Basic Facts About Registering A Trademark, Part 3

Before completing an application, read the instructions carefully and study the examples provided. Errors or omissions may result in the denial of a filing date and the return of application papers, or the denial of registration and forfeiture of the filing fee.

To receive a filing date, the applicant must provide the following:

1. Filled-out application form
2. Drawing of the mark on a separate piece of paper
3. Required filing fee (see end of this document for fee information)
4. Three specimens for each class of goods or services-if application is based on prior use of the mark in commerce (The specimens must show actual use of the mark with the goods or services, and may be identical or examples of three different uses showing the same mark.)

Indicate the mark (for example, 'Theorytec' or 'Pinstripes and Design'). This should agree with the mark shown on the drawing page. If a discrepancy exists between the mark described in the written application and the mark displayed in the drawing, the drawing controls.

It's not necessary to fill in this box. The PTO will determine the proper International Classification based on the identification of the goods and services in the application. However, an applicant who knows the International Class number(s) for the goods and services may place the number(s) in this box. If the PTO determines that the goods and services listed fall into more than one class, the PTO will notify the applicant during examination of the application, and the applicant will have the opportunity to pay the fees for any additional classes or to limit the goods and services to one or more classes.

The name of the mark's owner must be entered in this box. If the application is not filed in the name of the mark's owner, the application will be void and the applicant will forfeit the filing fee. The owner of the mark is the party who controls the nature and quality of the goods sold, or services rendered, under the mark. The owner may be an individual, a partnership, a corporation, or an association or similar firm. If the applicant is a corporation, the applicant's name is the name under which it is incorporated. If the applicant is a partnership, the applicant's name is the name under which it is organized.

Enter the applicant's business address. If the applicant is an individual, enter the applicant's business or home address.

The applicant must check the box that indicates the type of entity applying. In addition, in the blank following the box, the applicant must specify one of the following:

• Space 5 (a) -- for an individual, the applicant's national citizenship
• Space 5 (b) -- for a partnership, the names and national citizenship of the general partners and the state (if a U.S. partnership) or country (if a foreign partnership) where the partnership is organized
• Space 5 © -- For a corporation, the state (if a U.S. corporation) or country (if a foreign corporation) of incorporation
• Space 5 (d) -- for another type of entity, the nature of the entity and the state (if a U.S. entity) or country (if a foreign entity) where it is organized

In this blank, the applicant must state the specific goods and services for which registration is sought and with which the applicant has actually used the mark in commerce or-in the case of an 'intent-to-use' application-has a bona fide intention to use the mark in commerce. Use clear and concise terms specifying the actual goods and services by their common commercial names. A mark can be registered only for specific goods and services. The goods and services listed will establish the scope of the applicant's rights in the relevant mark.

The goods and services listed must be the applicant's actual 'goods in trade' or the actual services the applicant renders for the benefit of others. Use language that would be readily understood by the general public. For example, if the applicant intends to use the mark to identify candy, word processors, baseballs and baseball bats, travel magazines, dry cleaning services, or restaurant services, the identification should clearly and concisely list that. The applicant should not use indefinite terms, such as accessories, components, devices, equipment, food, materials, parts, or services listed by their common commercial name(s). Note that the terms used in the classification listing are generally too broad. Do not use those terms by themselves.

The applicant must be very careful when identifying goods and services. Because the filing of an application establishes certain presumptions of rights as of the filing date, the application may not be amended later to add any products or services not within the scope of the identification. For example, the identification of 'clothing' could be amended to 'shirts and jackets,' which narrows the scope, but could not be amended to 'retail clothing store services,' which would change the scope. Similarly, 'physical therapy services' can't be changed to 'medical services,' because this would broaden the scope of the identification. Also, if the identification includes a trade channel limitation, deleting that limitation would broaden the scope of the identification.

The identification of goods and services must not describe the mode of the mark's use, such as on labels, stationery, menus, signs, containers, or advertising. There's another place on the application, called the 'method-of-use clause,' for this kind of information. (See information below, under Space 7[a], fourth blank.) For example, in the identification of goods and services, the term 'advertising' is usually intended to identify a service rendered by advertising agencies. Moreover, 'labels,' 'menus', 'signs' and 'containers' are specific goods. Thus, if the identification indicates ' menus,' it can't be amended to 'restaurant services.' Similarly, if the goods are identified as 'containers or labels for jam,' the identification can't be amended to 'jam.'

Note: If nothing appears in this blank, or if the identification does not identify any recognizable goods or services, the application will be denied a filing date and returned to the applicant. For example, if the applicant specifies the mark itself, or wording such as 'company name,' 'corporate name,' or 'company logo' and nothing else, the application will be denied a filing date and returned to the applicant. If the applicant identifies the goods and services as just 'products' or 'services' the application will be denied a filing date and returned to the applicant.

The applicant must check at least one of the four boxes to specify a basis for filing the application. The applicant should also fill in all blanks that follow the checked box(es). Usually an application is based on either (1) use of the mark in commerce (the first box) or (2) a bona fide intention to use the mark in commerce (the second box). You may not check both the first and second box. If both boxes are checked, the PTO will not accept the application and will return it. If an applicant wishes to apply to register a mark for certain goods and services already using the mark in commerce and also for other goods and services based on future use, separate applications must be filed to separate the relevant goods and services from each other.

Space 7 (a). If the applicant is using the mark in commerce in relation to all of the goods and services listed in the application, check this first box and fill in the blanks.

In the first blank, specify the date the trademark was first used to identify the goods and services in a type of commerce that may be regulated by Congress.

