Frequently asked questions

10 October, 2018

Getting a trademark >

The strongest trademarks are often:

  • UNIQUE
    You may want to search the U.S. Patent and Trademark office database and online to make sure your trademark is sufficiently different from other marks for similar products or services. Otherwise, it may be difficult to register.  For example, KOPYCAT as a trademark for file backup software is unlikely to be accepted since COPYCAT is already a registered mark for a similar business.
  • DISTINCT
    A generic term naturally associated with or descriptive of your product or service is a weak trademark. For example, CATNIP as a trademark for cat toys is unlikely to be accepted since it describes a common property of many cat toys.
  • MADE UP
    The name of a real individual, a last name, or a geographic location may not be registerable as a trademark. For example, CATFORD as a trademark for a pet-sitting service located in Catford, UK is unlikely to be accepted since it is descriptive of an actual location.

In the U.S. and many other jurisdictions, you can’t register a trademark that would likely cause confusion with other marks. A trademark search can help alert you to possible conflicts before you even start the application process. Get started here.

Interested in learning more about trademark searches?

It is not necessary, but it is advisable to conduct a search of the United States Trademark Office database before filing your application to determine if there is a registered or pending mark that is similar to yours. You may use Trademark.com’s free search tool or go directly to the United States Trademark Office’s Trademark Electronic Search System (TESS) and Trademark Applications and Registrations Retrieval (TARR) database.

Not necessarily. In the U.S., someone can have “common-lawtrademark rights simply by being the first to use that mark in business — no registration required. Someone with common law rights can challenge your use or registration of your trademark. For these reasons, it’s a good idea to check beyond state and federal registries, such as registered corporate names and use on the internet. Interested in ordering a U.S Full Search which includes common law, web common law, business name, and domain name sources? Contact us.

A conflict exists when one trademark is confusingly similar to another trademark. The main factors used to determine the likelihood of confusion include the similarity of the marks, and the relationship between the products and/or services sold and/or offered under each mark. To be considered a conflict, two trademarks do not have to be identical to one another and the products (“goods”) and/or services associated with the marks do not have to be the same. It may be enough that the trademarks are in some way similar and the products and/or services are related in some way. In some cases, trademarks that may seem similar can both be successfully registered if they are unlikely to confuse a consumer. For example, two trademarks that may seem similar can both be allowed if they are used for unrelated products or services.

If your brand is too similar to a registered trademark and the areas of businesses overlap, a trademark register may reject your application to prevent customer confusion.

Common reasons for confusion include:

  • EXACT MATCH to a famous mark, regardless whether the areas of business overlap, or to another trademark for a similar product or service. For example, JAGUAR as a trademark for shoes is unlikely to be accepted since JAGUAR is a well-known mark owned by Jaguar Land Rover Limited. Likewise, COPYCAT as a trademark for file backup software is unlikely to be accepted since COPYCAT is already a registered mark for a similar business.
  • SIMILAR SOUND, meaning that a consumer might not receive the correct product when they ask for a brand by name. For example, COPYCAT and KOPYCAT.
  • SIMILAR APPEARANCE, meaning that the marks look similar at a glance. For example, COPYCAT and COPYACT.
  • SIMILAR CONCEPT, meaning that the marks may use different words but convey the same idea. For example, SNEAKY COPYCAT and SLY COPYCAT.

The USPTO trademark classification system divides all goods and services into 45 trademark classes — 34 for goods and 11 for services. There are many goods or services that fall into each class, and they’re not always obvious from the class name. When you file your trademark application, you must select the class of goods or services that your trademark will protect, and you must also identify the goods or services you provide. Your trademark will only protect the goods, services and class that you name in your application.

It can take six months or longer for a federal trademark application to be processed by the USPTO. A strong, well-prepared trademark application can make the registration process much smoother and make less likely that your application will be delayed.

Only a trademark’s owner (or their attorney) can file an application for its registration. An application filed by a person who is not the owner of the trademark will be declared void. Generally, the person who uses or controls the use of the trademark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the trademark’s owner.

Only a trademark’s owner (or their attorney) can file an application for its registration. An application filed by a person who is not the owner of the trademark will be declared void. Generally, the person who uses or controls the use of the trademark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the trademark’s owner.

No. In the U.S., your citizenship must be included in your trademark application, but it doesn’t have to be U.S.-based. If you apply as a corporation, it’s fine to indicate that it is not the citizen of any country. If you have dual citizenship, then you have to choose which citizenship you’d like recorded on the Official Certificate of Registration.

