Application Considerations

Application Considerations

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Applicant Information

The applicant information identifies the owner of the mark, not necessarily the individual filing the application. The owner may be an individual, corporation, partnership, or other type of legal entity. The application must include the applicant’s name and address and additional information depending on who the owner is.

If the owner is an individual, the citizenship of the owner(s) is required:

If the owner is a corporation or limited liability company, the state or country of incorporation is required:

If the owner a partnership, limited partnership, joint venture, sole proprietorship, trust, estate or other type of entity, the type of entity (domestic entity or foreign equivalent) is required in addition to the state or country where legally organized, along with the name and citizenship of all general partners, active members, individuals, trustees, or executors for all domestic applicants:

The applicant’s phone number, fax number, e-mail address and website may be provided, but are not required. If an attorney is filing the application on behalf of the applicant, you can designate this on the first step of the application in which case you will be prompted to provide correspondence information for the attorney prior to submission of the application, or you can designate alternate contact information for the applicant as an individual/entity to act as the correspondent.

Additional Statements

After providing information about the applicant (owner) and the mark sought to be protected, additional statements may be included with the application if appropriate. Additional information is intended to supplement the information required for the USPTO to analyze the application in conformity with the requested prompts, not an opportunity to preemptively respond to potential refusals in most situations. The applicant must provide the information in the proper field as requested or the application review process may be delayed. However, adding additional statements which are not necessary or required may result in an Office action as an initial refusal, requesting removal of the additional statements or further clarification.

The additional statements that can be provided include:

1. Disclaimer – A disclaimer is a statement that the applicant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration. The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone. See TMEP § 1213.01(c).
2. Prior Registrations – if the applicant owns prior registrations for the same or similar marks in other (or the same) classifications, the registration numbers should be entered here.
3. Translation – Enter either the English translation of the foreign wording in the mark, or specify that no meaning exists in a foreign language.
4. Transliteration – Enter either the transliteration and English translation thereof, or enter the transliteration and specify that no meaning exists in a foreign language.
5. Meaning or Significance of Wording, Letter(s), Or Numeral(s) – If any word(s), letter(s), or numeral(s) appearing in the mark have a significance in the relevant trade or industry or as applied to the goods and/or services in the application, applicant should specify the significance to avoid inquiry by the examining attorney, e. g., “X-10” could be used as a specific model number, and this significance should be noted. If it appears that the word(s), letter(s), or numeral(s) may have significance, particularly to someone unfamiliar with the specific usage of the word(s), letter(s), or numeral(s), but in reality the usage is only as a trademark, applicant should indicate that there is no significance in the relevant trade or industry or as applied to the goods and/or services listed in the application, no geographical significance, and no meaning in a foreign language.
6. §2(f) Claim of Acquired Distinctiveness – A distinctiveness claim can be made in whole or in part based on use, prior registrations, or evidence. If based on use, the following statement will be added to the application: “The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use in commerce that the U. S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.” If based on prior registrations, enter the registrations for the same or similar marks, and the following statement will be included on the application: “The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U. S. Registration No(s). ____________.” If based on evidence, upload relevant evidence (up to 50 .jpg images or .pdf documents), in which case the following statement will be included on the application: “The mark has become distinctive of the goods/services, as demonstrated by the submitted evidence.”
7. Name(s), Portrait(s), Signature(s) of Individual(s) – If a name(s), portrait(s), and/or signature(s) shown in the mark identifies a particular living individual, enter the name of the individual being identified. In addition, attach a .jpg or .pdf file showing the actual consent of the named individual to the use and registration of his or her name. If the mark includes a name(s), portrait(s), and/or signature(s), but this does NOT identify a particular living person, then select the selection indicating so.
8. Use of the Mark in Another Form – Enter both the date of first use anywhere and the date of first use in commerce, in the format MM/DD/YYYY, e. g., 12/03/1998. Both dates may be the same, or the date in commerce may be later than the first use anywhere; however, the date of first use in commerce may not precede the date of first use anywhere. The statement will be added as follows: The mark was first used anywhere in a different form other than that sought to be registered on ___________, and in commerce on ________.”
9. Concurrent Use – A request for issuance of a registration based on a geographical restriction based on rights acquired by the concurrent use of the mark, either with the owner of a registration or application for a potentially conflicting mark, or a common law user of a potentially conflicting mark, can be made by specifying the goods and geographic area for which registration is sought.
10. Miscellaneous Statement – This section should only be used to enter information for which no other section of the form is appropriate. The entry should be as concise a statement as possible, and consist of factual information that follows, as closely as possible, the format set forth for the other additional statements, above.

