Free Trademark Application Worksheet

The "use" of a mark required for federal registration in the case of goods means placing the mark on the goods or on labels or tags that are physically attached to the goods or on containers or point-of-sale displays for the goods.

"Use" of a mark for services can be any use in which the mark appears in materials used in the sale, advertising or promotion of the services.

Proper use is important because when application is made for federal registration, "specimens" of the actual labels or tags that show that the mark is in use must be submitted with the application. In the case of an "intent-to-use" application, these "specimens" must be submitted at a later date following actual use before the registration will be granted.

A certification mark is a mark that is used to certify:

(i) regional or other origin characteristics of goods or services,

(ii) quality, accuracy or other characteristics of goods or services, or

(iii) that the work or labor on the goods or services was performed by members of a particular organization, such as a labor union.

The primary purpose of a certification mark is to provide information to purchasers regarding quality, not to identify the manufacturer or supplier. The party who affixes the mark, with the authorization of the certifier, does not own the mark. The certifier owns the mark and is the only entity that can register the mark.

A mark that identifies membership in an organization (a "collective membership mark") may be registered to prevent use by others. These marks are not marks in the ordinary sense of a mark for goods or services because a membership mark does not indicate the commercial origin of goods or services.

Application to register a collective membership mark can only be made by the organization that controls or intends to control the use of the mark. In other words, the organization, not a member, must apply for the mark. Fraternal organizations, unions, and professional associations are examples of organizations that can obtain this type of mark.

Information about prior applications may be relevant to your attorney or to the U.S. Patent and Trademark Office for use in processing your application. Other information may include a detailed description of the similar or related mark and the use of that mark.

A corporation is a separate legal entity owned by one or more shareholders who have "limited liability." The shareholders elect directors who have overall responsibility for the management of the corporation. The directors elect officers who carry out the wishes of the directors. A corporation is formed by filing articles of incorporation with the secretary of state. The corporation also adopts bylaws that govern the corporate organization.

A "mark" is a word, name, symbol, device, or a combination of such items that identifies and distinguishes one party's "goods" (also known as products) or "services" from the "goods" or "services" of another party.

The term "trademark" technically is a term that identifies and distinguishes "goods," while the term "service mark" is used to refer to "services." For example, "Kodak (R)" is a familiar trademark that is the registered trademark and identifies the products of Eastman Kodak Company. An example of a "service mark" is "McDonald's (R)," a registered mark of McDonald's Corporation that identifies its restaurant services.

A "mark" is not synonymous with a business name or legal corporate name, although in some cases, a business or corporate name (or a part of it) may be used in a manner that qualifies it as a trademark or service mark. To qualify for federal registration, a mark must be sufficiently distinctive to serve its identification function. It cannot be merely descriptive of a product or service or some quality, purpose or characteristic of the product or service.

If the mark is or includes the name or likeness of a living individual, the mark cannot be registered unless the written consent of the living person is submitted with the application for registration. This is also true if the mark identifies a deceased president of the United States during the life of the president's widow, in which case the consent of the widow must be obtained.

The application for federal registration must include a drawing showing the complete mark for which registration is sought. The drawing can be typed for a mark that comprises only a word, letter, numeral or combination of them not in a special form. If the mark is comprised in whole or in part of special characteristics, such as elements of design, color, or styles of lettering, a special drawing must be submitted that meets the requirements of the Trademark Office.

An estate is a legal entity created by admitting the will of a deceased person to probate, which continues until the will has been administered in accordance with court and statutory requirements.

If the application for registration is accepted by the Trademark Office for examination, it is assigned to a trademark examining attorney who will review the application for compliance with the application rules and regulations. A search will be conducted of prior registered marks and pending applications for registration to determine if there are marks confusingly similar to the Applicant's mark. If no conflicting marks are found in the search, and if the application is in compliance with the applicable rules and regulations, the mark will be published for opposition in the "Trademark Official Gazette," a weekly publication of the U.S. Patent and Trademark Office.

If no one successfully opposes the registration of the mark within 30 days after its publication, the registration certificate will be issued if the original application was based on actual use. If the original application was based upon an intent-to-use, the Trademark Office will issue a Notice of Allowance which begins a six-month period in which the Applicant must file a statement of use accompanied by specimens showing actual use and payment of a $100 fee. This six-month period of time can be extended for good cause. Upon filing of a proper statement of use by the Applicant, the registration certificate will be issued.

The Trademark Application Worksheet requests the information needed to prepare a trademark application with the assistance of an attorney. When the actual application for federal registration of a mark is completed, it must be verified by the Applicant's proper signature. The form of the verification is specified by the rules of practice of the Trademark Office. By signing, the Applicant is verifying (under penalty of law) that to the best of the Applicant's knowledge, the Applicant is the owner of the mark, that no one else has the right to use the mark, and that all the facts stated in the application are true.

When filed, the complete verified application must be accompanied by payment of a filing fee in the amount of $245.00. Normally, a single application will seek registration only in a single class, but if a multiple-class application is filed, the fee is $245.00 for each class of goods or services for which registration is sought. Because the amount of the fee is increased from time to time, verification of the proper amount should be made before filing or the granting of a filing date for the application may be delayed until the proper fee is fully paid. Payment should be made by post office money order or certified check payable to the "Assistant Commissioner of Patents and Trademarks."

The complete, signed application together with the filing fee and specimens (if required) should be addressed to "Box NEW APP, FEE, Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3513."

A general partnership is somewhat similar to a sole proprietorship, except that the partnership is owned and managed by more than one owner. Generally, organizational formalities are not required by statute to form a partnership, but it is advisable to have a partnership agreement that sets forth the agreement of the partners regarding distribution of profits, procedures for handling the death or withdrawal of a partner, and other matters. Many states have specific statutes that govern partners and partnerships, particularly in the absence of a partnership agreement.

The owner of a mark can obtain rights that are enforceable against later users who use a confusingly similar mark. Such rights can be established by either:

(i) actually using the mark, or

(ii) filing a proper application and subsequently being issued a federal registration for the mark with the U.S. Patent and Trademark Office.

If a mark is used only locally (in only one state), it may not qualify for federal registration, but every state also has a registration law. Although neither federal nor state registration is required, federal registration in particular provides many important rights and benefits beyond the rights that are acquired by simply using the mark. For example, the owner of a mark can establish rights throughout the United States by federal registration even though the mark is used only in a few states.

If a business has not yet used a mark but has a good faith intent to use a mark in connection with its goods or services in more than one state, a "prior right" can be established against future users by making use of the "intent-to-use" provisions of the federal trademark laws.

The symbol "TM" can be used in connection with the mark for any product ("SM" for services) for which a party claims a right, while the symbol "(R)" may only be used in connection with a mark for which a party has been issued a federal registration.

Rights to a mark continue as long as the owner continues to use the mark to identify goods or services. A registration with the U.S. Patent and Trademark Office is issued for ten years and is valid as long as the mark is used. The registration may be renewed for additional 10 year periods as long as the mark continues to be used. Between the fifth and sixth years of the first ten year term, proof of use or excusable nonuse must be made with the Trademark Office to prevent the registration from being canceled.

The application for federal registration of a mark must include a description of the goods or services. The federal government provides a listing of "classes" of goods and services that is based upon an international classification system.

Unless a "multiple class" application is filed, the description can describe goods or services within only a single class, and the description of the goods or services provided by the Applicant should specify which class best describes the goods and services. If the Applicant does not know the specific class number, the Trademark Office will provide this designation.

It is important to accurately describe the particular goods or services in fairly broad terms using common names, since the description cannot be narrowed once the application is filed. However, SPECIFIC goods or services with which the mark is NOT being used cannot be included.

A joint venture is made of two or more persons or entities that cooperate together for a business purpose in a manner similar to a partnership, and usually just for a single project.

A limited liability company (an "LLC") is similar to a corporation in that its owners have "limited liability" for the debts of the entity. An LLC is formed by filing articles of organization with the secretary of state. It also has an operating agreement that is somewhat similar to a partnership agreement or a corporation's bylaws.

A limited partnership is a specific type of partnership that has both "general" and "limited" partners. The general partner is responsible for the management of the partnership and receives a share of partnership profits and losses. The limited partners share in the profits and losses but are not permitted to have any management responsibilities. In return, their liability is limited to their respective capital contributions to the partnership. The general partner has unlimited liability. Most states have specific statutes that govern the formation and operation of limited partnerships. Generally, a certificate of limited partnership must be filed with the secretary of state.

The application can describe goods or services only in a single "class" of the classification system, but if the goods or services fall into more than one class, multiple applications may be filed or a single "multiple-class" application may be filed. In either event, the required filing fee (presently $245.00) must be paid for each application or each class of goods or services in the multiple-class application.

The trademark regulations require that ALL general partners be listed. However, if the partnership has more than ten partners and the partnership agreement provides for the continued existence of the partnership in the event of the addition or departure of a partner, only ten partners (the "principal" partners) need to be listed.

Frequently, the Trademark Office's trademark examining attorney will raise some objections to the application for registration. The description of goods or services clause may have to be reworded or some minor change may have to be made to the wording in the application. More seriously, the search conducted by the trademark examining attorney may reveal a prior registration or application that, in the opinion of the attorney, conflicts with the Applicant's mark and thus prevents registration. Or, the trademark examining attorney may decide that the Applicant's mark is not sufficiently distinct to function as a registrable mark. These objections are usually made in writing in what is called an "Office Action," but minor objections may be raised by a telephone call from the trademark examining attorney.

In any event, the Applicant is given a period of time to respond to the objection and request reconsideration. This response can be made in writing or by telephone. If upon reconsideration the trademark examining attorney continues the objection, it is usually made "final," in which event the Applicant has a right to appeal the decision to the "Trademark Trial and Appeal Board." The Applicant may always voluntarily abandon the application for registration at any time. An unsuccessful attempt at registration does not affect the right of the owner of the mark to continue using it.

1. The Trademark Application Worksheet is not a formal document and does not require any signatures, witnesses, or notarization.

2. You should bring a copy of the completed worksheet with you when you meet with your attorney to begin the actual trademark application process.

3. If your mark includes a design, logo, or symbol, a copy or picture should be attached to the worksheet.

A sole proprietorship is an unincorporated business owned and managed entirely by one person (the "proprietor"), except to the extent that the proprietor may delegate management responsibilities to an employee. It is the simplest form of business, and no organizational formalities are required.

An application based upon actual use must include specimens showing the mark as currently used by the Applicant. No specimens are necessary for an intent-to-use application, but specimens will be necessary at a later date when the application has been allowed. Specimens usually consist of samples of the actual material showing the mark as used in connection with the goods or services.

The type of materials submitted with the application as specimens varies depending upon the particular circumstances of the use. The Trademark Office has numerous rules and guidelines on what types of materials are acceptable as specimens.

If the Applicant for a trademark is a legal entity that is separate from the individual who will actually sign the trademark application (for example, a corporation, partnership or limited liability company), simply enter the full legal name of the entity. For example, "Widgets, Inc." or "Mark IV Enterprise, L.C."

However, sometimes an individual is operating with a business that has not been organized as a separate legal entity. For example, an individual named "Marla Jones" may be "doing business as" the "ABC Company." In such cases, enter the individual name, "dba," and the business name. For example, "Marla Jones, dba ABC Company."

The Trademark Application Worksheet is designed to help gather the information you need to prepare an application for the registration of a "mark" with the U.S. Patent and Trademark Office. (See Defining the Trademark for an explanation of the term "mark," as well as of the terms "trademark" and "service mark.")

If you need more information than provided in these program topics, contact an attorney, a local library, or the Permission for Trademarks, PO Box 1451, Alexandria, VA 22313-1451. You can also visit the U.S. Patent and Trademark Office's web site at www.uspto.gov.

A trust is a legal entity created by a trust agreement (or a will) under which assets are managed by a trustee for the benefit of the trust's beneficiaries.