Welcome to the Trademark USA website, set up to help you obtain trademark protection for one of your most valuable commercial assets. This website is both an informational website for explaining the trademark process and a forum for starting the trademark application process. The website is operated and maintained by Florida Board Certified Intellectual Property Attorneys who will personally help you traverse through the trademark process before the United States Trademark Office, the State of Florida and/or most foreign trademark offices. We are a boutique law firm that specializes in obtaining trademarks before the U.S. Patent and Trademark Office.
After reading the information below, kindly fill out the online form and submit it to us for review. We will perform a "knock out search" free of charge and let you know if your mark has already been registered by another. We will e-mail you back our results and an estimated fee for filing the application. Please note that a "knock out search" is a limited search and does not qualify as a full trademark search. Knockout searches are intended to find prior filings for very similar marks (e.g. identical or nearly identical marks). Accordingly, knockout searches do not anticipate other types of rejections such as mere descriptiveness and there is a possibility that your mark may be refused. We offer no guarantees.
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Trademark Basics
Our goal is to achieve the best possible protection for our clients. Whether your work is best protected by way of a trademark, trade dress, copyright, or design patent --or even all of these -- we shall advise you with your interests in mind and the objectives of your particular business. We can secure your rights in every aspect of trademark protection, including all phases of federal and state registration, opposition, cancellation, litigation support, and enforcement procedures. Our experts are fully versed in the application process in the United States, in the international filing systems, and in a multitude of countries around the world.
What is a Trademark/Service Mark?
Any word, name, or symbol qualifies for trademark protection if it is used by a person (or that person has a bona fide intention to use the mark) in commerce to identify and distinguish his goods/services from those made by others and to indicate the source, even if the source is unknown. The purpose of the trademark law is to protect consumers from confusion as to the source of the goods and services by allowing producers exclusive rights in a mark reflecting goodwill and quality reputation they have developed.
By the way, a service mark is also a trademark. Service marks are marks that are used in the context of services. Since many marks are used for goods and for services, the words trademark or mark are generically used for all marks, including service marks. The trademark owner is the first to use the mark in a given geographic area in connection with particular goods or services. State common law grants ownership by virtue of being the first person to use the trademark. Federal law does not create trademark ownership, nor does federal law preempt state law. The federal Lanham Act, however, provides a federal registration system for trademarks which are used in interstate commerce. In addition, the Lanham Act provides procedural rights and enforcement mechanisms. Any infringement of a trademark must be based on the likelihood of (and actual) consumer confusion.
By the way, a service mark is also a trademark. Service marks are marks that are used in the context of services. Since many marks are used for goods and for services, the words trademark or mark are generically used for all marks, including service marks.
What is the Difference Between a Trademark and a Copyright?
The primary distinction between a trademark and a copyright is as follows: a copyright is established as soon as the work is fixed (pen to paper, music to media, photograph on film/card, etc.). There's no need to register. The rights attach immediately. Registration is only required if the copyright owner wishes to enforce his/her rights in court. No rights attach to a trademark simply upon creation. In the context of trademarks, use is the key. A trademark need not be original or creative; trademarks do not fall into the public domain after a predefined period of time; and the exclusiveness of use is limited by geographic area and by the type of product and service. For more, check out the FAQ section at the Trademark Office.TradeMark Application & Registration
Do not use the symbol ® or the designation "registered trademark" until the mark is actually registered.
If you do, registration may be refused or it may be taken away.
Information needed for filing a trademark:
(1). Name of the applicant (e.g. individual name(s), corporate name).
(2). Physical address of the applicant, e-mail address and phone number.
(3). Citizenship of applicant or state of incorporation.
(4). Name of the mark.
(5). Filing basis (explained below).
(6). List of goods or services.