Description of Goods and/or Services

A precise and accurate description of goods/services must be provided along with the application. For TEAS Plus applications, the Trademark Identification Manual (“ID Manual”) must be used, which is comprised of a listing of acceptable identifications of goods and services compiled by the Office of the Administrator for Trademark Identification, Classification and Practice. The ID Manual contains identifications of goods and services and their classifications that are acceptable in the USPTO without further inquiry by an examining attorney (provided such identification and classification is supported by the specimens of record).  The ID Manual is updated periodically, and the entries in it are more extensive and specific than the Alphabetical List under the Nice Classification that is published by WIPO.

Using identification language from the ID Manual enables trademark owners to avoid objections by examining attorneys concerning indefinite identifications of goods or services; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.  Therefore, even if the identification is definite, examining attorneys may inquire as to whether the identification chosen accurately describes the applicant’s goods or services.

In a TEAS Plus application, the application must include correctly classified goods and/or services, with an identification of goods and/or services taken directly from the ID Manual.  37 C. F. R. §2.22(a)(8); TMEP §819.01(g). The TEAS Plus form will automatically provide the correct class for goods/services selected from the USPTO ID Manual, and it will not permit the applicant to edit the “Classification” field. In a TEAS application, the applicant may include correctly classified goods and/or services taken from the ID Manual or may create and enter a listing of recognizable goods and/or services.

To enter an identification of goods/services, the TEAS Plus form will instruct the applicant to enter search terms appropriate for the desired goods/services within the identified field on the TEAS Plus form.  The TEAS Plus system will then retrieve relevant entries from the USPTO ID Manual, and the applicant must select one or more of the entries. Some USPTO ID Manual entries require the applicant to complete parenthetical information (e. g., “specify the function of the programs”).  The display of such entries will include a free-text field so the applicant can type the necessary information, following the instructions within the listing.  If an applicant attempts to use such a listing without completing the required information, TEAS Plus will generate an error message. If any desired item does not appear in the list displayed on this screen, click on the “Add Goods/Services by Searching IDManual” button. This will return you to the search portion of the form.

Name and Address for Correspondence

The correspondence name and address is used to designate where the USPTO will send communications regarding the application and may be used to designate the applicant or the applicant’s legal representative (or in the case of an applicant residing outside the United States, a domestic representative).

Signature

The application must be submitted by someone properly authorized to sign a verification on behalf of the applicant, which can either be:

• A person with legal authority to bind the applicant, such as a duly authorized director or other party authorized to act on behalf of the applicant; or
• A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant, such as someone who can attest to the veracity of the statements and dates of use provided in the form of a declaration; or
• An attorney who has actual written or verbal power of attorney or an implied power of attorney from the applicant.

In a TEAS application, you do not apply a conventional signature. Instead, you enter a “symbol” that you have adopted as a signature. The USPTO will accept any combination of letters, numbers, spaces and/or punctuation marks placed between two forward slash (“/”) symbols, e.g.: /John Doe/.

Filing Fee

Upon submission of the declaration and signature, payment of the application filing fee must be made via USPTO Deposit Account or credit card. Upon successful processing of payment, the USPTO will assign the application a serial number and provide a .pdf confirmation of the application. 

Drawing^[1]Some of the material for this section is taken from the USPTO, “Drawing of your mark,” available at https://www.uspto.gov/trademarks-getting-started/trademark-basics/mark-drawings-trademarks. No … Continue reading

Your application must include a clear “drawing” or depiction of the trademark you want to register. We also call a “drawing” a “mark drawing” or a “representation of the mark.” Federal trademark law requires that you provide a drawing with your application for us to assign the application a filing date and move it toward registration.

How are drawings used?

Once your application has a filing date, we upload the drawing of your trademark into our automated records. The public can view these records online using the Trademark Electronic Search System (TESS) and the Trademark Status and Document Retrieval (TSDR) databases. This publicly available information about your trademark may help you avoid subsequent legal conflicts.

The trademark that appears in your drawing will also appear on your registration certificate.

Which type of drawing should I use and which provides broader protection?

This decision depends on many factors, including the mark you use most often with your goods or services, which words or designs are important for you to protect, and how much money you plan to spend on protecting the mark.

For example, companies often separately register various components of a mark that they use together and separately. A company might register its business name, a slogan, and a logo to ensure the broadest possible protection. This gives companies flexibility in their promotional matter, social media, and webpages to mix and match marks (sometimes using a slogan or design alone, or a design with the slogan) and still protect all their marks.

Some companies, however, can afford to register only one mark, so they might focus instead on registering the one or two components they use most often and that are most important to their brand. Because this decision is important, an applicant may wish to hire a private attorney specializing in trademark matters.

