Filing a Trademark Application in the United States
Updated, September 2016
The U.S. Patent and Trademark Office (USPTO) encourages online filing via TEAS (Trademark Electronic Application System) on its website at www.uspto.gov/teas/teasplus. Over 95 percent of trademark applications are filed electronically.
1. What types of applications may be filed?
The USPTO accepts applications for registration of both traditional marks (word, design, and combination marks) and nontraditional and non-visual marks (color, shape/configuration, sound, scent, flavor, touch, and motion marks), as well as for collective marks and certification marks.
Word Mark (“standard character” drawings)—All letters and words in the mark are depicted in Latin characters; all numbers in the mark are depicted in Roman or Arabic numerals. The mark includes only common punctuation or diacritical marks and does not include a design element. The letters and/or numbers are not stylized.
Design Mark (stylized wording and/or design)—The image must be in .jpg format, scanned at a resolution of 300 to and 350 dots per inch, with a length and width of 250 to and 944 pixels. All lines must be clean, sharp, and solid, not fine or crowded, and must produce a high-quality image when copied.
Color Mark—The applicant must submit substantial proof of acquired distinctiveness. Color marks are visual and should be depicted in color drawings, accompanied by (1) a color claim naming the color(s) that is/are a feature of the mark and (2) a separate statement describing where the color(s) appear(s) and how it/they is/are used in the mark. The generic name(s) of the color(s) should be used in the color claim and location statement.
Shape (Three-Dimensional) Mark (the configuration, shape, or design of a product or product packaging)—The applicant must include a description of the mark indicating that the mark is three-dimensional and a drawing that presents a single rendition of the mark in three dimensions.
Sound Mark—The applicant must submit an audio file in electronic format (.wav, .wmv, .wma, .mp3, .mpg, or .avi format) that should not exceed 5 MB in size. The applicant must provide a detailed description of the sound, including any words or lyrics.
Scent or Flavor Mark—The applicant must submit substantial proof of acquired distinctiveness, a detailed written description of the scent or flavor, and a specimen that contains the scent or flavor that matches the required description of the scent or flavor.
Touch Mark—The mark must be represented graphically.
Motion Mark—If the mark includes motion (i.e., a repetitive motion of short duration) as a feature, the applicant may submit a drawing that depicts either a single point in the movement or up to five freeze frames showing various points in the movement, whichever better conveys the commercial impression of the mark. The applicant must also provide a detailed description of the motion.
Collective Membership Mark—The mark must be used by the members of a cooperative, an association, or any other collective group or organization.
Certification Mark—Any word, name, symbol, and/or device used by a person other than its owner to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
2. What is the basis for filing a trademark application?
A use-based application (under Section 1(a) of the Lanham Act, the U.S. federal law governing trademarks, codified at 15 U.S.C. § 1051(a)) may be filed if the applicant is using the mark in U.S. commerce at the time the application is filed.
An intent-to-use application (under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b)) may be filed if the applicant has a genuine intent to use the mark in the United States in the future; however, the mark will not be registered until the applicant proves use.
An application under Section 44 of the Lanham Act, 15 U.S.C. § 1126, may be filed by a foreign applicant who has a genuine intention to use the mark in commerce and who either has applied to register, or has registered, the mark in the applicant’s country of origin.
An application under Section 66 of the Lanham Act, 15 U.S.C. § 1141f, may be filed via the Madrid Protocol. This type of application is filed via an extension of protection from an International Registration with the World Intellectual Property Organization (WIPO). It is not filed with the USPTO directly.
An application may also claim filing bases under any combination of Sections 1(a), 1(b), and 44.
3. What are the requirements to obtain a filing date?
4. What additional requirements must all applications meet to proceed to registration?
- The name of the applicant.
- A name and address to which the USPTO should send correspondence.
- For design and other nontraditional marks (as described in FAQ #1 above), a clear drawing of the mark.
- A listing of the goods and/or services that are or will be sold or offered in connection with the mark.
- Designation of a Domestic Representative, for foreign applicantsThe filing fee for at least one class of goods or services. A filing fee for one class of goods and/or services covered by the application is required, and fees for additional classes can be submitted after filing. You may verify the current per-class filing fee by checking the USPTO website. Fees may vary depending on how the application is filed.
Trademark Fees (United States) Fact Sheet
Fees for International Registration Applications Under the Madrid Protocol Fact Sheet
- Information about the applicant:
- If the applicant is not an individual, the type of legal entity.
- Citizenship, or state or country of incorporation.
- The basis for filing (as described in FAQ #2 above).
