trademarks frequently asked questions legal zoom

TrademarksFrequently Asked Questions


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Registration?

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• Your Trademark Registration is backed by

our 100% satisfaction guarantee.

COMPLETENESS

• Application reviewed and filed with

USPTO

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100% satisfaction guaranteed.

http://www.legalzoom.com/trademarks/trademarks-overview_v2.html

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Can I assign trademark ownership to another person or business?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.

https://www.legalzoom.com/knowledge/trademark/faq/1-transfer-ownership

© LegalZoom.com, Inc. All rights reserved. LegalZoom provides access to independent attorneys and self-help services at your specific direction. We are not a law firm or a substitute for an attorney or law firm. We cannot provide any kind of advice, explanation, opinion, or recommendation about possible legal rights, remedies, defenses, options, selection of forms or strategies.

https://www.legalzoom.com/knowledge/trademark/faq/1-transfer-ownership

Can LegalZoom assign the ownership of a trademark for me?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.

https://www.legalzoom.com/knowledge/trademark/faq/2-legalzoom-transfer




Can I record trademark assignments to more than one entity?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.

https://www.legalzoom.com/knowledge/trademark/faq/3-multiple-entity-transfer




What is a trademark specimen?

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.

https://www.legalzoom.com/knowledge/trademark/faq/1-trademark-specimen




How do I electronically sign my trademark document?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.

https://www.legalzoom.com/knowledge/trademark/faq/2-electronically-sign




What is the Section 15 Trademark Declaration of Incontestability?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.

https://www.legalzoom.com/knowledge/trademark/faq/3-section-15




What is the deadline for filing my Declaration of Continued Use?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.

https://www.legalzoom.com/knowledge/trademark/faq/4-deadline-submit




When I file my Trademark Renewal, do I have to file my Section 8 Declaration of Continued Use form separately?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.

https://www.legalzoom.com/knowledge/trademark/faq/5-filing-separately


https://www.legalzoom.com/trademarks-section9-renewal/trademarks-section9-renewal-3step.html



Will the examining attorney search for conflicting trademarks? 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.

https://www.legalzoom.com/knowledge/trademark/faq/attorney-search-conflicting-trademarks


https://www.legalzoom.com/trademark-search/trademark-search-overview.html



Will the examining attorney search for conflicting trademarks? (Cont.)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.





What are the benefits of a registered trademark?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

https://www.legalzoom.com/knowledge/trademark/faq/benefits-registered-trademarks




What are the benefits of a registered trademark? (Cont.)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.





What are "common law" trademark rights?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.

https://www.legalzoom.com/knowledge/trademark/faq/common-law-trademark-rights


https://www.legalzoom.com/trademarks-faq/benefits-registered-trademarks.html



How do I contest someone else using or attempting to register a trademark similar to mine?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

.

https://www.legalzoom.com/knowledge/trademark/faq/contest-trademarks






What are the differences between my business filings and my trademark rights?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.

https://www.legalzoom.com/knowledge/trademark/faq/differences-business-filings-and-trademark-rights




What are the differences between my business filings and my trademark rights? (Cont.)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.





Do I have to be a U.S. citizen to obtain a federal trademark registration?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.

https://www.legalzoom.com/knowledge/trademark/faq/federal-trademark-citizenship-status




How long does it take for a trademark to be registered?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.

https://www.legalzoom.com/knowledge/trademark/faq/how-long-register-trademark


http://tarr.uspto.gov/

http://www.uspto.gov/dashboards/trademarks/main.dashxml



How do I list the products and/or services on my trademark application?The U.S. Patent and Trademark Office (USPTO) requires

trademark applicants to list and describe all products when

applying to register a trademark.

https://www.legalzoom.com/knowledge/trademark/faq/how-to-list-products-services-on-trademark-application




How do I list the products and/or services on my trademark application? (Cont.)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 $385, which includes the

USPTO filing fee.https://www.legalzoom.com/knowledge/trademark/faq/how-to-list-products-services-on-trademark-application


https://www.legalzoom.com/trademarks-glossary/trademark-class-classification.html



How do I list the products and/or services on my trademark application? (Cont.)Here are some important guidelines to follow when writing a

list of products and/or services for a trademark

registration application:

• 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.https://www.legalzoom.com/knowledge/trademark/faq/how-to-list-products-services-on-trademark-application




How do I list the products and/or services on my trademark application? (Cont.)• 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.



http://www.legalzoom.com/trademarks/trademarks-overview.html



How do I list the products and/or services on my trademark application? (Cont.)• 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.





How do I list the products and/or services on my trademark application? (Cont.)• 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.



http://tess2.uspto.gov/netahtml/tidm.html

http://www.legalzoom.com/trademarks/trademarks-overview.html



How do I register my company name?

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.https://www.legalzoom.com/knowledge/trademark/faq/how-trademark-register-company-name


https://www.legalzoom.com/knowledge/trademark/faq/how-trademark-register-company-name

https://www.legalzoom.com/knowledge/trademark/faq/how-trademark-register-company-name

What is a service mark?

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 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!https://www.legalzoom.com/knowledge/trademark/faq/service-mark-definition


https://www.legalzoom.com/knowledge/trademark/faq/service-mark-definition

https://www.legalzoom.com/knowledge/trademark/faq/service-mark-definition

How can I obtain state registration of a 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.

https://www.legalzoom.com/knowledge/trademark/faq/state-trademark-registration


https://www.legalzoom.com/trademarks-faq/benefits-registered-trademarks.html



What is a basic federal direct-hit search?

