A trademark is a word, phrase, symbol or design (or a combination of these) used to identify and distinguish the goods being offered by a person/company. A service mark is a word, phrase, symbol or design (or a combination of these) used to identify and distinguish the services being provided by a person/company. Note that the term “trademark” is often used generically to refer to both trademarks and service marks.

Simply speaking, goods are products, whereas services are activities performed for the benefit of others.

It is not a requirement of law to have a trademark clearance search conducted before a trademark application is filed. However, it is highly advisable to conduct a trademark clearance search before a trademark application is filed in order to assess whether the mark you have selected/adopted is unique and likely to be registered, or whether someone else had already adopted the same or a similar mark for similar goods and services. We offer various search options. Click here to be re-directed to the detailed description of the search options. Then, click “Back” to return to this page.

No. Exclusive rights to a trademark are established by the act of using a particular trademark in connection with the goods being sold or the services being provided. This is known as “common law” trademark usage or rights. In the U.S., trademark rights are based on who was the first to adopt and actually start using a mark in connection with the sale of goods or services, regardless of whether or not the owner obtained a trademark registration.

A trademark registration provides numerous benefits:

• The public is put on notice of a person’s claim of ownership to a trademark.
• There is a legal presumption of a person’s claim of ownership to a trademark, as well as the exclusive right to use the mark across the U.S. for the goods and services identified on the trademark registration.
• The right to initiative a lawsuit over the trademark in federal court.
• The ability to use the U.S. trademark registration as a basis for obtaining a trademark registration in other countries.
• The ability to register the U.S. trademark registration with the U.S. Customs and Border Protection Service to help prevent foreign goods which bear an infringing trademark from entering the U.S.
• The right to use the ® symbol as an indication that the mark is registered in the U.S.
• The trademark registration will appear on the searchable database of the USPTO so that anyone searching the registry will see that the trademark is already owned.

There are several filing basis for a trademark application:

Use in commerce – This filing basis is applicable if the trademark is currently being used in commerce in connection with all the goods or services listed on the application. As part of the application, the following must be provided: (i) the date the mark began to be used, and (ii) a sample of the mark (called a specimen) showing how the mark is actually being used in connection with the goods and services.

Intent to use – This filing basis is applicable if the trademark is not yet being used but the applicant has a bona fide intent to start using the mark in the foreseeable future. Before the trademark may be registered, the applicant must start to use the trademark in commerce, submit evidence of use and must pay an additional filing fee.

Application based on foreign application – This filing basis is applicable if the trademark owner has filed an application for the same mark within the last six months in a country that is a party to a treaty or agreement with the U.S. Note that the applicant’s country of origin must also be a party to a treaty or agreement with the U.S. The mark and the goods/services must be the same in the foreign and U.S. applications. This application must still go through the general application review process as any other application for registration with the USPTO (which process is described in the answer to the question below). Note further that during the application review process, the foreign applicant must either start using the mark in commerce in the U.S. or submit evidence of having obtained a foreign registration in order for the U.S. to grant registration to the foreign mark.

Application based on a foreign registration – This filing basis is applicable if the trademark owner has been granted a registration for the same mark in a country that is a party to a treaty or agreement with the U.S. Note that the applicant’s country of origin must also be a party to a treaty or agreement with the U.S. The mark and the goods/services must be the same in the foreign registration and the U.S. application. This application must still go through the general application review process as any other application for registration with the USPTO (which process is described in the answer to the question below).

Application based on the Madrid Protocol – This filing basis is applicable if the trademark owner has filed for an Extension of Protection under the Madrid Protocol. As a first step, the trademark owner must file a request for an Extension of Protection covering the U.S. through its home country intellectual property office. The home country intellectual property office then forwards the request to the World Intellectual Property Organization’s International Bureau. This Bureau will then transmit the Request for Extension of Protection to the USPTO. This process could take weeks or several months. Note that a Request for Extension of Protection must still go through the general application review process as any other application for registration with the USPTO (which process is described in the answer to the question below).

This means that the mark is being used in the sale or transportation of goods or in providing services in commerce between one or more States or U.S. territory or between the U.S. and another country. If the case of goods, the trademark has to be affixed to the goods (such as labels or tags), a container for the goods or on displays for the goods. In the case of services, the trademark has to be used in the sale or advertising of services.

A specimen of use is a sample of how a trademark is being used and seen by the public in the marketplace.

Examples of specimens for goods are labels, tags or packaging for the goods, or a photograph showing the mark on the goods or packaging. Note that the following are not acceptable specimens for goods: business cards, letterhead, press releases, brochures, leaflets, customer purchase orders, or announcements.

Examples of specimens for services are a sign (such as store front signage), a brochure about the services, an advertisement for the services, a website, a business card, or stationery showing the ® mark.

When an application is filed electronically, an image of the mark must be uploaded as part of the application. You must provide an image of the specimen in .jpg or .pdf format with little or no white space around the design of the mark. Mark images must not include any of these symbols (TM, SM, ®). The mark image should be black and white, unless color is being claimed as a feature of the mark.

All goods and services are classified by the United States Patent and Trademark Office according to a worldwide classification system of which the USPTO is a part. All goods are sorted into thirty four (34) classes or categories, and all services are sorted into eleven (11) classes or categories. Each International Class requires a separate filing fee. Thus, the filing fee for the trademark application will vary depending on how many classes the goods and services listed on the application fall into. The filing fee per class is typically US $325.00.

No. You do not need to be a U.S. citizen or resident to file a trademark application. If you reside outside the U.S. and you purchase our comprehensive trademark package, you can choose to appoint us as your “domestic representative” on the application to receive notices or other communications from the USPTO affecting your trademark.