Who can apply
An application to register a trademark must be completed by the owner of the mark. Typically the owner of a mark is the person who applies the mark to goods that he or she produces, or uses the mark in the sale or advertising of services that he or she performs
The application form
The USPTO prefers that applications are filed through the Trademark Electronic Application System (TEAS) available at http://www.uspto.gov .
The amount of the trademark application filing fee varies depending on whether the application is filed through TEAS or on paper. The applicant has three choices:
- a paper application at 375.00 USD per class;
- a regular TEAS application at 325.00 USD per class; or
- a TEAS Plus application at 275.00 USD per class.
The application must be in English language. The USPTOs pre-printed scannable form may be obtained by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. The USPTO does not generally require the submission of original documents, so the applicant may file a copy of a signed application.
Name of the applicant
The applicant should be set out in its correct legal form. A corporate applicant should be identified by the name set forth in the article of incorporation. If the applicant is an individual person then , the individuals name should be set forth.
Citizenship of the applicant
An application for registration must specify the applicants citizenship or the state or nation under whose laws the applicant is organized. An individual applicant should set forth the country of which he or she is a citizen. If an applicant asserts dual citizenship, the applicant must choose which citizenship will be printed in the Official Gazette and on the registration certificate.
Address of Applicant
The written application must specify the applicant mailing address. For an individual the application must set forth either the business address or the residence address. The application must also include an address for correspondence concerning the application. This is referred to as the correspondence address.
Verification and Signature
An application must include a statement hat is verified by the applicant or by someone who is authorized to verify facts on behalf of the applicant, such as their legal representative.
Form and wording of Verification in Applications
The format of the verification in an application under §1 or §44 of the Trademark Act may be: (1) the classical form for verifying, which includes an oath or (2) a declaration.
Verification with an oath
The verification is placed at the end of the application. It should be dated and set forth the venue or location of the swearing; followed by the signer’s name (or the words “the undersigned”); then the necessary statements, concluding with the signature. After the signature, there should be the stamp for the officer administering the oath, and an indication of the officer’s authority (such as notarial seal).
Verification (with oath) made in a foreign country may be made: (1) before any diplomatic or consular officer of the United States; or (2) before any official authorized to administer oaths in the foreign country.
Verification documents produced in countries that are members to the Hague Convention should bear or have appended to the document an apostille.
Members, participating in this Convention are:
Anqulla, Antigua & Barbuda, Argentina, Armenia, Australia, Austria, Bahamas, Bailiwick of Guernsey, Barbados, Belarus, Belgium, Belize, Bermuda, Bosnia & Herzegovina, Botswana, British Antarctic, British Guiana (Guyana), British Soloman Islands, Cayman, Croatia, Cyprus, Dominica, El Salvador, Falkland Islands, Figi, Finland, France, French Guiana, Germany, Gibraltar, Gilbert & Ellice Islands (Kiribati), Greece, Grenada, Guadeloupe, Hong Kong, Hungary, Isle of Man Jersey, Israel, Italy, Japan, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malawi, Malta, Marshall Islands, Martinique, Mauritius, Mexico, Montserrat, Netherlands, New Hebrides (Vanuatu), Norway, Panama, Portugal, Reunion, Saint Christopher & Nevis, Saint Helena, Saint Lucia, Saint Vincent, San Marino, Seychelles, Slovenia, South Africa, Southern Rhodesia (Zimbabwe), Spain, Suriname, Swaziland, Switzerland, Tonga, Turkey, Turks & Caicos, United Kingdom & Northern Ireland, and the Virgin Islands.
Declarations instead of an oath
When a declaration is used in lieu of an oath, the party must include in place of the oath (jurat) the statement that “all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true.” Preferably, this language is placed at the end of the document.
In addition, the declaration must warn the declarant that willful false statements and the like are punishable by fine or imprisonment.
Rule 2.20 requires that the warning contain the additional language that such statements may jeopardize the validity of the application (or document) or any registration resulting therefrom. A declaration under 37 C.F.R. §2.20 should read as follows:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
___________________________
(Signature)
___________________________
(Print or Type Name and Position)
___________________________
(Date)
___________________________
A declaration that does not attest to an awareness of the penalty for perjury is unacceptable also the signatory must personally sign his or her name. It is unacceptable for a person to sign another person’s name to a declaration including pursuant to a general power of attorney.
