USPTO Trademark Application Information

• What Is The Trademark Process?
• Types of Trademarks: Standard/Word Mark Vs. Stylized/Design Mark
• Intent to Use Vs. Presently Used in Commerce-What Type of Application Should I Choose?
• Types of Trademark Searches
• What Happens If My Mark Receives an Office Action?
  • What Is A Non-substantive Trademark Office Action?
  • What Is A Substantive Trademark Office Action?
• What Happens When a Mark Is Approved for Publication?
• What Is A “Notice of Allowance”?
• Why Am I Receiving Emails and Letters From Third Parties Telling Me I Have to Pay More Money?!

What Is The Trademark Process When Filing For A Trademark With The USPTO?:

The charts below provide a basic explanation of the trademark application process. A definition of “intent to use” vs. “use in commerce” is defined below.

Please note that the time estimates listed in the charts or definitions below are based on average estimates and do not consider the surge in COVID-19 trademark applications. The most recent time estimates for USPTO trademark filings may be found here.

Types of Trademarks: Standard/Word Mark Vs. Stylized/Design Mark

A word mark/standard character mark  is used to register the words, letters, numbers or any combination thereof without claim to any particular font, style, size, color or design element. This registration covers the literal elements of the mark in any configuration, font, color, or capitalization. If your mark is registered as a word mark and you make changes to your logo, you do not need to apply for a new trademark so long as the elements of the word mark remain the same.

The design/stylized mark is used to register a combination of words and/or letters having a specific stylized appearance or a mark consisting of a combination of words and/or letters and a design element. Note that a stylized/design mark will only protect the exact design that was applied for. If changes are made to the mark, even slightly, a new trademark must be filed. 

Our office typically recommends that a client applies for a word/standard mark vs. a design/stylized mark to provide a broader range of protection. However, if a mark is descriptive, a stylized logo may be best. If an applicant decides to file for a word mark and discovers that an application exists for a similar mark for somewhat related goods, a design application may be the safer route to go.

Requirements to submit a stylized logo:

-JPG file

-Under 5 MB

-Little to no white space around the logo as possible. Crop the borders as much as possible.

-Minimum of 250 pixels by a maximum of 944 pixels. 

For protection in all possible color variations, we recommend submitting a black-and-white depiction of your logo mark. This allows your mark to be used in any color without losing brand identity or trademark protection.

Intent to Use Vs. Presently Used in Commerce-What Type of Application Should I Choose?

This depends on whether you are presently using the mark in commerce or not.

What Does It Mean for Something to Be “Used in Commerce”?

If the mark is already being used in commerce, proof of the use will be filed at the time of the initial application. If the mark is not presently being used in commerce, you may still file for a trademark and reserve the mark. However, the registration will not be issued until the statement of use is filed.

Goods-The product has been sold and shipped within the United States in the ordinary course of trade with the mark preferably displayed on the product itself or on external materials such packaging, tags and labels. If certain requirements are met, a brochure or online point-of-sale display may suffice as a specimen of use for goods if certain requirements are met (e.g., means for ordering). Advertising and marketing materials are generally unacceptable specimens for goods.

Services-The services have been provided within the United Sales in connection with the mark. Acceptable specimens of use for service marks may include advertising and marketing materials displaying the mark and referencing the services identified in the application.

An application will be filed as an intent to use application or a use in commerce application. For a mark to obtain a registration, the applicant must prove that the mark is being used in commerce. However, if you’d like to reserve your name prior to using the mark in commerce, you may still proceed with filing an intent to use application.

Intent to use:

If you plan to use the mark in commerce in the future, an “intent to use” application must be filed, which puts the public on notice that the applicant intends to use such mark. If a “notice of allowance” is issued by the USPTO, the registration will be issued once the applicant provides proof that the mark is being used in commerce. Once a notice of allowance is issued, the applicant has six months from the issue date of the Notice of Allowance (NOA) either to file a Statement of Use (SOU) or apply for an extension of time to file an SOU (an “Extension Request”). An Extension Request is a sworn statement that the applicant still has a bona fide intention to use the mark in commerce, but needs additional time actually to use the mark. An extension request is not included in the trademark application package, but may be filed by our office for an additional fee.