Filing Basis
The United States Trademark Office accepts applications for trademarks that may be based on any of several different filing bases. The four primary categories are:
(1) Based on Use - Section 1(a) - The mark has been used in commerce which the U.S. Congress may regulate, namely, interstate commerce or importation into the U.S. from abroad. The applicant must state that the mark has been used and indicate the exact dates of such use (i.e., the first time that the mark was used anywhere in the world and the first time the mark was used in, or imported into, the United States. The two dates may be the same). The Section 1(a) filing basis requires you to provide a specimen (see specimens section).
2) Intent to Use - Section 1(b) - The mark has not yet been used in commerce, but the applicant has a bona fide intent to use the mark in such commerce. The mark will be registered by the U.S. Trademark Office only after the mark has been used and the applicant files a corresponding Statement of Use.
(3) Foreign Priority - Section 44 - An applicant may claim the priority of a foreign trademark application under § 44(d) if the U.S. application is filed within six months of the foreign filing or the priority of a foreign trademark registration under § 44(e). The applicant is required to state that he/she has a bona fide intent to use the mark in U.S. commerce and the mark will be registered by the U.S. Trademark Office only after a certified copy of the foreign registration has been filed.
(4) Extension - Section 66(a) - The owner of an international registration may file a request for extension of protection of that registration to the United States. The request for extension to the United States may be included in the international application, or in a subsequent designation made after the International Bureau registers the mark. The request for extension will be electronically transmitted to the U.S. Trademark Office, where the request for extension of protection to the United States will be referred to as a "§66(a) application."
Strength of Marks
1. Generic Terms - cannot be registered. A mark is generic when it is a term commonly used as the name or description of a certain kind of good. In determining whether or not the term is generic, one of three factors must be fulfilled: First, the word/expression has such an inherent meaning in ordinary language or the public uses it to identify goods of other producers as well. Second, the term is a compound word which, while not previously used, suggests the content of the description. For instance, the word “screenwipe” connotes the use and the constitution of the goods, if used for articles to be used for wiping screens. Third, the primary significance test ascertains the primary meaning of the term to the prospective purchaser of the product. A generic term cannot be protected and it cannot become a monopoly. This applies as well to phonetic equivalents (phone = fone) and, in general, to foreign language translations (Bier, birra, cerveza, etc. cannot be registered in class 32 for beer).For example, the word "apple" could not function as a trademark for apples.
2. Merely Descriptive - may or may not be registered. Where a mark specifically describes a characteristic or ingredient of an article, it is considered descriptive. Such a term may become a valid trademark upon acquiring a secondary meaning: the mark has become distinctive of the producer’s goods and/or the primary significance in the mind of the consumer is not the product but the producer. Here, the mark no longer identifies the product but the producer and his goodwill. The protection afforded by a descriptive mark is not absolute. Other producers may still use the word in its generic form and to denote generic products. This is a concept similar to the copyright fair use defense. However, the competing producer must not use the mark in its non-generic sense (e.g. Cat Chow® for cat food). A descriptive mark can be registered only after the mark has been used virtually exclusively in the context of the goods for an extended period of time. In some cases, a mark that has been categorized as "merely descriptive" may be recorded on the Supplemental Register. After five years on the Supplemental Register and after the mark has been used "substantially exclusively" for five years, the "merely descriptive" mark is said to have acquired secondary meaning and the mark may be registered on the Principal Register, subject to the filing of a new trademark application. For example, AMERICAN AIRLINES and INTERNATIONAL BUSINESS MACHINES are descriptive marks.
3. Suggestive Marks - may be registered. A suggestive mark hints at or suggests the nature of a product or service or one of its attributes without actually describing the product or service. Examples of suggestive marks are AIRBUS for airplanes and NETFLIX for streaming services.
