A specimen is a real-world example of how you are using your mark on goods or in the offer of services. A specimen is more than just a picture of your trademark or logo.

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.

After LegalZoom completes your Trademark Declaration of Continued Use, you'll receive an email requesting your electronic signature. This email will contain a link connecting you to your document 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 (ex: /john doe/) and clicking on the "submit" button.

Your Section 15 Trademark Declaration of Incontestability allows you to request the highest status of trademark protection under federal law. Once your Declaration is approved the U.S. Patent and Trademark Office (USPTO), you are protected against many legal challenges that people or businesses might to contest your right to your mark.

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.

Yes. The examining attorney will search the USPTO records to see if a conflict exists between the trademark in your application and another trademark that is live and registered with or pending with the USPTO. In doing this, he or she will also look for other trademarks that might be confused with yours. The USPTO does not provide preliminary searches for conflicting trademarks before an application is filed.

When you apply for a trademark with LegalZoom, we search for other federally registered or pending trademarks that are in direct conflict with your trademark before you submit your application. LegalZoom also offers a variety of additional comprehensive trademark search services that can help you learn more about the rights and risks associated with your proposed trademark. Click here to learn more.

The principal factors the USPTO examining attorney uses to determine if there would be a chance of confusion include:

• The similarity of the marks
• The commercial relationship between the goods and/or services listed in the application (what "class" or "classes" the trademarks are in and the goods and/or services to which they are applied)

For a conflict to be found, your trademark does not have to be identical to another, and the goods and/or services do not have to be the same. It may be enough that the trademarks are similar and the goods and/or services related.

If a conflict exists between your proposed trademark and a registered trademark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your trademark and one in a pending application that was filed first, the examining attorney will notify you of the potential conflict and may suspend action on your application, pending the outcome of the conflicting application. If the first application registers, the examining attorney will then refuse your registration on the ground of likelihood of confusion.

Many people assume they can protect their trademark simply by using the mark in commerce. It is true that you are not required to register a trademark to achieve some level of protection and that one establishes common law rights simply by using a mark in commerce.

However, having a federally registered trademark on the USPTO's principal register provides several advantages:

• Serves as constructive notice to the public of the registrant's ownership of the trademark
• Establishes a legal presumption of your ownership of the mark and your exclusive right to use the trademark nationwide on or in connection with the goods and/or services listed in the registration
• Allows the registrant to bring an action concerning the trademark in federal court
• U.S registration can be used as a basis to obtain registration in foreign countries
• Can be filed with U.S. Customs to prevent the importation of infringing foreign goods

Federal registration also allows you to use the (R) (the "Circle-R") symbol. Any time you claim rights in a trademark, you may use the ^TM (trademark) or ^SM (service mark) symbol to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you can only use the federal registration symbol (R) after the USPTO has actually registered the trademark, not without an application or while an application is pending. Following registration, you can only use the (R) symbol on or in connection with the goods and/or services listed in the federal trademark registration.

Federal registration is not required to establish trademark rights. "Common law" rights arise from the actual use of a trademark without federal registration. Generally, whoever first uses a trademark in commerce has the ultimate right to use that trademark in that way. However, there are many benefits of federal trademark registration.

To learn more about these benefits, click here.

There are several ways to dispute use of your trademark by someone else. Because each situation has unique facts, you should consider contacting an attorney, preferably one specializing in trademark law. LegalZoom's Business Advantage Pro can put you in touch with an experienced attorney in this area. For more information, please visit http://www.legalzoom.com/attorneys-lawyers/business-advantage-pro.html.

When setting up and maintaining a business, a business owner will need to accomplish many tasks, many of which involve filings with the state or states in which he or she wishes to do or is doing business. These filings include things like registering your business name, setting up a d/b/a, getting an EIN, etc. It is important that business owners understand that NONE of these things give them ANY trademark rights, and especially not federal trademark rights. ONLY use of a trademark to sell or advertise goods or services affords a business trademark rights, and ONLY federal trademark registration carries the benefits of federal trademark registration.

On the flip side, simply registering your trademark with the USPTO does not necessarily mean that someone has not already registered to do business under such a name with a state, since the USPTO does not search state business filings when determining whether your trademark is registrable. The USPTO also does not search to see whether someone else may already be using the name you are seeking to register as a trademark. For these reasons, LegalZoom strongly recommends a Comprehensive Trademark Search as part of your trademark package.

No. However, the applicant's citizenship must be included in an application. If an applicant (such as a corporation) is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, he or she must choose which citizenship will be printed in the Official Gazette and on the Certificate of Registration.