You may continue to file Extension Requests every six (6) months for up to a total of five (5) extensions of time. You must use the mark in commerce and file an SOU within three years (36 months) of the NOA issuance date. For more information, see TMEP Section 1108.01.

Note: The six-month periods are based solely on the issuance date of the NOA, and NOT from the filing date of any extension; i.e., the six-month period following issuance of the Notice of Allowance (or any subsequent six-month extension period) will not be cut short by the grant of an extension.

Types of Trademark Searches:

Preliminary trademark search-A preliminary trademark search is also called a “knock-out” search and is used to determine whether there are any obvious issues or conflicts with the mark you intend to register. We will search the USPTO database to determine if any identical marks for any goods or services similar to yours are listed in the USPTO database. The preliminary search determines whether there are any obvious conflicts and does not confirm that your mark is available. Rather, the search determines whether the applicant should proceed with a comprehensive trademark search. We typically retrieve results for a preliminary search within 7 days.

Comprehensive trademark search-A comprehensive trademark search consists of searching state trademark databases, company database names, domain name databases, publications, and some international databases. We will also search different variations of your mark to determine any additional conflicts. A formal legal opinion will be drafted explaining any potential risks you may pursue if you decide to register the mark. This search is very extensive and takes approximately 2 weeks to perform.

What Happens If My Mark Receives an Office Action?

An office action from the USPTO is a request to provide more information to assist the examining attorney in determining whether the mark is appropriate for registration.

What is a non-substantive trademark Office Action?

Non-substantive trademark Office Actions are letters issued by USPTO examining attorneys that do not necessarily refuse registration of the mark and do not require significant legal research or argument. Non-substantive Office Actions generally cover formalities that may be resolved quickly and inexpensively.

EXAMPLE:

• proposed amendment to the identification of goods/services or the classification
• request for more information on the mark (e.g., whether mark has a meaning in the industry or foreign language)
• proposed revision to the description of a stylized special form mark
• requested disclaimer of a portion of the trademark  

What is a substantive trademark office action?

Substantive trademark Office Actions typically include a refusal to register the trademark based on certain grounds. Responses to substantive Office Action generally require greater effort and cost than those of non-substantive Office Action responses.
EXAMPLE:

• Likelihood of confusion refusal
• Mere descriptiveness refusals
• Dispute re: disclaimer requirement
• Any office Action that raises issues which require a greater effort in response
• As a further example, the examining attorney may be offering registration on the Supplemental Register which may require a Statement of Use.

What Is a “Notice of Allowance”?

A notice of allowance is a confirmation from the USPTO that a particular mark has survived the opposition period following publication in the Official USPTO Gazette. It does not mean the mark has been registered. If the mark was filed as an intent to use, the USPTO will issue a notice of allowance about eight weeks after the date the mark was published.

The applicant has six months from the date of the notice of allowance to either:

1) file a statement of use (proof that the mark is being used in commerce) or

2) Request a six month extension of time to file a statement of use.

An applicant has six months from the mailing date of the notice of allowance in which to either file a statement of use or file an extension request. An applicant may file more than one six month extension request, but a limit exists on the total number of extension requests permitted and the timeframe that they must be submitted within.

What happens if a “notice of allowance” is issued?

A notice of allowance is a notification from the USPTO that your mark has survived the opposition period following publication in the Trademark Official Gazette, and has consequently been allowed to proceed to registration; it does not mean that the mark has registered yet.

Summary of what we need from you:

A trademark registration cannot be issued until you provide proof that the mark is being used in commerce. This is done by filing a statement of use, which is proof that there is a bona fide use of the mark in the ordinary course of commerce. The statement of use includes a specimen, which is a photo of the mark being used in commerce, along with the date the mark was first used in commerce. This must be provided within 6 months from the date the notice of allowance was issued. If you do not anticipate your mark being used in commerce within the 6 month period, we may file for an extension. There is an additional fee for filing an extension.