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.

https://www.legalzoom.com/knowledge/trademark/faq/trademark-business-name-search




When and how can one party use another's trademark? (Cont.)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.

https://www.legalzoom.com/knowledge/trademark/faq/trademark-name-use




When and how can one party use another's trademark? (Cont.)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:

With correct trademark and service mark symbols: The symbol (R) refers

to a federally registered mark, and should be placed after the trademark (e.g.

LegalZoom(R)). In contrast, names that have not been registered with the USPTO

(or those pending registration) may not use the (R) symbol. These should be

denoted with either TM for a trademark or SM for a service mark (e.g. LegalZipTM).

As the trademark appears in the USPTO registry: The trademark should

not be abbreviated, hyphenated or altered in any other ways. Without

misleading or confusing the customer, this is an especially important rule to a

trademark owner that lies at the core of trademark protection.





Do I need to register my trademark?

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.

https://www.legalzoom.com/knowledge/trademark/faq/trademark-registration-advantages




How long does a trademark registration last?

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.https://www.legalzoom.com/knowledge/trademark/faq/trademark-registration-period


https://www.legalzoom.com/knowledge/trademark/faq/trademark-registration-period

https://www.legalzoom.com/knowledge/trademark/faq/trademark-registration-period

How do I know if I need trademark or copyright protection?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.

https://www.legalzoom.com/knowledge/trademark/faq/trademark-versus-copyright-protection


https://www.legalzoom.com/trademarks/trademarks-overview.html

https://www.legalzoom.com/legal-copyrights/copyrights-overview.html



How do I know if I need trademark or copyright protection? (Cont.)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.

Whether you need register a trademark or register a copyright, LegalZoom

makes the process quick and easy.



https://www.legalzoom.com/trademarks/trademarks-overview.html

https://www.legalzoom.com/legal-copyrights/copyrights-overview.html



Can the ownership of a trademark be assigned or transferred from one person or entity to another?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.

https://www.legalzoom.com/knowledge/trademark/faq/transfer-assign-trademark-ownership




What kind of review will the USPTO conduct after I file my trademark application?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.

https://www.legalzoom.com/knowledge/trademark/faq/uspto-trademark-application-review




What kind of review will the USPTO conduct after I file my trademark application? (Cont.)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.





What are some other reasons the USPTO might refuse my 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

https://www.legalzoom.com/knowledge/trademark/faq/uspto-trademark-refusal




Is a federal trademark registration valid outside the United States?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.

https://www.legalzoom.com/knowledge/trademark/faq/valid-federal-trademark-registration




What is a trademark specimen and how does it relate to goods and services?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.

https://www.legalzoom.com/knowledge/trademark/faq/what-is-a-trademark-specimen




What is a trademark specimen and how does it relate to goods and services? (Cont.)





What is a trademark specimen and how does it relate to goods and services? (Cont.)Services Specimens

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.





What is a trademark specimen and how does it relate to goods and services? (Cont.)





Who can file a trademark application?

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.

https://www.legalzoom.com/knowledge/trademark/faq/who-file-trademark-application




What is an Allegation of Use?

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.

https://www.legalzoom.com/knowledge/trademark/faq/1-allegation-of-use




Who should file a Statement of Use?

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.

https://www.legalzoom.com/knowledge/trademark/faq/who-should-file-a-statement-of-use




When should I file my Trademark Statement of Use?

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.

https://www.legalzoom.com/knowledge/trademark/faq/3-when-should-i-file


http://portal.uspto.gov/external/portal/tow



How do I check the current status of my trademark filing?

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.

https://www.legalzoom.com/knowledge/trademark/faq/4-check-filing-status


http://tarr.uspto.gov/



What are the requirements for a Trademark Statement of Use?

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.https://www.legalzoom.com/knowledge/trademark/faq/5-requirements


https://www.legalzoom.com/questionnaire/pre_process1.asp?iPID=53

https://www.legalzoom.com/knowledge/trademark/faq/5-requirements

https://www.legalzoom.com/knowledge/trademark/faq/5-requirements

How do I electronically sign my trademark filing?

After LegalZoom completes your Statement of Use documents,

you'll receive an email from LegalZoom requesting your


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.

https://www.legalzoom.com/knowledge/trademark/faq/7-electronically-filing




What happens if I don't file my Trademark Statement of Use form or Extension Request in time?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.

https://www.legalzoom.com/knowledge/trademark/faq/8-unfiled-consequence




How do I electronically sign my trademark renewal?

After LegalZoom completes your Section 9 Trademark

Renewal, you'll receive an email from us requesting your


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.

https://www.legalzoom.com/knowledge/trademark/faq/2-sign-application




When I file my Trademark Renewal, do I have to file my Section 8 Declaration of Continued Use form separately?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.

https://www.legalzoom.com/knowledge/trademark/faq/3-filing-section-8




What is the deadline for filing my trademark renewal?

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. https://www.legalzoom.com/knowledge/trademark/faq/4-renewal-deadline


https://www.legalzoom.com/knowledge/trademark/faq/4-renewal-deadline

https://www.legalzoom.com/knowledge/trademark/faq/4-renewal-deadline


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