It is hard to predict how long it will take for an application to mature into a registration since many factors can affect the process. Generally, an applicant will receive a filing receipt almost instantly after filing. In addition, you should receive an initial response from the US Patent and Trademark Office (USPTO) within approximately three months of filing the application.

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.

When you are ready to register a trademark, LegalZoom can help. The service includes a direct-hit search of the federal database as well as electronic filing of your trademark application. Plus, you can get legal advice from an independent attorney as part of the business legal plan. Ask the attorney about trademarks, your business plans, and more.

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:

• Divide products and services into categories. The USPTO separates products and services by categories, called "classes." Here is a list of USPTO classes and their general descriptions.
• Name the class first, followed by all products or services that fall within that class. For instance, if you are selling a line of hats with your trademark, you should list "Clothing, namely hats." (Clothing is the class, and hats are the specific products.) If you have more products that fit within the same class, the format is the same, like "Clothing, namely hats, shirts, scarves and socks." Do not list products that fall into other classes without naming that next class first. So, if you've listed all clothing items and are planning to sell motorcycles as well, you would list "Clothing, namely hats" as your first class. You would then separately list "Motor vehicles, namely motorcycles" as your second class and products within that class. (Vehicles is the class, motorcycles are the products.) Note: Each additional class requires an additional $335, which includes the USPTO filing fee.
• Be specific and concise. Be as specific and clear as possible in your descriptions of your products and/or services. There's no need to tell a story-just list and describe what you are selling or planning to sell in connection with your trademark. For example, "Computer graphics software" is better than "Computer software" alone, and "Consulting services in the field of energy efficiency" is better than "Consulting services" alone.
• Avoid leaving your description open-ended.This means avoiding words and phrases like "including," "including but not limited to," "such as," and "etc." within your description. For example, do not write, "Clothing, namely hats, scarves, gloves, etc." or "Clothing, such as hats." The USPTO requires you to be complete in your listing of all the products and services as to which you want to register a trademark in your current application.
• List only services that you are selling to others-not activities that you engage in to promote or conduct your own business. For services, make sure that you list the services you are providing to others. For example, list "Advertising" only if you are providing advertising services for other people or companies - not if you are only advertising your own business.
• Do not list items not sold to the public. As with services, only list products that you are selling to others-not materials you use to promote or conduct your own business. For example, do not list promotional or corporate items that are not being sold to the public, such as company brochures, letterhead, or employee uniforms.
• Do not list products or services you don't plan on selling. Do not include products or services that you are not, nor have a real intention of, selling in the future. If you falsely identify anything on your application, your application may be rejected or your registration later cancelled. If you apply on an "intent-to-use" basis as to any products or services, you should be sure to have materials that can prove your real intent to sell these things, and that you had that real intent as of your filing date. Such materials can include business plans, mock-ups of products and other items that would show that you are working towards the sales you claim to have planned.
• Do not include a trademark name. Do not include a trademark name (yours or anyone else's) in your description of products and/or services. For example, if your trademark is "Ducktail" for motorcycles, do not list "Ducktail motorcycles" as your product-list "Motor vehicles, namely motorcycles." Rather than "Computer game software for use on iPhones," list "Computer game software for use on mobile and cellular phones."

To view more examples of acceptable descriptions from the USPTO, click here.

Please Note:

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.

Registration of your company name as a trademark is the same for USPTO purposes as all other trademark registrations.

However, before you register your company name, you want to determine if your company name is already in use in your state. Your state will generally not let you use a name that is too similar to an already registered business. For this reason, whenever you consider registering your company name as a trademark, you want to research your state's database for registered corporations, LLCs and partnerships with similar names.

LegalZoom's U.S. Comprehensive Trademark Search can help you find these conflicts before starting a trademark application.

A service mark is simply a type of trademark. In fact, the words "trademark" and "mark" often refer to both trademarks and service marks. Trademarks help the government and consumers distinguish manufacturers of goods or products from one another. A service mark helps the the government and consumers distinguish service providers from one another. Common law service marks are accompanied by ^SM as opposed to the ^TM of common law trademarks. Both goods and services with federally registered trademarks use an (R) symbol.

LegalZoom can help you apply to register your trademark or service mark with the U.S. Patent and Trademark Office in three easy steps. Get started today and protect your trademark!

You can usually obtain the protection of state trademark registration by applying for and paying a fee to the Secretary of State (or comparable office) in the state where you are using the trademark. However, federal registration provides more widespread notice to the public and in some cases, may supercede a filing at the state level. Federal registration also provides for greater benefits.