Specimen for statement of use (proof that the mark is being used in commerce):

Please provide a photo of your product and a photo of your product being used in commerce. Please note that the client is responsible for ensuring the image complies with these requirements. To avoid any discrepancies or alterations of your graphic, our office will not adjust, convert, or re-size the image. If you do not understand these image requirements, please contact your graphic designer to ensure the graphic you provide complies with the USPTO requirements.

GOODS– An acceptable use in commerce refers to the product being sold and transported within the United States in the ordinary course of trade with the mark preferably displayed on the product itself or on external materials such packaging, tags and labels. In certain cases, a brochure or online point-of-sale display may suffice as a specimen of use for goods if certain requirements are met (e.g., means for ordering). Advertising and marketing materials are generally unacceptable specimens for goods. An insufficient usage would include token use or minimal use for the sole purpose of supporting a trademark application. Services must be rendered, and not merely offered. The USPTO states that a webpage that offers “pre-sale” orders (commonly known as “pre-orders”) for goods does not constitute “use in commerce” for the purposes of trademark registration if the goods are not yet available for the consumer to purchase.

If a consumer is able to go on your website, Ebay, Amazon, etc. and purchase the product, this is sufficient. 

If your item is being sold online, please provide the following:

• A screenshot of your website where the product is available for purchase
• The website link and the date the site was accessed
• Websites accepting only pre-orders are unacceptable as specimens

If your item is being sold offline, please provide the following:

• A photo of the product being available in a store or restaurant
• The name/address of the business
• The date the product became available for purchase at the business
• The date the photo was taken

SERVICES-An acceptable service mark use in commerce refers to the services being rendered within the United Sales in connection with the mark. Acceptable specimens of use for service marks may include advertising and marketing materials displaying the mark and referencing the services identified in the application.

Examples of insufficient usage would include token use or minimal use for the sole purpose of supporting a trademark application. Services must be rendered, and not merely offered. Sales to foreign countries may also count as use in commerce. While there is no bright line test as to the units or dollar amount sufficient to support bona fide use in the ordinary course of trade, the courts have been able to find insufficient usage in cases such as a single shipment, a single sale of a handful of units, a single transaction within a span of years, etc.

Please note that the client Is responsible for ensuring the image complies with these requirements. To avoid any discrepancies or alterations of your graphic, our office will not adjust, convert, or re-size the image. If you do not understand these image requirements, please contact your graphic designer to ensure the graphic you provide complies with the USPTO requirements.

TRADEMARK-SPECIMEN IMAGE REQUIREMENTS

Image must be provided as a .jpg or .pdf file and in a black and white format.

Resolution: The Image should be submitted at no less than 300 dots per inch and no more than 350 dots per inch 

Size: length and width of no less than 250 pixels and no more than 944 pixels. 

What Happens When a Mark Is Approved for Publication?

If a mark is approved for publication, the examining attorney at the USPTO completed review of your application and determined that there are no issues that would bar the registration of your trademark. The mark will be scheduled to be published in the USPTO official gazette. Once published, third parties will have 30 days to file an opposition claiming that they will be damaged by the registration of your mark. If an opposition is not filed, the mark will proceed to the final stages of registration and a notice of allowance will be issued. If your mark was filed as an intent to use in commerce, you will be required to file a statement of use (proof that the mark is being used in commerce) prior to the issuance of the registration.

Why Am I Receiving Emails and Letters From Third Parties Telling Me I Have to Pay More Money?!

Correspondence from third parties:

Once your application is submitted, the applicant’s information becomes public record. You may receive emails from third parties requesting that you pay additional funds to secure your trademark. Please note that these emails are sales emails from third parties. Any official correspondence from the USPTO will be directed to our office.