United States Trademark Registration

The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in the United States.

If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).

In this case, proceeding with two trademark applications has the following advantages:

1. Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
2. You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
3. Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.

If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.

Yes. If the first application was filed in a country that is a member of the Paris Convention, and it was filed within 6 months from the US filing date, it is possible to claim priority.

Use your trademark within 3 years from the date it was officially registered. It is mandatory to engage the mark on trade or commercial transactions and it must occur within the jurisdiction of the United States.

Once your trademark filed as "Intent-to-Use" becomes accepted, we notify you that it is now time to file a Specimen of Use.  At this point, we typically request the "specimen" which would be an image showing your trademark in use.  This Specimen can be a website, label, brochure, screenshot, etc.  Our attorneys will verify whether they believe the Specimen of Use is sufficient and will provide feedback.  

Yes. Using unregistered marks for goods/services is approved by the law. In U.S., the first to use a mark or the first to file for registration, whichever is earlier, is the authorized and legal owner of the trademark. More so, common law rights are acquired through use of a mark. Notice thought that some products that are related to cigarettes and drugs are regulated before they are made available in the market.

The average time frame for the trademark registration approval in the U.S. is 10 months, if no objections or oppositions arise.

No, you don't need to provide a Power of Attorney for registering your trademark in United States. 

When filing a trademark application in the United States, a “Filing Basis” must be selected. You can select from four possible options:

1. “Use in Commerce” basis

If you are currently using your trademark in the United States, we will file your application on a “Use in Commerce” basis.

In this case, you will need to provide the date of first use and also send proof that the mark is being used in the United States. Acceptable proof of use (also called “specimens of use”) might be: a page from a website, an advertisement, a brochure or a pamphlet that describes the product/service and shows the trademark. Labels, tags or packaging are also considered acceptable proof of use for a trademark.

2. “Intent to Use” basis

If you are not using your trademark in the United States, we can still file your application on an “Intent to Use” basis. In this case, your application will be processed normally, but once it is accepted for registration (approximately 10 months after the filing date), you will be required to show proof that the trademark is being used. In order to do this, we will file a “Statement of Use,” in which we present the proof of use to the Trademark Office. This will be considered as a separate service.

Note: If you are not able to provide the proof of use by the deadline, you can request an extension every six months (for up to 3 years from the acceptance notification).  

3. “Foreign Registration” basis

If your trademark is registered in another country, we can file your application on a “Foreign Registration” basis. In this case, no proof of use is required for the registration to be granted.

For this kind of application, you will be required to send a scanned copy of the foreign Registration Certificate, along with a translation signed by the translator.

4. “Foreign Application” basis

If your trademark has been filed in another country in the last six months, we can file your application on a “Foreign Application” basis. In this case, additional information will be needed once the trademark is accepted for registration. You will need to provide either the foreign Registration Certificate of the trademark or proof of use in the United States.

For all of these cases, a Declaration of Use must be submitted between 5 and 6 years from the registration date.

An application to register a mark that comprises non-English wording must include an English translation of that wording. This requirement also applies to trademarks comprised of two or more distinct words that are represented as one word, in which one or more of the words in the mark appears to be non-English wording that would clearly be perceived as a distinct word(s) within the compound. A satisfactory translation must be some normal English expression that will be the equivalent in meaning of the term in the other language. For example, the English equivalent of the phrase "mais oui" in French is "why, certainly," or "why, of course,", and not the literal translation "but yes."

If the trademark also includes non-Latin characters, a transliteration of those characters must be included along with the translation. A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. For example, the transliteration of the Chinese character “文” is “Wen” and it means “culture, writing” in English.

The following factors must be taken into consideration when deciding whether or not to claim color in a logo application: the scope of protection you desire and the importance of the specific color(s) in terms of the image of your brand.

If no color claim is made, your logo is submitted in black and white and it is presumed to cover all colors. The benefits of not claiming color include a greater scope of protection of the shape of your mark and the flexibility of being able to use your logo in different color schemes, while still maintaining the protection. This option is advisable if the specific color(s) of your logo is not vital for the brand image.

On the other hand, if the colors of your logo are fundamental, and your customers recognize your brand because you use particular colors, it may be more suitable to claim the colors of your logo as a feature of the mark.  Claiming color implies a more limited scope of protection to the specific colors you claim, but it entails a higher degree of protection over the color itself (similar marks have a lower probability of co-existing if they are in the same colors). If you choose to claim color, your application must describe where each color appears in the mark.  Black, white, or gray can be used as claimed features of the mark or to indicate areas that are not part of the mark, such as background, transparent areas, shading, etc.

For ideal protection, as some big companies do, it would be advisable to file two applications: one black and white logo without claiming color to better protect the shape of your mark, and one-color logo with a color claim to assure protection of the mark with the particular colors you use.

A specimen or proof of use is a sample of your trademark as used in commerce. It is real-life evidence of how you are actually using your trademark in the marketplace, with the goods or services included in its description.

