4. Legal Requirements for Registering Your Trademark
There are four basic requirements for filing a trademark (or service mark) with the U.S. Patent and Trademark Office (USPTO).
The trademark must be applied for under the actual owner's name.
The owner of the trademark is the person who controls the nature and the quality of the goods sold or the services rendered under the trademark.
The owner can be an individual. The owner can also be a partnership, corporation or association.
If the owner is a corporation, then the applicant's name is the corporationís name.
The applicant must specify what type of entity it is (individual, corporation, etc.) and its national citizenship.
The applicant is not required to have U.S. citizenship but everyone must state his, her, or its citizenship on a trademark application.
The application must be based on actual use or a real intent to use the trademark in commerce.
For applications based on actual use, the applicant should indicate what products he or she has actually placed the trademark on and sold in commerce.
A trademark for services will be considered in "actual use" when it is used or displayed in the sale or advertising of services and the services are actually rendered.
If you are filing an "Intent-To-Use" application, it is sufficient that you make a good faith statement that you plan to use the trademark in commerce.
However, you will have to actually use the trademark before it can be registered.
Once you have used your trademark, you will have to file a document titled "Statement of Use/Amendment to Allege Use."
This document can be filed either on or before the day that the examiner approves your trademark for publication (in which case, your filing is called an "Amendment to Allege Use") or after the mailing of your Notice of Allowance.
DO NOT file this document between approval for publication and mailing of your Notice of Allowance.
If you opt to file after the mailing of your Notice of Allowance (in which case your document will be called a "Statement of Use"), you have 6 months in which to do so, or to seek an extension of time to file. Only after this filing will the USPTO register your trademark.
You must submit a drawing of the trademark and a specimen of the trademark when the application is based on actual use.
A specimen is a real-world example of how the trademark is actually used on the goods or in connection with a service. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark.
For a service mark, specimens may be advertising, such as magazine ads or brochures.
Labels and photographs of packaging are examples of acceptable specimens. An "ornamental use" of the trademark--such as an image on the front of a t-shirt--are not acceptable specimens without something like a hang-tag included, to show actual use in commerce.
The specimens must be flat and no larger than 8½" x 11". DVDs, CDs and the like are also acceptable.
A drawing is a page that depicts the trademark you seek to register.
In an application based on actual use, the drawing must show the trademark as it is actually used (i.e., as shown by the specimens).
For applications based on an Intent To Use, the drawing must show the trademark as the applicant intends to use it.
A drawing is necessary even when a specimen is submitted.