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Find FAQs related to applying for trademarks and trademark registration.
Yes. A registered trademark, or even a trademark with a registration application under consideration by the U.S. Patent and Trademark Office (USPTO) is transferable. The USPTO calls such a transfer an "Assignment." Usually, an Assignment requires a written contract. You can record Assignments with the USPTO for a fee.
LegalZoom cannot assist in trademark assignments, which are typically accomplished by a written contract. However, LegalZoom can help you record your Assignments with the USPTO.
Yes. You can record trademark assignments to multiple entities. However, LegalZoom can assist only with recording trademark assignments from one owner to another individual owner or entity.
For goods (products), acceptable specimens include labels, tags, packaging material, instruction manuals and containers which display the trademark. Please note that brochures, business cards, catalogs and stationery are generally not acceptable specimens for goods.
For services, acceptable specimens include brochures, flyers, advertisements, yellow page listings and websites. Please note that stationery is generally not an acceptable specimen for services. For a business card to be an acceptable specimen, it must contain the proposed trademark and the services offered in connection with that trademark.
If your trademark's certificate states that it is on the "Principal Register," and you have continuously used the mark in commerce for five (5) consecutive years since its registration, you may file a Declaration of Incontestability.
With incontestable status, you are protected from challenges that your trademark is:
(1) not inherently distinctive and lacks secondary meaning; (2) confusingly similar to a mark that someone else began using prior to the owner's registration; and (3) simply functional. To file this form, additional filing fees apply but incontestable registration only requires a one-time filing.
For a trademark registration to remain valid, you must file a Trademark Declaration of Continued Use with the USPTO between the fifth and sixth year anniversaries following registration.
However, the USPTO allows a six-month grace period following the sixth anniversary date. During this period, you may submit the Declaration of Continued Use form with additional filing fees. If a trademark owner does not file this form within the grace period, the USPTO will consider the mark abandoned.
No. The USPTO automatically combines the Section 9 Trademark Renewal with the Section 8 form because they are required at the same time.
LegalZoom's Trademark service makes it easy and convenient to file your Trademark Renewal and Declaration of Continued Use in one easy questionnaire. Click here for more information.
However, the total application processing time may be anywhere from 6 months to a year, or even longer. Most applications are processed completely in slightly less than one year. Overall processing time depends on your basis for filing and any legal issues that arise in the examination process.
Current status on trademark applications and registrations can be obtained by accessing the Trademark Applications and Registrations Retrieval database online at http://tarr.uspto.gov/. To check on average processing times, please visit http://www.uspto.gov/dashboards/trademarks/main.dashxml.
The U.S. Patent and Trademark Office (USPTO) requires trademark applicants to list and describe all products when applying to register a trademark.
Here are some important guidelines to follow when writing a list of products and/or services for a trademark registration application:
To view more examples of acceptable descriptions from the USPTO, click here.
If registered, your trademark will be protected for use in connection with the products and services listed in your trademark application. If you plan to apply for and protect your trademark to cover different products and/or services later, you will need to submit a new application for the additional items at a later time.
LegalZoom includes a Basic Federal Direct-Hit Search with your application. This is a search of the USPTO database for potential conflicts with your trademark.
The government will not let you register a pre-existing name or one that is too similar to a name that has already been registered. This means a search of the USPTO database is essential before starting the registration process.
Appropriate use of a trademark is important to comply with federal law (and if applicable, state law). Trademarks include words, symbols or designs that specifically identify and distinguish the source of an owner's commercial goods. This means uses of the trademark that are likely to confuse the public as to whether the use is made by the owner or by another are generally prohibited.
Some trademark owners assume no one else has a right to independently use the mark in any capacity whatsoever. This is not necessarily true. One can refer to a trademark for a legitimate, noninfringing purpose as long as no more of the trademark is being used than is necessary for this purpose. Generally, trademark laws merely control commercial use of the name.
Under the trademark version of "fair use" doctrine, the more common and generic the word(s) are or have become in the English language, the less likely the trademark owner may be able to regulate them. This doctrine also protects "nominative" use of the trademark name, as is often done by competitors in marketing materials.
Trademark owners often have their own policies as to how their trademark may be used. Here are some typical ways in which use of a trademark by a non-owner might be authorized:
The choice between registering a trademark and a copyright is not always a clear one. Trademark and copyright registration are both means of protecting your intellectual property rights. There are, however, important differences between trademark and copyright protection.
Copyrights are a form of protection for the authors of "original works of authorship," including literary, dramatic, musical, artistic, and certain other creative works.