4. Arbitrary Marks - the best mark of all - The best mark is an arbitrary mark. A word, for instance, which is not defined in a dictionary as having a meaning in a modern language is considered arbitrary. An onomatopoeic expression (a word which phonetically imitates a natural sound) may be considered arbitrary, even if it suggests the product. An arbitrary mark allows the highest level of protection. The word either has no meaning in the language at all (it is “coined”, e.g. Kodak®, Exxon®) or it has no meaning in connection with the goods (e.g. Crest® Toothpaste)
Product ("Goods") Classes
All trademarks are associated with a listing of goods or services. All goods and services are divided into 45 class. The government charges a fee of $350.00 for each class of goods in your identification of goods and services. The classes include:
| Class # | Product Type | Description | |
|---|---|---|---|
| Class 1 | Chemical Products | Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. | |
| Class 2 | Paint Products | Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. | |
| Class 3 | Cosmetics & Cleaning Products | Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. | |
| Class 4 | Lubricant and Fuel Products | Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting. | |
| Class 5 | Pharmaceutical Products | Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. | |
| Class 6 | Metal Products | Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; nonelectric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores. | |
| Class 7 | Machinery Products | Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs. | |
| Class 8 | Hand Tool Products | Hand tools and implements (hand-operated); cutlery; side arms; razors. | |
| Class 9 | Computer & Software Products and Electrical & Scientific Products | Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting. | |
| Class 10 | Medical Products | Surgical, medical, dental, and veterinary apparatus and instruments, artificial limbs, eyes, and teeth; orthopedic articles; suture materials. | |
| Class 11 | Environmental Control Instrument Products (lighting, heating, cooling, cooking) | Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes. | |
| Class 12 | Vehicles & Products for locomotion by land, air or water | Vehicles; apparatus for locomotion by land, air, or water. | |
| Class 13 | Firearm Products | Firearms; ammunition and projectiles; explosives; fireworks. | |
| Class 14 | Jewelry Products | Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments. | |
| Class 15 | Musical Instruments Products | Musical instruments | |
| Class 16 | Paper & Printed Material Products | Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks. | |
| Class 17 | Rubber Products | Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal. | |
| Class 18 | Leather Products (not including clothing) | Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. | |
| Class 19 | Non-Metallic Building Material Products | Building materials (non-metallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal. | |
| Class 20 | Furniture Products | Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. | |
| Class 21 | Houseware and Glass Products | Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel-wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes. | |
| Class 22 | Ropes, Cordage and Fiber Products | Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials. | |
| Class 23 | Yarns & Threads Products | Yarns and threads, for textile use. | |
| Class 24 | Fabrics and Textile Products | Textiles and textile goods, not included in other classes; beds and table covers. | |
| Class 25 | Clothing and Apparel Products | Clothing, footwear, headgear. | |
| Class 26 | Lace, Ribbons, Embroidery and Fancy Goods | Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers. | |
| Class 27 | Floor Covering Products | Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile). | |
| Class 28 | Toys and Sporting Goods Products | Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees. | |
| Class 29 | Meat and Processed Food Products | Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats. | |
| Class 30 | Staple Food Products | Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice. | |
| Class 31 | Natural Agricultural Products | Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt. | |
| Class 32 | Light Beverage Products | Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. | |
| Class 33 | Wines and Spirits (not including beers) | Alcoholic beverages (except beers). | |
| Class 34 | Smoker's Products | Tobacco; smokers' articles; matches. | |
Service Classes
| Class # | Product Type | Description | |
|---|---|---|---|
| Class 35 | Advertising, Business and Retail Services | Advertising; business management; business administration; office functions. | |
| Class 36 | Insurance and Financial Services | Insurance; financial affairs; monetary affairs; real estate affairs. | |
| Class 37 | Construction and Repair Services | Building construction; repair; installation services. | |
| Class 38 | Communication Services | Services allowing people to communicate with another by a sensory means. | |
| Class 39 | Transportation and Storage Services | Transport; packaging and storage of goods; travel arrangement. | |
| Class 40 | Treatment and Processing of Materials Services | Treatment of materials. | |
| Class 41 | Education and Entertainment Services | Education; providing of training; entertainment; sporting and cultural activities. | |
| Class 42 | Computer and Software Services and Scientific Services | Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software. | |
| Class 43 | Restaurant and Hotel Services | Services for providing food and drink; temporary accommodations. | |
| Class 44 | Medical and Beauty Services and Agricultural Services | Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. | |
| Class 45 | Personal, Legal and Social Services | Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals. | |
Specimens
For a mark to be registered in the United States Patent and Trademark Office (“USPTO”), it must be in use. A mark owner is required to submit a Declaration of Use and a Specimen of Use prior to registration, then again 5-6 years after registration and every 10 years after the registration date. The Declaration of Use is a statement by the owner swearing under penalty of perjury that the mark is in use in United States commerce in connection with each one of the goods and services listed in the application or registration. While the Declaration of Use should not be taken lightly, the process of preparing and submitting it is relatively straight-forward. On the other hand, locating an acceptable Specimen of Use is rather involved. In order to demystify this process, we compiled examples of specimens that the USPTO would find acceptable. Once you have located a specimen, take a second look at this list – if it is not there, chances are, it will not be accepted by the USPTO.