You aren’t required to hire an attorney for assistance with trademark filings. It’s important to note, though, that applicants are responsible for being aware of and complying with all trademark registration application issues and requirements, whether or not represented by an attorney.

You can file a trademark either as an individual or a corporation in regard to ownership. You can always transfer ownership at a later date.

See: Can I assign trademark ownership to another person or business?

The United States Patent and Trademark Office (USPTO) “abandons” a trademark application when timely response to an examining attorney’s office action is not received. An office action is an official letter sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application itself. You must resolve all legal problems in the office action before the USPTO can register your trademark. You can file a petition to “revive” an abandoned application if your delay in responding to the office action was unintentional. Once a mark is considered abandoned, anyone can apply to register it.

You can clarify or reduce the goods/services claimed on your application but you may not expand or broaden them. For example, if your application listed “goods” as “cat toys,” you may later limit the goods to specific types of toys such as “catnip.” However, you may not later change the goods to “cat toys and cat brushes.” Likewise, you may not change the goods to a service such as “cat grooming”.

In the U.S., registering your company name as a trademark is the same as all other trademark registrations. However, before you register your company name, you may want to determine if your company name is already in use in your state. Your state will generally not let you use a name that is too similar to an already registered business. For this reason, whenever you consider registering your company name as a trademark, you want to research your state’s database for registered corporations, LLCs and partnerships with similar names.

To check the status of your trademark application, please visit http://tarr.uspto.gov and use your USPTO trademark serial number to locate your application.

A trademark application may be rejected if the mark is:

  • identical or very similarity to a name already registered with the USPTO
  • generic or descriptive
  • a surname
  • geographically descriptive of the location of the business
  • individual’s name or likeness

Yes. You can usually register your trademark at the state-level with the Secretary of State (or comparable office) in the state where you are using the trademark (Please note that trademark.com does not offer this service). However, federal registration with the USPTO provides broader protection from copycats.

Not formally. However, certain countries recognize a U.S. registration as a basis for registering the trademark in those countries.

The basic difference is whether you have used the mark. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis.

If you originally filed an Intent-To-Use trademark registration application (i.e., before you began using the mark in commerce), you are required to file a Statement of Use, indicating that you’re now using the desired trademark in business. This enables the USPTO to complete registration of your trademark.

You should file your Trademark Statement of Use:

If you don’t file a Trademark Statement of Use or Extension Request within 6 months of when your Notice of Allowance was sent, the USPTO will consider your trademark abandoned.

If you filed your trademark application on an ‘Intent-to-use’ basis (i.e. not already using the mark in business), the USPTO will send you a Notice of Allowance to let you know that your application has met all of the requirements for registration (e.g., no one has opposed it, etc.). Once you send an acceptable Statement of Use with supporting Specimen(s) of Use, the mark will be “allowed” for registration.

No. Currently, Trademark.com only supports trademark registration with the United States Patent and Trademark Office.

It usually takes the USPTO months to process trademark registration applications, and a lot can happen during that time. It’s wise for business owners to monitor their desired mark while their application processes so that they can keep an eye on copycats and take action if necessary before it’s too late. If a trademark identical or suspiciously similar to your own desired mark is in the process of registration with the USPTO, we’ll alert you. You then have the option to file an Opposition Notice with the USPTO.

Once properly registered, trademarks generally need to be renewed by filing a Declaration of Continued Use. The first Declaration of Continued Use is usually due between the 5th and 6th anniversary date of the filing. The next renewal usually falls between the ninth and tenth year. After that, renewals are generally every ten years. If a Declaration of Continued Use is not successfully filed, the USPTO will consider the mark abandoned. In addition to renewing your trademark, you may want to monitor it for copycat activity. At Trademark.com, you can sign up to receive alerts about identical or suspiciously similar trademarks that have been filed with the USPTO.

Trademark registers require you to identify what you sell to determine the scope of your trademark. This will also help us determine which industries to monitor for copycats. You can simply start typing a description, and our tool will help you find a match against the international classification system, which is used to categorize products and services. You can also use the USPTO’s tool here.

  • GOODS, or physical products made for customers, are assigned to one or more of 34 different classes. For example, CAT FOOD is Class 31; CAT TOY is Class 28.
  • SERVICES, or activities performed for customers, are assigned to one or more of 11 different classes. For example, PET GROOMING is Class 44; PET ADOPTION is Class 45.