- A verified statement. The following persons may sign an application: (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; (3) an attorney who has an actual or implied written or verbal power of attorney from the applicant.
- For marks other than standard character word marks (as described in FAQ #1 above), a description of the mark.
- When applicable, an English translation or transliteration of any non-English words in the mark.
- Any unpaid filing fees for additional classes.
5. What additional requirements apply to use-based applications?
The applicant must provide certain dates related to the first use of the goods and/or services in the application before the mark can be registered. For goods, this is the first date that goods bearing the mark were sold or transported; for services, this is the date on which services promoted under the mark were first rendered. Two dates for each class of goods and services are required: (i) the date of first use anywhere, and (ii) the date of first use in interstate commerce or commerce that the U.S. Congress may regulate (commerce across state lines, within a territory of the United States (Guam, Puerto Rico, etc.), or between the United States and another country). For many applicants, these dates will be the same. The dates may be as specific as a particular date (e.g., May 1, 2016) or as general as a year (e.g., 2016).
The applicant must also submit a sample of the mark—called a “specimen of use”—showing the mark as it is actually used in commerce in connection with at least one item in each class of goods or services. Acceptable specimens for trademarks include packaging, labels, or tags for the goods, or a display associated with the goods. Examples of acceptable specimens for service marks are advertisements and promotional materials for the services, including pages from the applicant’s website.
6. What additional requirements apply to intent-to-use applications?
An applicant must have a bona fide intent to use the mark in commerce for all of the goods and/or services specified in the application. The lack of a bona fide or genuine intent to use the mark can be used to challenge the validity of the application or resulting registration or can be used as a defense in adversarial proceedings. Therefore, an applicant should keep documentary evidence of its plans to use the mark in the event that such evidence is needed later.
Before the application will proceed to registration, the applicant must demonstrate to the USPTO that the mark is in use in U.S. interstate commerce (see FAQ #5 above) and supply a specimen of use for each class of goods or services. This document is called an Amendment to Allege Use or a Statement of Use, depending on when it is filed. Either document must (i) attest that the mark is in use in commerce by the applicant or its licensee; (ii) state the dates of first use anywhere and in U.S. interstate commerce for each class; (iii) include a specimen for each class, along with a description of the specimen; and (iv) include the requisite fee for each class.
A U.S. trademark lawyer can advise an applicant of the timing requirements involved in submitting allegations of use, what constitutes adequate use in commerce and acceptable specimens, and the options available when the mark is not in use on or in connection with all goods and services specified in the application.
7. What happens after the application is filed?
The USPTO will issue an official filing receipt by email if the application is filed electronically or by mail if it is filed on paper. A serial number will be assigned, and the details of the application should appear on the USPTO’s website within 14 days of filing. The progress of the application may be tracked at http://tsdr.uspto.gov/.
Typically, an application is examined three to four months after filing. If the USPTO examiner objects to registering the mark on substantive grounds (such as a likelihood of confusion with other marks on the USPTO register, or because the mark is merely descriptive of the claimed goods and/or services) or raises informalities that must be addressed before the application can proceed (such as requiring amendments to the description of goods and/or services or a disclaimer of generic or merely descriptive words in the mark), an Office Action specifying each objection will issue. The applicant must respond to the Office Action within six months of its mailing date or the application will be abandoned.
Once these issues are resolved, or if the examiner does not raise any objections, the application will be approved for publication in the Trademark Official Gazette and a Notice of Publication will be issued listing the publication date. Any third party that believes it will be harmed by the registration of the mark may oppose the application, or file a request for an extension of time to oppose, within 30 days of the publication date.
If the application is not successfully opposed, the USPTO will issue a Certificate of Registration for use-based applications under Section 1(a) and applications under Sections 44 and 66, or a Notice of Allowance for intent-to-use applications under Section 1(b). For intent-to-use applications, an applicant has 36 months from the Notice of Allowance date, known as the “allowance” period, to submit proof of use, or the application will be abandoned. Every six months during the allowance period, the applicant must file either a Statement of Use or a request for extension of time to file a Statement of Use indicating a continuing bona fide intent to use the mark for the goods and/or services in the application. Once the USPTO accepts the Statement of Use, the Certificate of Registration will be issued.
Additional INTA Resources
8. How long does it usually take for an application to mature to registration?
Generally, it takes around 12 months for a registration to issue if no substantive objections are raised, no oppositions are filed, and all documents are filed electronically. The process can take much longer if Office Actions are issued, necessary documentation (such as a foreign registration) is not yet available, the application is opposed, or documents are filed on paper.
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The U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure
World Intellectual Property Organization