISTER YOUR TRADEMARK

Jay S. Horowitz, P.C. provides full service in regard to federal trademark registrations. The services include conducting trademark searches and preparing applications for federal registration of trademarks. Our office is located only 30 minutes from the U.S. Patent & Trademark Office.

Attorney-client privilege ensures that any information that you provide Jay S. Horowitz, P.C. to assist in conducting a trademark search or preparing a trademark application will be kept strictly confidential. No information, ideas, or concepts will be utilized or divulged without your express permission.


© COPYRIGHT JAY S. HOROWITZ, P.C., 1991, 2003.
Some of these materials were adapted from the U.S. Patent & Trademark Office pamphlet entitled "Basic Facts About Trademarks."