The two types of drawings

In your application, you can apply for one of the two types of drawings:

1. A standard character drawing shows a mark in text only (without a design) in no particular font style, size, or color.

Examples of standard character marks:1 NIKE, TARGET, VW.

2. A special form drawing shows a mark with stylization, designs, graphics, logos, or color. These are also called “stylized marks” or “design marks.”

Examples of special form marks:

You can apply for only one mark per application, which means you can have only one drawing. Generally, we will not assign your application a filing date or move it toward registration if your application has two or more drawings of different marks (or one drawing of multiple marks). For more information about the requirement for only one mark, see the Trademark Manual of Examining Procedure (TMEP) §807.01.

1 These marks are registered as follows (from left to right):  U.S. Registration Nos. 3081688, 5167255, and 2992649.

2 These marks are registered as follows (from left to right):  U.S. Registration Nos. 2209815, 5200640, and 3032408.

Protection provided by a standard character vs. special form drawing

You must decide whether to apply for a standard character drawing or a special form drawing (you cannot choose both). If you register your mark in standard characters, you will receive the broadest form of protection for your mark because your registration will encompass the wording itself, without limiting the registered mark to a specific font, style, size, or color. If you register your mark in special form, your mark will be protected only for the particular depiction you provided.

When is a special form drawing required?

You must submit a special form drawing when your mark includes words, letters, or numerals presented in a way that creates an uncommon or “special” impression that would be altered or lost if the text were registered alone.

A special form drawing is also required if you want your registered mark to include specific colors or underlining, superscripts, subscripts, exponents, emoticons, or characters and symbols that are not in our standard character set (see also “Requirements for color marks”).

Here are two examples where a special form drawing was required:

• The mark appeared on the drawing as LABID (for use with prescription drugs) but on the specimen as LáBID. “BID” is a common abbreviation of the Latin “bis in die,” used with prescription drugs to mean twice a day. Standard characters did not convey that BID stood apart from the other letters because of the specific font style used on the specimen.
• The mark appeared on the drawing as FOR LIFE INSURANCE SEE US (for insurance services), but on the specimen the “US” portion was underlined and appeared in much larger lettering. The actual use on the specimen suggested a double meaning, with “US” standing for both the applicant’s name “United Services” and the pronoun “us.” Standard characters did not convey this double meaning.

Requirements for standard character drawings

You must submit a depiction of the mark as well as a standard character claim.

The depiction must:

• Show text only (no graphics, logos, or designs; no color or stylization)
• Display the mark in black on a white background
• Show all letters and words in Latin characters (A-Z)
• Show all numerals in Roman (VII, IX) and/or Arabic (0-9) numerals
• Include only common punctuation (colon, dashes) and diacritical marks (accents, tildes).

The standard character claim

The standard character claim is a statement that the mark consists of standard characters without claim to any particular font style, size, or color. This statement is automatically provided in the initial online application if you select “Standard Characters.”

For a complete list of all the characters and symbols you can use in a standard character mark, view our standard character set. For example, standard character marks may include symbols such as the dollar ($) or Euro (€) sign; “at” sign (@); degree sign (°); ampersand (&); number, pound, or hashtag sign (#); or asterisk (*).

Standard character marks cannot include:

• Underlining
• Superscripts (like the “1” at the end of this line¹)
• Exponents (like the “2” in MC²)
• Subscripts (like the “2” in CO₂)

You cannot use a standard character drawing if your mark includes any elements not found in our standard character set, or includes standard characters that form shapes or designs, such as emoticons.

Our databases will display a standard character mark in a simple standardized typeface. For more information about standard character drawings, see the Trademark Manual of Examining Procedure (TMEP) §807.03-807.03(i).

Requirements for special form drawings

You must submit a depiction of the mark as well as a description of the mark.

The depiction must:

• Display the mark—if the mark is not in color—in black on a white background, or—if the mark is in color—in color on a white background (see “Requirements for color marks” below)
• Display a high-quality image of the mark drawing that reproduces well with all lines appearing clean, sharp and solid, and not fine or crowded.

To claim special form:

In addition to submitting a special form drawing that meets the requirements above, you must also submit a statement consisting of an accurate and concise description of everything appearing in the mark: all text and design elements, and the location of any color, if relevant.

For example, the Target design mark of a bullseye (this mark is registered as U.S. Registration No. 5200640)  in the section above called “How are drawings used?” includes the following description: “The mark consists of concentric circles representing a target or bullseye design.” A description of your mark cannot, however, include a registered mark or elements not appearing in the mark.

In the initial online application, if you select “Special Form,” you will enter the description in the text field following “The mark consists of.”