The USPTO requirements for proofs of use are:

• Be a real example of how you use your trademark in commerce in providing your goods or services (not a mock up, printer’s proof, digitally altered image, rendering of intended packaging, or draft of a website that shows how your mark might appear).
• Show your trademark used with the goods or services listed in your application.
• Depict the same trademark as shown on your drawing.
• Show your use of your trademark (not use by someone else, such as press releases sent exclusively to news media).
• Be an appropriate type of specimen based on whether you have goods or services. For example, advertising material is an acceptable specimen for services, but not for goods.
• Show your trademark used in a way that directly associates the mark with the goods or services.
• Show your trademark used in a way that consumers would perceive it as a source indicator for the good or services in your application (it functions as a trademark).
• Include the URL and date you accessed or printed the webpage in your submission.

Some proof of use examples for goods are a photograph, scanned copy, screen capture, or printout of:

• The goods themselves, showing your mark.
• Labels and tags for the goods, showing the mark, with informational matter that typically appears on a label in use in commerce for those types of goods, such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods.
• Packaging for the goods, showing the mark.
• Sales displays where the goods are sold, showing the mark.
• Webpages selling the goods, showing the mark on or in close proximity to the goods, the price, and a shopping-cart button. In your screenshot or printout, you must include the URL and date you accessed or printed the webpage.
• For software as goods, a screenshot of the software launch screen showing the mark or a screenshot of a webpage with enough information to download the software and the mark appearing in the title bar.

Some proof of use examples for services are:

• Online advertising or printed matter showing a direct link association between your trademark and the services.
• Television and radio commercials for the services.
• Marketing material showing a direct association between your trademark and the services (brochures or leaflets advertising your service).
• Signage where the services are rendered.
• Material used in the providing/rendering of the services.
• Invoices showing a direct association between your trademark and the services.
• Business cards and letterhead showing a direct association between your trademark and the services.

To see images of some of these examples of acceptable proofs of use, visit the USPTO’s webpage “Specimens”.

It is important to review  the requirements and examples since the USPTO is becoming stricter when it comes to the proofs of use. 

Examiners may visit the websites from which the specimens have been obtained to verify that goods and services are real and currently available to the American consumer.

Registered trademarks in the United States are protected in its entire geographical scope including territories such as Puerto Rico, Virgin Islands, Northern Mariana Islands, Guam and American Samoa.

The application will be examined if it is compliant with the filing requirements. Before the application is submitted, it would be best to study first if the mark accomplishes all requirements with regards to clarity, formality, distinctiveness, or any conflict. This will prevent you from being rejected. Once the examination is done, the application details will be published online and third-parties will have a chance to oppose. After this stage, the registration will be granted.

Yes. When you register a trademark in the United States, you will establish these rights: 

• Use the trademark exclusively
• Sue third parties for infringing the registered mark
• Request for confiscation of fake goods

The trademark will be valid for 10 years starting on the date of initial registration.

A Statement of Incontestability is one filed by the owner of a mark registered on the Principal Register.  The statement serves as evidence that the mark and/or its registration is valid and that the trademark owner reserves the exclusive right to use the mark on goods and services.  In order for a trademark to meet the requirements of being considered “incontestable,” it must have been used in commerce continuously for at least five years after the registration and must still be in use at the time the Statement of Incontestability is filed.

It will start on the date the application details are published online and will end 30 days after that date. Extensions are possible to be granted.

A petition to cancel a registered mark is possible if these violations are present: 

• The owner filed the application in bad faith
• The mark is proven to be immoral or in conflict with public policy
• The mark is deceiving the consumers
• The mark is describing the characteristics of the good/service
• The mark is generic and/or functional
• The mark is not capable of making the good/service distinct

There are multiple ways to cancel a trademark and subsequently, there are multiple options to exercise once a trademark has been cancelled:

• If a trademark is cancelled because an owner failed to submit scheduled maintenance documentation and accompanying fees for an existing mark, the owner may not later request that the mark is reinstated. The owner must file a new trademark application. 
• If a trademark owner can prove that a trademark cancellation is the result of an error on the part of the Trademark Office, the owner can ask to have a mark reinstated or file a petition with the Director of the Trademark Office.  Such an error would include failure on the part of the USPTO to make appropriate changes after receiving written notice of an address change.
• If a trademark cancellation is the result of a third party petition to cancel an existing registration of a mark, the trademark owner can contest the petition and request that the mark is reinstated. 
• If a trademark owner submits the appropriate documentation and a trademark is cancelled because such documentation is not received in the Trademark Office, the owner can ask to have the trademark reinstated if the owner is able to provide proof that the documentation was sent and the error lies either with the letter courier or the USPTO.

An abandoned trademark application is one that has gone from pending to inactive status due to a failure to either respond to Office action, a failure to file a Statement of Use in a timely manner, or for an incomplete response.  While your application is pending, an examining attorney will send an Office action letter that will require you to issue a response within six months from the mailing date on the letter.  If you do not respond within that six month time frame, your application will be deemed abandoned and you can submit a Petition to Revive your trademark application if the failure to respond was unintentional.  If the Abandonment is the result of a failure to file a Statement of Use, the owner can file a Petition to Revive the application along with a petition fee if the failure to submit documentation was unintentional. In the case of submitting an incomplete response to an examining attorney’s Office action, the trademark owner can file a petition if the Petitioner can demonstrate that the examining attorney is in error for holding the application abandoned.