Signature
In a document filed through TEAS or the Electronic System for Trademark Trials and Appeals (“ESTTA”), the party filing the document does not apply a conventional signature. Instead, the filer does one of the following:
(1) The filer enters any combination of letters, numbers, spaces and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (“/”) symbols.
Examples of acceptable signatures include /john doe/, /drl/, and /544-4925/. The signatory’s name should be set forth beneath the signature;
(2) The document is completed online, printed in text form, and mailed or faxed to the signatory. The signatory signs the document in the traditional pen-and-ink manner. The signed document is scanned to create a .jpg or .pdf image file, which is transmitted electronically through TEAS; or
(3) The document is completed online, and e-mailed to the signatory for electronic signature from within TEAS. The signatory signs the document and it is automatically returned via TEAS to the party who requested the signature.
The signatory must personally sign the document. In a TEAS submission, the signatory must manually enter the elements of the electronic signature.
Identification and classification of goods and services
An application must include a list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.
The identification of goods or services must be specific, definite, clear, accurate, and concise. The items listed in the identification of goods and services must be limited to those on or in connection with which the applicant uses or has a bona fide intention to use the mark in commerce.
With few exceptions, an identification of goods and services will be considered acceptable if it:
Describes the goods and/or services so that an English speaker could understand what the goods and/or services are, even if the grammar or phrasing is not optimal;
Meets the standards (not necessarily the language) set forth in the Acceptable Identification of Goods and Services Manual;
Is not a class heading; and
Is in the correct class.
Example: “Blankets” is not acceptable without qualifying wording because it is not particular enough to identify the kind of blanket on which the mark is used, e.g., fire blankets (Class 9), electric blankets (Class 11), horse blankets (Class 18), and bed blankets (Class 24).
There are five filing bases:
(1) use of a mark in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a);
(2) bona fide intention to use a mark in commerce under §1(b) of the Act, 15 U.S.C. §1051(b);
(3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act, 15 U.S.C. §1126 (d);
(4) ownership of a registration for the mark in the applicant’s country of origin under §44(e) of the Act, 15 U.S.C. §1126(e); and
(5) extension of protection of an international registration to the United States, under §66(a) of the Act, 15 U.S.C. §1141f(a). 37 C.F.R. §2.34.
Use in commerce
In an application that is based upon use of the mark in commerce, a 1(a) application, the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application on or before the filing date of the application.
The application must include a verified statement (i.e., a statement supported by an affidavit or declaration under 37 C.F.R. §2.20) that the mark is in use in commerce.
If the verification is not filed with the original application, the verified statement must allege that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.
The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce--
(1) on goods when--
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
Some factors that may be important in determining compliance with the statutory requirement for a “bona fide use of a mark in the ordinary course of trade” are:
(1) the amount of use;
(2) the nature or quality of the transaction; and
(3) what is typical use within a particular industry.
The scope of federal trademark jurisdiction is commerce that may be regulated by the United States Congress. Types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country.
“Territorial commerce” is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, the United States Virgin Islands) or between the United States and a territory of the United States.
Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website.
Dates of use
When asserting use of a mark in commerce, an applicant must specify the date of first use anywhere and the date of first use in commerce, either in an original application under §1(a) of the Trademark Act, or in an amendment to allege use or statement of use in an application under §1(b). The dates of use must be verified, i.e., supported by an affidavit or declaration.
Electronically filed specimens
In an electronically filed application, allegation of use, affidavit of use under 15 U.S.C. §1058 of the Trademark Act, or response to an Office action, the specimen(s) must be in .jpg or .pdf format.
If the nature of the specimen is unclear, the applicant should explain what it is and how it is used.
Paper filed specimens
When the applicant cannot supply an actual specimen meeting the size requirements (flat and no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) due to the nature or manner of use of the mark, the application, allegation of use, affidavit of use, or response must include a facsimile, such as a photograph, photocopy, or other acceptable reproduction, that is a suitable size and clearly shows how the mark is used on or in connection with the goods or in the sale or advertising of the services.
Facsimiles should show the whole article to which the mark is applied, or enough of the article so that the nature of the article can be identified. The mark and all other pertinent written matter on the article should be clear and legible.
For example, product photographs appearing on folders or brochures that show the trademark on the goods are acceptable facsimiles. It is permissible to show the complete article in one photograph and the written matter in another, so that the written matter will be legible, or to show different views of an article either in a single photograph or in separate photographs.
A copy or reproduction of the drawing is not an acceptable specimen or facsimile.