We will assign all design elements in your mark a numerical “design code” from our Design Search Code Manual that enables us to properly search those design elements for conflicting design marks. The design code will appear in our databases.

For more information about special form drawings, see TMEP §807.04-807.04(b).

DISCLAIMER: References to particular trademarks, service marks, products, services, companies, or organizations appearing on this page are for illustrative and educational purposes only and do not constitute or imply endorsement by the U.S. government, the U.S. Department of Commerce, the U.S. Patent and Trademark Office, or any other federal agency.

Requirement for mark in drawing to match mark on specimen or foreign registration

Depending on your filing basis, the mark in your drawing has to match the mark on either your specimen or your foreign registration.

• If your application was filed based on use in commerce under Section 1(a) of the Trademark Act, or you are now filing an allegation of use (AAU/SOU), the mark in your drawing must show a “substantially exact” representation of the mark on your specimen. With few exceptions, the marks have to match.
• If the marks do not match, and the differences are material or significant (see below on changes to mark after filing your application), you must submit a different specimen showing the mark on the drawing or amend the application filing basis to intent-to-use under Section 1(b), (or withdraw the AAU) and submit a specimen (that matches) at a later date.
• If your application was filed based on a foreign registration under Section 44(e), the mark in your drawing must show a “substantially exact” representation of the mark in your foreign registration. If the marks do not match, you must change your application basis to a Section 1(a) or 1(b) basis, if you can satisfy all the requirements. If you cannot, your mark will not be permitted to register.

For more information about the requirement for the mark in drawings to match the mark on specimens or foreign registrations, see TMEP §807.12(a)-(b).

Requirements if you change your drawing after you file your application

People often rely on our database of trademarks to see what trademarks have been applied for before selecting a trademark for their business, so federal law does not allow you to make any material or significant changes to the trademark in your drawing after you file your application.

Generally, adding or deleting significant text or design elements to your trademark is likely to be a material change and will not be accepted. For example:

• Adding the wording MR. SEYMOUR to the design above was a material change because it added a naming element that changed the overall commercial impression of the character design.
• Adding the letter “t” to TACILESENSE to read TACTILESENSE was a material change because it turned an otherwise meaningless word into a term that consisted of the two words “tactile” and “sense.”
• Adding a crown and banner design to the wording THE WINE SOCIETY OF AMERICA was a material change because it changed the visual impression of the text phrase alone, and thus changed the overall commercial impression.
• You can change the mark in your drawing only if the change does not materially or significantly alter the mark as compared to the mark shown in the previously submitted drawing. If we determine that the old and new forms of the mark create the same overall impression, the change is not considered material or significant.

Small, insignificant changes may be accepted to the mark drawing, such as:

• Deleting a TM, SM, or ® symbol
• Deleting extraneous informational matter (net weight or volume, lists of contents, company addresses)
• Adding punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks (unless it significantly changes the mark)
• Changing a special form drawing from black and white to specific colors.

We generally do not permit changes to marks in drawings in requests for an extension of protection to the United States filed under Section 66(a). International and U.S. federal law do not permit these types of marks to be amended.

For more information about changes to the mark in drawings, see TMEP §§807.13-807.14, 1904.02(j).

Drawing requirements for color marks

If you have a color mark, you must include in your application:

• A special form drawing showing your mark in color on a white background
• A statement that color is a feature of the mark, listing all the colors shown in your mark, including black, white, and gray. For example, “The colors black and red are claimed as a feature of the mark.” When listing colors, you must use common everyday color names to identify the colors in your mark, such as pink, yellow, and blue.
• A mark description that identifies where the various colors appear in the mark. For example, “The mark consists of a black hat and a red heart with the words BLACK HAT CHOCOLATES in black stylized letters.” If black, white, or gray represent background, outlining, shading, or transparent areas and are not part of your mark, you must include this information in your mark description.

For more information about color marks, see TMEP §807.07-807.07(g).

Drawing requirements for unusual marks

• 3D marks and trademark trade dress (3D product design or product packaging), or service mark trade dress – you generally need to provide a special form drawing showing a single rendition of your mark in three dimensions.
• Motion marks – you must provide a special form drawing showing a single point in the movement, or a square showing up to five freeze frames of various points in the movement of your mark.
• Scent marks – you must provide a standard character drawing with “scent mark” typed as the mark.
• Sound marks – you must select “sound mark” as your mark type. You must then submit the actual sound of the sound mark in a .wav, .wmv, .wma, .mp3, or .avi format that does not exceed 5 megabytes in size.

We also require a detailed written description for these unusual marks because the mark drawing cannot always adequately represent them. For 3D and trade dress marks, you must mention in your description that the mark is three-dimensional.