Copyright does not cover intellectual property such as titles, names, short phrases, and slogans; familiar symbols or designs; or mere variations of typographic ornamentation, lettering, or coloring. This type of intangible property is often more appropriately protected by a trademark. Think of memorable advertising slogans you have heard. Chances are these slogans are protected by a trademark of some sort, while they are unlikely to qualify for copyright protection.
A trademark protects a word, phrase, symbol or design (or a combination of these), that identifies and distinguishes the goods or services of one person or company from those of others.
Some things, such as more complex logos, may qualify for both trademark and copyright protection. This is because the amount of original authorship in a logo can vary greatly. Most highly recognizable logos are extremely simple objects, such as the Nike "swoosh," and would not qualify for copyright protection. However, a more ornate logo with a great deal of creative authorship might qualify for both trademark and copyright protection.
To protect the name of your company, your newly designed name, logo or a catchphrase, a trademark is probably what you need. To protect your latest painting, the next great American novel or even a brilliantly choreographed dance sequence, a copyright is probably the best route for you.
If you want to register a trademark or register a copyright, LegalZoom can help. We can help you search for similar trademarks, complete the application, and even file the paperwork for you. If you’re looking for legal advice we can help with that too – our legal plans offer affordable consultations with independent attorneys to advise you on your application.
Yes. All trademarks can be sold or assigned. The "goodwill" of any business associated with that trademark must be included in any such transfer. Even trademarks that are unregistered or are the subject of pending applications can be sold or assigned. Written assignments of registered trademarks are recommended, and may be recorded with the USPTO for a fee.
For your trademark to be federally registered, you are required to provide proof (called a "specimen") to the U.S. Patent and Trademark Office (USPTO). The specimen you provide should be an actual example that clearly shows how the trademark is being used in connection with the goods and/or services you listed in your application.
Products ("Goods") Specimens
If you are providing products, acceptable specimens include photographs of packaging labels, clothing tags or labels on containers that prominently display your trademark.
Invoices, order forms, receipts, brochures, catalogs, press releases, business cards, and stationery are generally NOT acceptable specimens for products.
Goods Specimen Example #1: Hot Sauce
Goods Specimen Example #2: T-shirt
If you are providing services, acceptable specimens include a sign, brochure, advertisement, business card, stationary or website prominently displaying your trademark in connection with the services you've listed in your application. The specimen must include a reference to the service, not just the trademark by itself. For example, a business card simply printed with the trademark "Sunny Real Estate" would likely not qualify, whereas one printed with "Sunny Real Estate" and "Sales Training Services" below it could qualify.
Printer's proofs for advertisements or news articles about your services are generally NOT acceptable specimens for services.
Service Specimen Example: Real Estate
* If submitting a website specimen, the trademark must be featured prominently on the site, in connection with the services listed in the application.
- Within six months of the day the USPTO mails you a "Notice of Allowance." This is a written notice of conditional approval sent after the mark is published. You can find the date that the Notice of Allowance was issued by visiting http://portal.uspto.gov/external/portal/tow and entering your USPTO serial number.
- Within a previously-granted extension period from the USPTO.
Your Statement of Use includes a sworn statement signed by you (or someone authorized to sign for you), attesting to the use of your mark in commerce.
LegalZoom can help you quickly and easily prepare a Trademark Statement of Use. Simply answer a few questions online and send us a specimen of your use of your trademark, and we will complete and file your Statement. To get started, simply click here.
You can complete your e-signature by typing your name between two forward slashes (for example, /john doe/) and clicking on the "submit" button.
After LegalZoom completes your Section 9 Trademark Renewal, you'll receive an email from us requesting your electronic signature. This email will contain a link connecting you to your application online. We strongly recommend thoroughly reviewing your application to ensure the information is correct before electronically signing the application. You can complete your e-signature by typing your name between two forward slashes (for example, /john doe/) and clicking on the "submit" button.
No. The USPTO's Trademark Renewal application includes fields for the information required for your Declaration of Continued Use because both filings are required at the same time. You do not have to file separate documents. LegalZoom uses the combined form.
The U.S. Patent and Trademark Office (USPTO) requires Trademark Renewal filings between the between the 9-year and 10-year anniversaries of the original trademark registration and each successive ten-year period thereafter.
The USPTO allows a 6-month grace period following the expiration date of your trademark registration, during which time you can file your Trademark Renewal with additional fees. After the grace period, the USPTO will consider the trademark abandoned. Trademarks are infinitely renewable, provided Section 9 Renewals continue to be timely filed by the trademark's owner.