What is a Trademark?

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name used in connection with goods (e.g., Nike for shoes, Ford for automobiles, Microsoft for software). Although generally used to refer to all four classes of marks, the true nature of the trademark is as a brand identifier for actual goods alone.

How do I protect my Trademark?

The traditional means of protecting your trademark is to file an application to register the same with the United States Patent and Trademark Office (“USPTO” and “USPTO Trademark”). Of note, trademarks can also now be protected by securing a record of them on the public digital registry (“PDR Trademark”).

Does my Trademark need to be in use to be protected?

No. You can protect your trademark with the USPTO when it is in use through a use-based application or even prior to it being used through an intent-to-use application. In short, once you come up with the name you want to use as a trademark you can file to protect it with the USPTO.

What is a Use-Based Application?

A Use-Based Application is an application filed to register a trademark with the U.S. Patent and Trademark Office which is based upon the applicant’s existing use of a trademark. To file a Use-Based Application the applicant needs the owner information for the trademark, the trademark, a description of the goods or services with which it is used, the date of first use of the mark and a specimen of use. The specimen of use is a sample of how the mark is used in commerce filed with the U.S. Patent and Trademark Office. For goods, the best example of a specimen of use is a picture of the packaging in which the goods provided displaying the mark thereon (e.g., the Nike swoosh on the side of a shoe box to show use of the mark in connection with shoes).

What Constitutes Use?

For goods, use occurs when goods with the mark displayed on the goods or the packaging for the goods are sent across state lines. With services, use occurs when offering services to those in more than one state or rendering a service, which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

What is an Intent-to-Use Application?

An Intent-to-Use Application is a way to reserve a trademark which is not currently in use for future use by the applicant. All that is needed to file an Intent-to-Use application is the owner information for the trademark, the trademark, a description of the goods or services with which it is used, as well as a statement that the applicant has a bona fide intent to use the trademark in the future. Unlike a Use-Based Application, if an Intent-to-Use Application is approved for publication and published without opposition it does not proceed forward to registration. Rather, U.S. Patent and Trademark Office issues a Notice of Allowance permitting the applicant six months to file a Statement of Use (See Below) establishing that the trademark is now used in commerce.

What is a Statement of Use?

A Statement of Use is the filing which converts an Intent-to-Use Application into a Use-Based Application. It may only be filed after receipt of the Notice of Allowance but MUST be filed within the expiration of the sixth-month period after expiration of the Notice of Reliance or most recent extension request.

What if I need more time to file my Statement of Use?

You can get additional time to file your Statement of Use by filing for an extension. Once an Intent-to-Use Application receives its Notice of Allowance the applicant has 6 months from the date of the Notice of Allowance in which to file a Statement of Use or an Extension of Time in Which to File a Statement of Use. The extension of time permits the applicant to have another six (6) months in which to file its Statement of Use. If the trademark is still not in use at that time the applicant may request a second Extension of Time in Which to File a Statement of Use. In all, five Extension(s) of Time in Which to File a Statement of Use will be permitted.

What is a Certificate of Registration?

The document which is provided to you once your mark is registered noting all information pertinent to your registration (e.g., the mark, the goods or services with which it is used, the owner of the mark, etc.)

When is it proper to use the federal registration symbol ® with the mark?

The federal registration symbol may only be used once the mark is registered with the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

How long does a trademark registration last?

A trademark registration is generally valid for 6 years and then must be renewed. Thereafter, it must be renewed on or about the ten-year anniversary of the registration. Put another way, a registered trademark must be renewed between the fifth and sixth anniversary of its registration, again between the nineth and tenth year anniversary, and every successive nineth and then year anniversary (e.g., 19th-20th year, 29-30th year, etc.).

Can I transfer the ownership of a trademark to someone else?

Yes. A registered trademark, or a trademark for which an application to register has been filed is assignable. Trademark Assignments must be recorded in the U.S. Patent and Trademark Office.

Does a USPTO Trademark Registration Protect my Trademark Outside the of the U.S.?

No. A U.S. Federal Registration only protects your mark here in the U.S. However, any trademark owner with an application filed in or a registration issued by the USPTO can extend protection of that trademark into over 80 other countries through a treaty known as The Madrid Protocol.

Why Should I have The Trademark Company handle the protection of my Trademark?

Our expertise in handling thousands of applications over the years equates to faster registration of your mark while giving you the peace of mind that your brand identity is being watched over by professionals. We offer the best and most comprehensive services at the most value-conscious prices.

Have other questions?

If you have any other questions just give us a call at (800) 906-8626 or submit them to us online at Contact Us.

Trademark FAQs