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Federal trademark registration is accomplished by preparing the proper documents that identify the trademark, its owner(s) and the types of goods or services associated with the trademark. The filing fee for an application based on the current use of a trademark in interstate or international commerce is $335.00. If the trademark is not presently in use, the application must proceed as an Intent-to-Use application. The initial filing fee for an Intent-to-Use application is also $335.00. The PTO charges an additional fee of $100.00 at the time use of the trademark is established. If use of the trademark in interstate or international commerce is not established within six (6) months of the PTO's Notice of Allowance, the trademark application will be deemed abandoned unless the trademark applicant files a request for an extension. Multiple six (6) month extensions are available, for up to a total of twenty-four (24) months, for a PTO fee of $150.00 for each extension.
In order to register a trademark with the PTO, the trademark owner must file samples of the trademark as it is actually being used (referred to as "specimens"). The specimens must show proper use of the trademark in commerce. The specimens must be samples of the actual label, tag, advertisement, etc. that has the trademark on it. Generally, photocopied samples are not sufficient for specimens. The PTO has alternative specimen submission guidelines for large, expensive or otherwise difficult to handle samples.
Different specimens are required depending on whether the mark being registered is for a trademark (goods) or a service mark. For trademarks on goods, the proper specimens are actual samples of labels, tags, containers or displays directly associated with the goods at the point of sale (i.e., banners and window displays). Displays in printed materials, such as catalogs, can serve as a specimen if it includes: (a) a picture of the relevant goods; (b) the trademark sufficiently near the picture of the goods to associate the trademark with the goods; and (c) information necessary to order the goods. For service marks, proper specimens are newspaper or magazine advertisements, brochures, cards, handbills, direct mail leaflets and similar articles. If the services are advertised on a billboard, a photograph of the billboard can function as a specimen.
Naturally, any samples that are used a specimen must identify and distinguish the owner's goods or services from the goods or services of others and indicate the owner's business as the source of those goods or services. The samples must also comply with the other trademark considerations discussed above. Clients can submit any number of samples showing usage of their trademark to us so that we can select the most appropriate sample for the trademark application. Submitting samples of all uses also allows us the opportunity to identify any incorrect usage that may exist.
After filing, the PTO and the various state governments categorize trademarks and service marks by International Class Numbers. The use of Class Numbers assists the PTO, state agencies and trademark users by grouping like goods or services together. When deciding whether to allow registration of a trademark, the responsible agency reviews its files for trademarks that are registered in the same Class and used for the same or similar goods or services. As you no doubt have seen, the same or a similar name can be used to identify goods or services that are unrelated to each other (generally such goods or services will be in different Classes).
To determine registrability of a your trademark in light of a similar registration or pending trademark application, the PTO will apply a "likelihood of confusion" standard. This standard requires the PTO to consider whether your goods or services are sufficiently related to the prior registrant's goods or services such that the use of your trademark is likely to result in consumer confusion as to the source of those goods or services, or result in the association of your goods or services with the other company. Goods or services are closely related if they are of the same type or the circumstances of their marketing are similar. The PTO will apply the doctrine of foreign equivalents to translate foreign names into their English equivalent for the likelihood of confusion analysis. If the PTO determines that your trademark is likely to be confused with another registered or pending trademark(s), it will deny your trademark registration.
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