• What is a trademark or service mark?
• Do Trademarks, Copyrights and Patents protect the same things?
• Is registration of my mark required?
• When can I use the trademark symbols TM, SM and ®?
• What is "use in commerce"?
• What is "intent to use"?
• What is a "specimen" of use?
• What is a proper specimen for use of a mark on goods (products)?
• What is a proper specimen for use of a mark with services?
• When do I file the specimen?
• What happens after I file my application?
• Does the examining attorney search for conflicting marks?
• Are there other reasons the examining attorney might refuse my mark?

What is a trademark or service mark?
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" refer to both trademarks and service marks.

Do Trademarks, Copyrights and Patents protect the same things?
No. Trademarks, copyrights and patents all differ. A trademark protects a product or business name; a copyright protects an original artistic or literary work; a patent protects an invention.

Is registration of my mark required?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration provides several important advantages, e.g., the ability to bring an action concerning the mark in federal court; a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration; constructive notice to the public of the registrant’s claim of ownership of the mark; the use of the U.S registration as a basis to obtain registration in foreign countries; and the ability to use the U.S. Customs Service to prevent importation of infringing foreign goods.

When can I use the trademark symbols TM, SM and ®?
Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. You may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

What is "use in commerce"?
For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce. For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

If you have already started using the mark in commerce, you may file based on that "use". A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.

What is "intent to use"?
If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce. You do not have to use the mark before you file your application.

An "intent to use" application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. The applicant or a person authorized to sign on behalf of the applicant (e.g., attorney) must sign the statement.

NOTE: If you file based on intent to use, you must begin actual use of the mark in commerce before the USPTO will register the mark; that is, after filing an application based on "intent to use," you must later file another form ("Allegation of Use") to establish that use has begun.

What is a "specimen" of use?
A specimen is an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services. This is not the same as the drawing of the mark, which merely represents what you are claiming as the mark.

What is a proper specimen for use of a mark on goods (products)?
Normally, a specimen for a mark used on goods shows the mark on the actual goods or packaging for the goods. You may submit a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods. You will not submit the actual product.

What is a proper specimen for use of a mark with services?
A specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit a sign, a brochure about the services, an advertisement for the services, a business card or stationery showing the mark in connection with the services or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e., not just a display of the mark itself. For example, if the mark sought to be registered is "XYZ," a business card that only shows the mark "XYZ" would not be acceptable. A business card that states "XYZ REAL ESTATE" would be acceptable.

When do I file the specimen?
For an application based on "use": If you are using the mark in commerce and you file based on that use, you should submit one specimen for each class of goods/services listed in the original application. For an application based on "intent to use": You must submit one specimen for each class of goods/services when filing the "Allegation of Use."

What happens after I file my application?
After the USPTO determines that you have met the minimum filing requirements, the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews 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 marks, and an examination of the written application, the drawing, and any specimen.

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office Action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If the examining attorney sends an Office action, the applicant’s response to the Office Action must be received in the Patent and Trademark Office within six months of the mailing date of the Office Action, or the application will be declared abandoned.

If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To overcome a final refusal, the applicant may appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO.

Does the examining attorney search for conflicting marks?
Yes. After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The principal factors considered by the USPTO in determining whether there would be a likelihood of confusion are: the similarity of the marks; and the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.

If a conflict exists between your mark and a registered mark, the USPTO will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the USPTO will notify you of the potential conflict. If the earlier-filed application registers, the USPTO will refuse registration of your mark on the ground of likelihood of confusion.

Are there other reasons the examining attorney might refuse my mark?
Yes. In addition to likelihood of confusion, an examining attorney will refuse registration if the mark is:

• Primarily merely descriptive or deceptively misdescriptive of the goods/services
• Primarily geographically descriptive or primarily geographically deceptively
• Misdescriptive of the goods/services
• Primarily merely a surname
• Ornamental

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.

The USPTO will send a NOTICE OF PUBLICATION to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose