Trademark Search and Registration Frequently Asked Questions

Definitions

• What is a trademark?
  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.
• What is a service mark?
  A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
• What is a certification mark?
  A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
• What is a collective mark?
  A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.
• Do I need to register my trademark?
  No. However, federal registration has several advantages including notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
• What are the benefits of federal trademark registration?
  Constructive notice nationwide of the trademark owner’s claim.
  Evidence of ownership of the trademark.
  Jurisdiction of federal courts may be invoked.
  Registration can be used as a basis for obtaining registration in foreign countries.
  Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
• Do I have to be a U.S. citizen to obtain a federal registration?
  No. However, an applicant’s citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration. You must have a domestic representative if you or your company does not reside in the United States of America. Avanti Merchant Services provides domestic representation services.
• Are there federal regulations governing the use of the designations “TM” or “SM” with trademarks?
  No. Use of the symbols “TM” or “SM” (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued.
• When is it proper to use the federal registration symbol (the letter R enclosed within a circle — ® — with the mark.
  The federal registration symbol may be used once the mark is actually registered in the U.S. Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. [Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.]
• Do I need an attorney to file a trademark application?
  No, although it may be desirable to employ someone who is familiar with trademark matters such as Avanti Merchant Services. If you or your company is not located within the United States of America, you will need to have a domestic representative. If you or your company is not located in Canada, you will need our domestic representative services.
• Is a federal registration valid outside the United States?
  No. Certain countries, however, do recognize a United States registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. The laws of each country regarding registration must be consulted. We also provide trademark registration services in Canada as well.
• How do I find out whether a mark is already registered?
  Order a complete trademark search in the United States and Canada from us!
• Is it advisable to conduct a search before filing an application?
  Yes, you need to conduct a search to see if there are any marks already registered that may conflict with the mark you wish to apply for.  Searches may be conducted on-line by submitting a request to us.
• What are common law rights?
  Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration.
• What is a common law search? How can I do one? Is doing a common law search necessary?
  A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration. A common law search is not necessary but some find it beneficial. Telephone numbers for search firms that perform these searches for a fee can be found in the yellow pages of local phone directories and through an Internet search.

TRADEMARKS, PATENTS AND COPYRIGHTS

• How do I find out if I need patent, trademark and/or copyright protection?
  Patents protect inventions and improvements to existing inventions. Copyrights cover literary, artistic, and musical works. Trademarks are brand names and/or designs which are applied to products or used in connection with services.
• How do I obtain a federal trademark registration?
  Proceed to the online secure order form and we will conduct a search and if the mark is able to be registered, we will proceed.
• Who may file an application?
  Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.
• What is a specimen?
  A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual specimens are bulky, or larger than 8½” x 11″, then the applicant must submit facsimiles, (e.g., photographs or good photocopies) of the specimens. Facsimiles may not exceed 8½” x 11″. ONE SPECIMEN IS REQUIRED FOR EACH CLASS OF GOODS OR SERVICES SPECIFIED IN THE APPLICATION.
• What is the drawing?
  The “drawing” is a page which depicts the mark applicant seeks to register. In an application based on actual use, Section 1(a), 15 U.S.C. §1051(a), the drawing must show the mark as it is actually used, i.e., as shown by the specimens. In the case of an application based on a bona fide intention to use, Section 1(b), 15 U.S.C. §1051(b), the drawing must show the mark as the applicant intends to use it. In an application based on a foreign application or foreign registration, Sections 44(d) or 44(e), 15 U.S.C. §§1126(d) and (e), the drawing must depict the mark as it appears or will appear on the foreign registration. The applicant cannot register more than one mark in a single application. Therefore, the drawing must display only one mark.
• If an applicant submits specimens, is a drawing still required?
  Yes. A drawing is required in all applications, and is used by the Office for several purposes, including printing the mark in the Official Gazette, and ultimately, on the registration certificate itself. Specimens, on the other hand, are required as evidence that a mark is in actual use in commerce.
• Can I get a refund of monies paid to the Office?
  Not usually. Only money paid by mistake or in excess (that is, paid when not required, or not required in the amount paid) may be refunded. A filing fee will be returned if submitted with a defective application which is denied a filing date. However, once the application receives a filing date, the filing fee will normally not be returned. All requests for refunds should be referred to the Finance Office, or the Examining Attorney assigned.
• How can I check on the status of a pending U.S. trademark application?
  Once you receive a filing receipt containing the serial number of your application, you may send us an email at avantimerchantservices@gmail.com. We will check on the status and send you the results via email.
• How long does it take for a mark to be registered?
  It is difficult to predict how long it will take for an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately six months after filing. The filing receipt will include the serial number of the application. All future correspondence with the office must include this serial number. You should receive a response from the Office within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application. Applicants should check on the status of their pending applications every six months.
• How long does a trademark registration last?
  For a trademark registration to remain valid, an Affidavit of Use (“Section 8 Affidavit”) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee.
  The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.
  Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term.
  This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.
• How long does an Intent-to-Use applicant have to allege actual use of the mark in commerce?
  An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the Examining Attorney approves the mark for publication. If an Amendment to Allege Use is not filed, then applicant has six months from the issuance of the Notice of Allowance to file a Statement of Use, unless the applicant requests and is granted an extension of time. If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted.
• Can the Office refuse to register a mark?
  Yes. The Office will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.
  Additionally, Section 2 of the Trademark Act (15 U.S.C. §1052) contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as:

1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant’s goods or services are likely to cause confusion, mistake, or deception;
6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant’s goods or services;
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant’s goods or services;
8. the proposed mark is primarily merely a surname; and
9. matter that, as a whole, is functional.
   