No worries! We’re here. Shoot us a message at customerservice@trademark.com  or contact us here and we’ll get right back to you.

We’re planning to add image recognition trademark search services in the future. If you need immediate help, contact us. If you need assistance with registering your logo as a trademake, contact our partner, Marcaria, directly here.

Yes, please let us know what’s changed by sending us a note with the name of your trademark, your email address, and your updated goods and services description to customerservice@trademark.com.

Monitoring your trademark >

Trademark owners are responsible for enforcing their own trademark rights, including the monitoring of others’ use of marks that are similar to their own. The USPTO is responsible only for assessing applications and registering marks. And when the USPTO reviews other trademark applications, they may approve a mark that you believe is similar to your own. Monitoring your trademark gives you an opportunity to dispute the registration of another mark.

It usually takes the USPTO months to process trademark registration applications, and a lot can happen during that time. It’s wise for business owners to monitor their desired mark while their application processes so that they can keep an eye on copycats and take action if necessary before it’s too late. If a trademark identical or suspiciously similar to your own desired mark is in the process of registration with the USPTO, we’ll alert you. You then have the option to file an Opposition Notice with the USPTO.

Once properly registered, trademarks generally need to be renewed by filing a Declaration of Continued Use. The first Declaration of Continued Use is usually due between the 5th and 6th anniversary date of the filing. The next renewal usually falls between the ninth and tenth year. After that, renewals are generally every ten years. If a Declaration of Continued Use is not successfully filed, the USPTO will consider the mark abandoned. In addition to renewing your trademark, you may want to monitor it for copycat activity. At Trademark.com, you can sign up to receive alerts about identical or suspiciously similar trademarks that have been filed with the USPTO.

If someone is using your mark or a suspiciously similar one, one option is to send a cease and desist letter demanding that the other party stop using the mark. The infringement may not be on purpose and the other party may stop when notified that they are violating trademark rights. If they ignore you or disagree, you may consider a trademark infringement lawsuit. You should talk with an attorney if you believe a lawsuit might be the right choice for you.

If you come across a trademark in the process of being registered with the USPTO that may cause confusion among customers due to being identical or suspiciously similar to your own registered trademark, there are multiple courses of action. One common option is to file an opposition notice with the USPTO. For every pending trademark, there is a 30-day period in which the public can object to the registration of the mark by filing an opposition notice explaining why the mark should not be registered. Once received, the owner of the application has 30 days to respond with an answer. The Trademark Trial and Appeal Board will conduct a proceeding, which is like a mini trial based on written records, issuing a final decision. Learn more here.

In the U.S., trademark owners have the right to challenge the recent registration of an identical or suspiciously similar mark that may cause damage to their own rights. If it’s within five (5) years of the registration date, you may file a Petition to Cancel with the USPTO. Trademark cancellation is the legal process of removing a registered trademark from the books. Your Petition to Cancel will be argued before the the Trademark Trial and Appeal Board (or in some cases, in federal court).

According to the USPTO, if a notice of opposition has been filed against your pending trademark, you need to file an answer with the USPTO within thirty (30) days, responding to each of the claims of the opposer. Once you’ve submitted your response, the Trademark Trial and Appeal Board will conduct a proceeding, which is like a mini trial based on written records, issuing a final decision.

The USPTO examines trademark applications to determine if there is likelihood of confusion between the mark in the application and a previously registered trademark or another mark in a prior-pending application. If no conflict is found and all other statutory requirements are met, the examining attorney can approve the mark for publication. The USPTO has no powers of enforcement concerning the use of trademarks in the marketplace.

If areas of business overlap, another mark may be too similar to your own if it’s likely to cause customer confusion in the market.

Common reasons for confusion include:

  • EXACT MATCH to a famous mark, regardless whether the areas of business overlap, or to another trademark for a similar product or service. For example, JAGUAR as a trademark for shoes is unlikely to be accepted since JAGUAR is a well-known mark owned by Jaguar Land Rover Limited. Likewise, COPYCAT as a trademark for file backup software is unlikely to be accepted since COPYCAT is already a registered mark for a similar business.
  • SIMILAR SOUND, meaning that a consumer might not receive the correct product when they ask for a brand by name. For example, COPYCAT and KOPYCAT.
  • SIMILAR APPEARANCE, meaning that the marks look similar at a glance. For example, COPYCAT and COPYACT.
  • SIMILAR CONCEPT, meaning that the marks may use different words but convey the same idea. For example, SNEAKY COPYCAT and SLY COPYCAT.