“Use in commerce” is defined as commerce that may be regulated by congress. This is further defined in US Constitution, Article 1, Section 8, Clause 3, also known as the Commerce Clause, which states that congress can regulate interstate commerce, commerce between nations and commerce with Native American Tribes.
Specimens for Goods (Classes 1 -34): Generally, specimens for goods are photographs or digital images that show the mark in use in conjunction with the goods. Specific examples include: • a label, tag or decal of the mark, affixed to the good • a label or tag hanging off the product showing the mark • packaging, boxes or shipping containers with the mark • a display where the good is shown along with a sign or poster on which the mark is displayed or point of sale display materials • a packing slip or packaging materials which is shipped with the goods and shows the mark • a catalog order sheet with an image of the product and the mark, in close association with price and ordering instructions • a screen shot of a webpage, showing the product, the mark, a price and a “cart” icon • a photograph of a of a frame of a movie or videotape which shows the mark • if the product is downloadable software, a screen shot which shows the mark, with purchase instructions and way to download the software • a truck with the mark displayed that ships the goods • a instruction manual showing the mark that is included in the packaging sold with the product.
Specimens for Services (Classes 35 – 45): Generally, specimens for services are advertisements that show the mark and make a clear reference to the services. Specific examples include: • internet web page advertising • advertising appearing in a paper publication, such as a magazine, newspaper or journal or telephone directory • promotional brochures, direct mail advertising, handbills, posters, leaflets, circulars, fliers • business signage on a store front or vehicle • Invoices or proposal letters • If a restaurant, a menu • business letterhead, stationery or business cards • trade show demonstration materials • displays in a showroom • billboard advertising • radio/television advertising • gift items which service as advertisements, such as T-shirts, hats, coffee mugs, calendars, pencils, pens, coasters, button.
Costs for Filing an Application
There are three costs associated with trademarks applications.
1. The initial application cost is $1,250.00 which includes the government fee for one class of goods and services. There is an additional fee of $350.00 for each additional class of goods and/or services above the first class.
2. The cost for filing a Statement-of-Use if the initial application is an intent to use application (e.g. Section 1(b) filing basis) is $665.00 for one class of good/services. There is an additional fee of $150.00 per class above the first class.
3. There may be prosecution costs associated with the application. Approximately 65% of our applications are allowed without further expenses in the application process. Should your application be rejected we will let you know the approximate fee and the chances of success. A typical response costs between $350.00 - $1200.00.
Trademark Searches
Although we offer a “Knockout Search” service for free, this is not an adequate search if you need to know if the proposed mark is allowable with a greater certainty (e.g. you are about to invest significantly in the new mark and cannot wait 6-8 months for Trademark registration). Our trademark search fees begin at $1,500.