Trademark Filing in 10 Easy Steps

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Trademark Filing Basics - Part 4: Basis for Filing and Specimens

basis for trademark filingBasis for Filing

The application should include your “basis” for filing. Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future.

Use in Commerce

For the purpose of obtaining federal registration, “commerce” means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. “Use in commerce” must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

  • For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
  • For services: the mark must be used or displayed in the sale or advertising of the services and the services must be rendered in commerce.

If you have already started using the mark in commerce, you may file based on that use. A “use” based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.

Intent to Use

If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce. You do not have to use the mark before you file your application.

An “intent to use” application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement.

NOTE: If you file based on intent to use, you must begin actual use of the mark in commerce before the USPTO will register the mark; that is, after filing an application based on “intent to use,” you must later file another form (“Allegation of Use”) to establish that use has begun. See “Additional Requirements for ‘Intent to Use’ Applications” for more information.

International Agreements

Although not as common, you may base your application on international agreements. Under certain international agreements, if you qualify, you may file in the U.S. based on a foreign application or on a registration in your country of origin.

Also, section 66(a) of the Trademark Act permits the holder of an international registration to file a request for extension of protection of the international registration to the United States under the Madrid Protocol.

Specimen

A specimen is an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services. This is not the same as the drawing of the mark, which merely represents what you are claiming as the mark.

Normally, a specimen for a mark used on goods shows the mark on the actual goods or packaging for the goods. You may submit a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods. Do not submit the actual product.

Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards generally are NOT acceptable specimens for goods.

A specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, ie. not just a display of the mark itself. For example, if the mark sought to be registered is “ABC,” a business card that only shows the mark “ABC” would not be acceptable. A business card that states “ABC REAL ESTATE” would be acceptable.

If filing electronically, you must attach an image of your specimen in .jpg format. In order to show the context in which the mark is used, the image should include as much of the label or advertisement as possible.

If filing a paper application, the specimen submitted with the application must be flat and no larger than 8½ by 11 inches. If you submit a larger specimen, the USPTO will create a facsimile of the specimen, insert it in the application file wrapper, and destroy the original submission. However, specimens consisting of videotapes, audiotapes, CDs or computer diskettes are acceptable for marks, such as sound marks, that cannot be used any other way.

· For an application based on “use”: If you are using the mark in commerce and you file based on that use, you should submit one specimen for each class of goods/ services listed in the original application. For an application based on “intent to use”: You must submit one specimen for each class of goods/ services when filing the “Allegation of Use.” See section “Additional Requirements for ‘Intent to Use’ Applications”.

Signature

A person who is properly authorized to sign a verification on behalf of the applicant is:
  • a person with legal authority to bind the applicant; or
  • a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or
  • an attorney as defined in 37 C.F.R. §10.1(c) who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.

In a TEAS application, you do not apply a conventional signature. Instead, you enter a “symbol” that you have adopted as a signature. The USPTO will accept any combination of letters, numbers, spaces and/or punctuation marks placed between two forward slash (“/”) symbols. Examples of acceptable signatures for TEAS applications include /john doe/, /drl/, and /544-4925/.Trademark Filing in 10 Easy Steps

In the next part, I’ll be covering just what happens to your application.

For a useful guide to trademark filing go get the full e-report Trademark Filing in 10 Easy Steps.

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