In the second blank, specify the type of commerce, specifically a type of commerce which may be regulated by Congress, in which the goods were sold or shipped, or the services were rendered. (See Part 1 for the meaning of 'use in commerce.') For example, indicate 'interstate commerce' (commerce between two or more states) or commerce between the United States and a specific foreign country-for example, 'commerce between the United States and Canada.'

In the third blank, specify the date that the mark was first used anywhere to identify the goods or services specified in the application. This date will be the same as the date of first use in commerce unless the applicant made some use-for example, within a single state-before the first use in commerce.

In the fourth blank, specify how the mark is placed on the goods or used with the services. This is referred to as the 'method-of-use clause' and should not be confused with the identification of the goods and services described under Space 6. For example, in relation to goods, state, 'The mark is used on labels affixed to the goods,' or 'The mark is used on containers for the goods,' whichever is accurate. In relation to services, state, 'The mark is used in advertisements for the services.'

Space 7 (b). If the applicant has a bona fide intention to use the mark in commerce in relation to the goods or services specified in the application, check the second box and fill in the blank. The applicant should check this box if the mark has not been used at all or if the mark has been used on the specified goods or services only within a single state.

In the blank, state how the mark is intended to be placed on the goods or used with the services. Example: For goods, state, 'The mark will be used on labels affixed to the goods,' or 'The mark will be used on containers for the goods,' whichever is accurate. For services, state, 'The mark will be used in advertisements for the services.

Spaces 7 © and (d). These spaces are usually used only by applicants from foreign countries who are filing in the United States under international agreements. These applications are less common. For further information about treaty-based applications, call the trademark information number listed in Part 2, or contact a private attorney.

The applicant must verify the truth and accuracy of the information in the application and must sign the application. The declaration in Space 8, on the back of the form, is intended for this purpose. If the application is not signed, the application will not be granted a filing date and will be returned to the applicant. If the application is not signed by an appropriate person, the application will be found void and the filing fee will be forfeited. Therefore, it's important that the proper person sign the application.

• If the applicant is an individual, that individual must sign.
• If the applicant is a partnership, a general partner must sign.
• If the applicant is a corporation, association, or similar organization, one of its officers must sign. An officer is a person who holds an office established in the articles of incorporation or the bylaws. Officers may not delegate this authority to non-officers.
• If the applicants are joint applicants, all joint applicants must sign.

The person who signs the application must indicate the date signed, provide a telephone number to be used if it's necessary to contact the applicant, and clearly print or type his or her name and position.

The application filing fee is $245 for each class of goods or services listed. At least $245 must accompany the application. Fee increases, when necessary, usually take effect on October 1 of any given year. Please call the general information number listed in Part 2 for up-to-date fee information if filing after September 1995. The PTO receives no taxpayer funds; its operations are supported entirely from fees paid by applicants and registrants.

In addition to the application filing fee, applicants who base their filing on a bona fide intention to use a mark in commerce must submit a fee of $100 for each class of goods or services in the application, when filing any of the following :

• Amendment to Allege Use
• Statement of Use
• Request for an extension of time to file a Statement Of Use

All payments must be made in U.S. currency, by check, post office, money order, or certified check. Personal or business checks may be submitted. Make checks and money orders payable to the Assistant Commissioner for Trademarks. Fees are not refundable.

If the applicant has already used the mark in commerce and bases the filing on use in commerce, he or she must submit three specimens per class showing use of the mark in commerce with the application. If, instead, the application is based on a bona fide intention to use the mark in commerce, the applicant must submit three specimens per class when filing either an Amendment to Allege Use or a Statement of Use.

The specimens must be actual samples of how the mark is being used in commerce. The specimens may be identical or examples of three different uses showing the same mark.

If the mark is used on goods, examples of acceptable specimens are the tags or labels attached to the goods, containers for the goods, displays associated with the goods, or photographs of the goods showing use of the mark on the goods themselves. If it's impractical to send an actual specimen because of its size, photographs or other acceptable reproductions that show the mark on the goods or packaging for the goods must be furnished. Invoices, announcements, order forms, bills of lading, leaflets, brochures, catalogs, publicity releases, letterhead, and business cards generally are not acceptable specimens.

If the mark is used for services, examples of acceptable specimens are signs, brochures, advertisements, business cards or stationery that shows the mark in connection with the services, or photographs that show the mark as used in the rendering or advertising of the services. In the case of a service mark, the specimens must either show the mark and include some clear reference to the type of services rendered under the mark in some form of advertising, or show the mark as it's used in the rendering of the service-for example, on a storefront or the side of a delivery or service truck.

Specimens may not be larger than 8 1/2 inches by 11 inches (21.59 by 27.94 cm) and must be flat. Smaller specimens, such as labels, may be stapled to a sheet of paper labeled 'SPECIMENS.' A separate sheet can be used for each class.

An applicant who files an application based on the bona fide intention to use a mark in commerce must make use of the mark in commerce before the mark can register. After use in commerce begins, the applicant must submit:

1. Three specimens evidencing use, as just discussed
2. A fee of $100 per class of goods or services in the application
3. Either (a) an Amendment to Allege Use if the application has not yet been approved for publication (use PTO Form 1579) or (b) a Statement of Use if the mark has been published and the PTO has issued a Notice of Allowance (use PTO Form 1580).

If the applicant makes no use of the mark in commerce within six months of the Notice of Allowance, the applicant must file a Request for an Extension of Time to File a Statement of Use, or the application is abandoned. (Use PTO Form 1581, which is intended for this purpose only.)

See the instructions and information on the back of the forms. The previous information about specimens, identifications of goods and services, and dates of use is also relevant to filing an Amendment to Allege Use or Statement of Use. Failing to file the necessary papers in proper form within the time provided may result in abandonment of the application.