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.

Not to use it. However, federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the trademark, a legal presumption of ownership nationwide, and the exclusive right to use the trademark on or in connection with those goods or services set forth in the registration. Federal registration also allows the owner of a trademark to sue for infringement in federal court and to stop the importation of infringing material.

For a trademark registration to remain valid, a Declaration of Use must be filed: (1) between the fifth and sixth year following registration and (2) within the year before the end of every 10-year period after the date of registration.

Assuming that a Declaration of Use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term. Registrations granted on or after November 16, 1989 have a 10-year term. Trademarks can be renewed for additional 10-year terms. There is no limit to the number of times a trademark can be renewed, as long as use of the mark by its owner continues.

When you file a trademark application, your proposed trademark will go through two main types of review. First, the USPTO will review your application to determine whether or not you have met the minimum filing requirements. Next, the application is forwarded to an examining attorney. (Note: this transition can take several months.)

The examining attorney will then review the application to determine whether it complies with all applicable rules and statutes and includes all required fees. A complete examination includes a search for conflicting trademarks (both registered and pending) as well as a review of the written application, drawing and any specimen. If the examining attorney decides, based on your application, that your trademark should not be registered, he or she will send you a letter, called an Office Action. This letter explains the reasons for the refusal and any technical or procedural problems with your application. Most often, you will have a chance to cure any deficiency in your application, other than a conflict with another trademark.

If minor corrections are all that is required for filing the trademark, the examining attorney may contact you by phone or email. If the examining attorney sends a written Office Action, you have six months from that letter's mailing date to respond with corrections or the application will be declared abandoned.

If your response to an Office Action does not overcome all of the examining attorney's objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, you can appeal to the Trademark Trial and Appeal Board (TTAB) for an additional fee. This board is an administrative tribunal within the USPTO.

Once your trademark application passes the examining attorney's review, your mark will be published in the Official Gazette. This gives the public an opportunity to object to the mark if they believe they will be damaged by that registration. If no objections are filed within 30 days of publication, the mark will typically be registered in 3-12 months. At that point, you are an official holder of a federally registered U.S. trademark.

In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the trademark is:

• Merely descriptive or deceptively misdescriptive of the goods/services
• Primarily geographically descriptive or geographically deceptive
• Mostly a surname
• Solely Ornamental

Not formally. Certain countries, however, do recognize a U.S. registration as a basis for registering the trademark in those countries. Many countries maintain a register of trademarks and some will act to protect the holders of U.S. trademarks from activity that occurs abroad which would, if transacted in the U.S., infringe upon the owner's trademark.

Furthermore, a suit in U.S. Federal Court can be brought by a U.S. trademark owner against another U.S. citizen for exportation of goods wholly for sale abroad that would confuse foreign consumers as to whether the goods were those of the trademark owner.

Finally, the holders of "famous" trademarks may be able to block foreign registration of confusing (same or similar) trademarks abroad (e.g., someone other than Disney registering Mickey Mouse in Iran). Each country's laws about registration should be consulted.

Only a trademark's owner can file an application for its registration. An application filed by a person who is not the owner of the trademark will be declared void. Generally, the person who uses or controls the use of the trademark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the trademark's owner.

An Allegation of Use is another term used for a Statement of Use. Both terms refer to a required filing for an applicant who applies for a trademark on an "Intent-To-Use" basis. The filing demonstrates actual use of the trademark in commerce and is required by the USPTO before it will register a trademark.

Trademark applicants who originally filed an Intent-To-Use Trademark Application (i.e., before they began using their mark in commerce) are required to file a Statement of Use. This filing indicates that an applicant has begun using the applied-for trademark in commerce. This enables the USPTO to register the trademark.

You should file your Trademark Statement of Use within the following time periods:

- 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.

To check the status of your trademark application, please visit http://tarr.uspto.gov/ and use your USPTO trademark serial number to locate your application.

Along with your Statement of Use application, you must provide

(1) a filing fee for each class of goods or services and

(2) a specimen showing use of the mark for each class of goods or services.

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.

After LegalZoom completes your Statement of Use documents, you'll receive an email from LegalZoom requesting your electronic signature. This email will contain a link connecting you to your application online. We strongly recommend thoroughly reviewing your documents to ensure the information is correct before electronically signing.

You can complete your e-signature by typing your name between two forward slashes (for example, /john doe/) and clicking on the "submit" button.

If you do not file a Trademark Statement of Use or Extension Request within 6 months of the issuance of your Notice of Allowance, the USPTO will consider your trademark abandoned.