What are the guidelines regarding Internet domain name trademarks?
I. Introduction And Background

A domain name is part of a Uniform Resource Locator (URL), which is the address of a site or document on the Internet. In general, a domain name is comprised of a second-level domain, a “dot,” and a top-level domain (TLD). The wording to the left of the “dot” is the second-level domain, and the wording to the right of the “dot” is the TLD.

Example: If the domain name is “XYZ.COM,” the term “XYZ” is a second-level domain and the
term “COM” is a TLD.

A domain name is usually preceded in a URL by “http://www.” The “http://” refers to the protocol used to transfer information, and the “www” refers to World Wide Web, a graphical hypermedia interface for viewing and exchanging information. There are two types of TLDs: generic and country code.

Generic TLDs

Generic TLDs are designated for use by the public. Each generic TLD is intended for use by a certain type of organization. For example, the TLD “.com” is for use by commercial, for profit organizations. However, the administrator of the .com, .net, .org and .edu TLDs does not check the requests of parties seeking domain names
to ensure that such parties are a type of organization that should be using those TLDs. On the other hand, .mil, .gov, and .int TLD applications are checked, and only the U.S. military, the U.S. government, or international organizations are allowed in the domain space. The following is a list of the current generic TLDs and the intended users:

.com commercial, for profit organizations
.edu 4 year, degree granting colleges/universities
.gov U.S. federal government agencies
.int international organizations
.mil U.S. military organizations, even if located outside the U.S.
.net network infrastructure machines and organizations
.org miscellaneous, usually non-profit organizations and individuals

Since the implementation of the domain name system, the Patent and Trademark Office (Office) has received a growing number of applications for marks composed of domain names. While the majority of domain name applications are for computer services such as Internet content providers (organizations that provide web sites with information about a particular topic or field) and online ordering services, a substantial number are for marks used on other types of services or goods.

When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address. Today, advertisements for all types of products and services routinely include a URL for the web site of the advertiser. Just as the average person with no special knowledge recognizes “800” or “1-800” followed by seven
digits or letters as one of the prefixes used for every toll-free phone number, the average person familiar with the Internet recognizes the format for a domain name and understands that “http,” “www,” and a TLD are a part of every URL.

Applications for registration of marks consisting of domain names are subject to the same requirements as all other applications for federal trademark registration. This Examination Guide identifies and discusses some of the issues that commonly arise in the examination of domain name mark applications.

II. Use as a Mark
A. Use Applications
A mark composed of a domain name is registerable as a trademark or service mark only if it functions as a source  identifier. The mark as depicted on the specimens must be presented in a manner that will be perceived by  potential purchasers as indicating source and not as merely an informational indication of the domain name address  used to access a web site. See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).

In Eilberg, the Trademark Trial and Appeal Board (Board) held that a term that only serves to identify the  applicant’s domain name or the location on the Internet where the applicant’s web site appears, and does not  separately identify applicant’s services, does not function as a service mark. The applicant’s proposed mark was  WWW.EILBERG.COM , and the specimens showed that the mark was used on letterhead and business cards in the following manner:

The Board affirmed the examining attorney’s refusal of registration on the ground that the matter presented for  registration did not function as a mark, stating that:

[T]he asserted mark, as displayed on applicant’s letterhead, does not function as a service mark  identifying and distinguishing applicant’s legal services and, as presented, is not capable of doing so.  As shown, the asserted mark identifies applicant’s Internet domain name, by use of which one can  access applicant’s Web site. In other words, the asserted mark WWW.EILBERG.COM merely  indicates the location on the Internet where applicant’s Web site appears. It does not separately  identify applicant’s legal services as such. Cf. In re The Signal Companies, Inc., 228 USPQ 956 
(TTAB 1986).

This is not to say that, if used appropriately, the asserted mark or portions thereof may not be  trademarks or [service marks]. For example, if applicant’s law firm name were, say,  EILBERG.COM and were presented prominently on applicant’s letterheads and business cards as  the name under which applicant was rendering its legal services, then that mark may well be registrable.

Id. at 1956.

The examining attorney must review the specimens in order to determine how the proposed mark is actually  used. It is the perception of the ordinary customer that determines whether the asserted mark functions as a mark,  not the applicant’s intent, hope or expectation that it do so. See In re Standard Oil Co., 275 F.2d 945, 125  USPQ 227 (C.C.P.A. 1960).

If the proposed mark is used in a way that would be perceived as nothing more than an address at which the  applicant can be contacted, registration must be refused. Examples of a domain name used only as an Internet  address include a domain name used in close proximity to language referring to the domain name as an address, or  a domain name displayed merely as part of the information on how to contact the applicant.

Example: The mark is WWW.XYZ.COM for on-line ordering services in the field of clothing. Specimens of use consisting of an advertisement that states “visit us on the web at www.xyz.com” do not show service mark use of the proposed mark.

Example: The mark is XYZ.COM for financial consulting services. Specimens of use consisting of a business card that refers to the service and lists a phone number, fax number, and the domain name sought to be registered do not show service mark use of the proposed mark.

Refusal of registration

If the specimens of use fail to show the domain name used as a mark and the applicant seeks registration on the  Principal Register, the examining attorney must refuse registration on the ground that the matter presented for  registration does not function as a mark. The statutory bases for the refusals are:

If the applicant seeks registration on the Supplemental Register, the examining attorney must refuse registration  under Trademark Act §23, 15 U.S.C. §1091.