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
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