Currently, Trademark.com offers monitoring for the United States. This means that we will monitor the following sources and alert you of direct trademark matches, as well as suspiciously similar names, that might threaten your brand:

You can monitor a maximum of five trademarks using our service. Got more? Sounds like you might be a good fit for CompuMark, our parent company with solutions for IP experts. Get in touch and we’ll be happy to tell you more.

No worries! We’re here. Shoot us a message at customerservice@trademark.com  or contact us here and we’ll get right back to you.

After you’ve signed up and purchased a subscription, we’ll systematically monitor your mark, looking for identical as well as suspiciously similar trademark applications at the federal and international levels (where U.S. protection is claimed), so you can stop worrying about imitators and knockoffs that can harm your business. Each week, we’ll send you a report of any copycat activity via email, so you can stay up-to-date at a glance, and take any necessary action before it’s too late. Check out a sample Trademark Alert here.

If a mark appears in your Trademark Alert Report without an opposition date, it is likely listed on the Supplemental Register, a secondary list for trademarks that are not distinctive enough to qualify for the legal protection of the Principle Register. Supplemental trademarks cannot be opposed.

Yes, please let us know what’s changed by sending us a note with the name of your trademark, your email address, and your updated goods and services description to customerservice@trademark.com.

Trademark basics >

A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

A service mark is any word, name, or symbol used (or intended to be used), in business to identify and distinguish the services of one provider from others, and to indicate the source of the services.

Names such as your company’s name or a line of products, logos or other symbols or designs used to create brand recognition, and slogans or other phrases used in connection with your brand can all be trademarked.

Under U.S. law, a “common law trademark” is generally established when someone uses a company name, product name, logo or slogan in day-today business, even if it is not registered. So, why register a trademark when a common law trademark may already exist? Common law rights ordinarily are limited to the geographic area where the mark is used, as opposed to the nationwide protection that comes with registering a mark with the U.S. Patent and Trademark Office (USPTO). This means that if you don’t register your mark, it can be difficult to expand your brand. In addition, registration of a trademark can give business owners legal advantages, as it confirms validity of the mark and date of usage, which can be useful in litigation. Once a trademark is accepted by the USPTO, it is added to the USPTO database, which can discourage others from using the mark in the future.

Unlike copyrights and patents, trademarks can last forever under certain circumstances, but they require maintenance. Once properly registered, trademarks generally need to be renewed by filing a Declaration of Continued Use between the 5th and 6th anniversary date of the filing and again between the ninth and tenth year. After that, renewal is every ten years.

In general, a trademarked name alone is preferable to just a trademarked logo, as it usually provides broader legal protection against copycats. However, it is best practice to register both a company name and a logo, with individual applications for each.

If you’ve investing heavily in a marketing campaign, you might consider registering the slogan. Short catch phrases or sayings that are sold as part of merchandise (like shirts or hats) can also be registered. The same rules apply to slogans as to registering a company name. Namely, the slogan should be inherently distinctive and creative or have developed a secondary meaning. In other words, “world’s best cat food” probably can’t be trademarked unless that saying has become so famous that most consumers associate it with a certain cat food brand.

A specimen is a real-world example of how you are using your mark on goods or in the offer of services. A specimen is more than just a picture of your trademark or logo. For goods (products), acceptable specimens include labels, tags, packaging material, instruction manuals and containers which display the trademark. Please note that brochures, business cards, catalogs and stationery are generally not acceptable specimens for goods. For services, acceptable specimens include brochures, flyers, advertisements, yellow page listings and websites. Please note that stationery is generally not an acceptable specimen for services. For a business card to be an acceptable specimen, it must contain the proposed trademark and the services offered in connection with that trademark.

Yes. A registered trademark, or even a trademark with a registration application under consideration by the U.S. Patent and Trademark Office (USPTO) is transferable. The USPTO calls such a transfer an “Assignment.” Usually, an Assignment requires a written contract. You can record Assignments with the USPTO for a fee.

For goods (products), “interstate commerce” generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involves rendering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).

After you’ve signed up and purchased a subscription, we’ll systematically monitor your mark, looking for identical as well as suspiciously similar trademark applications at the federal and international levels (where U.S. protection is claimed), so you can stop worrying about imitators and knockoffs that can harm your business. Each week, we’ll send you a report of any copycat activity via email, so you can stay up-to-date at a glance, and take any necessary action before it’s too late. Check out a sample Trademark Alert here.

Using Trademark.com >

No. Currently, Trademark.com only supports trademark registration with the United States Patent and Trademark Office.

Currently, Trademark.com offers monitoring for the United States. This means that we will monitor the following sources and alert you of direct trademark matches, as well as suspiciously similar names, that might threaten your brand:

There are a few reasons why you may not see your trademark in the results list. The most common ones are:

1) Misspelling
Check that you’ve entered your trademark name correctly.

2) You only have “common-law” rights
A trademark in use but not registered with the Trademark Office is known as a “common lawmark, and usually isn’t enough to keep someone else from using it too. They provide no legal protection from copycats beyond the local area. That’s why properly trademarking a brand by registering with the Trademark Office is critical, as it gives businesses protection in the form of legal ownership nationwide.

3) Your application was never successfully filed with the USPTO
This may be the case if:

4) Your trademark registration has expired
You are required to file maintenance documents at certain points after your application is approved to keep your trademark registration active. If you don’t file the documents in time, your registration may be cancelled. If so, you will have to submit a new trademark registration application.

If you suspect something may be wrong with your registered trademark, the USPTO recommends that you take action. Failure to follow up may result in registration cancellation.

You can contact the Trademark Assistance Center (TrademarkAssistancCenter@uspto.gov or +1 800 786 9199) for help.

Trademark registers require you to identify what you sell to determine the scope of your trademark. This will also help us determine which industries to monitor for copycats. You can simply start typing a description, and our tool will help you find a match against the international classification system, which is used to categorize products and services. You can also use the USPTO’s tool here.

  • GOODS, or physical products made for customers, are assigned to one or more of 34 different classes. For example, CAT FOOD is Class 31; CAT TOY is Class 28.
  • SERVICES, or activities performed for customers, are assigned to one or more of 11 different classes. For example, PET GROOMING is Class 44; PET ADOPTION is Class 45.

You can monitor a maximum of five trademarks using our service. Got more? Sounds like you might be a good fit for CompuMark, our parent company with solutions for IP experts. Get in touch and we’ll be happy to tell you more.

To cancel your subscription, login to your Trademark.com account, and under your name, select “My Account”. In the menu on the left you’ll see “My Subscription”, where you can manage your trademark monitoring order. If you cancel, you will continue to receive Trademark Alert Reports for the remainder of your twelve-month subscription, but it will not be renewed when it expires. If you cancel your order within the first 30 days, you are eligible for a refund, which you can claim by contacting us at customerservice@trademark.com. If you’d like to cancel and stop receiving Trademark Alert Reports entirely, please contact us at customerservice@trademark.com.

No worries! We’re here. Shoot us a message at customerservice@trademark.com  or contact us here and we’ll get right back to you.

At Trademark.com, protecting your business identity is our business. We’ve brought together deep trademark expertise and world-class tech to create a user-friendly, all-in-one trademark protection tool that makes safeguarding brands easy and affordable for small business owners. You can monitor marks you care about for possible copycat activity, check brands you may want to claim for similarity against existing and pending marks, and find help filing your trademark application with the U.S. Patent and Trade Office. We’ve also got library of educational resources that make the ins-and-outs of trademark best practices more accessible to non-IP professionals. Powered by CompuMark — the world’s leading provider of trademark protection trusted by major law firms and 9 out of 10 of the world’s most valuable brands — we’re tailoring world-class trademark protection to the needs of your small business.

Currently, we only accept payment by credit card.

After you’ve signed up and purchased a subscription, we’ll systematically monitor your mark, looking for identical as well as suspiciously similar trademark applications at the federal and international levels (where U.S. protection is claimed), so you can stop worrying about imitators and knockoffs that can harm your business. Each week, we’ll send you a report of any copycat activity via email, so you can stay up-to-date at a glance, and take any necessary action before it’s too late. Check out a sample Trademark Alert here.

If a mark appears in your Trademark Alert Report without an opposition date, it is likely listed on the Supplemental Register, a secondary list for trademarks that are not distinctive enough to qualify for the legal protection of the Principle Register. Supplemental trademarks cannot be opposed.

We’re planning to add image recognition trademark search services in the future. If you need immediate help, contact us. If you need assistance with registering your logo as a trademake, contact our partner, Marcaria, directly here.

Yes, please let us know what’s changed by sending us a note with the name of your trademark, your email address, and your updated goods and services description to customerservice@trademark.com.