"What the world really needs is more love and less paperwork."

True words, Pearl Bailey, but when it comes to trademarks, paperwork is the fuel that keeps the trademark machine running.

I'll devote a few posts to the different types of filings the USPTO requires. That being said, let's start at the beginning.

Trademark/Servicemark Application, Principal Register:

"Use this form to file an initial application for either a TRADEMARK for "goods" AND/OR a SERVICEMARK for "providing services" -- this form is appropriate for both."

As the USPTO does, we'll use the term trademark to denote both types of marks. When applying for registration for your trademark, this is the application you'll start with.

Provided within quotes is straight from the USPTO & my explanations are underneath. Within this application, there are two routes you can go:

1) 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."

Basically, this means that if you're claiming the mark is in use in commerce, you're telling the USPTO that the mark is actually being used either across state lines or between the US & another country.

This is a point of confusion for many folks we talk to so let's break this down a bit. Getting your DBA, incorporation, LLC, etc. or obtaining a domain name DOES NOT qualify as use in commerce. Making a sale in at least 2 states DOES qualify as use in commerce.

"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."

This was discussed in detail in my post about specimens - read further here.

2) Intent to Use

"Applicants who have not yet used (in commerce that can be regulated by Congress) the mark they wish to register may file a trademark application under this filing basis."

This one's easy to understand -- if you haven't used the mark at all OR if you've only made sales within one state, you'll file as an Intent to Use.

One important note: the USPTO will NOT register the mark until the applicant "begin(s) actual use of the mark in commerce and file an Allegation of Use."

More details to come...

And Just What Does That Mean? Part One

Picking up from yesterday's post, I thought it'd be a good idea to devote some time explaining the different status descriptions for Federal trademark applications.

Any & all definitions can be found here but I thought it'd be nice for our readers to take it a step further and put these explanations in easy to understand language. The material in quotes is straight from the USPTO's mouth while the text underneath is straight from mine.

* Assigned to Examiner:

"a USPTO employee who examines (reviews and determines compliance with the legal and regulatory requirements of) an application for registration of a federally registered trademark"

The first step of the filing process is your application being assigned to an examining attorney at the USPTO. This is not an attorney that will litigate for you or will consult with you about infringements. This is an employee of the USPTO who you will correspond with directly about your application.

* Non-Final Action (E-)Mailed:

"an Office action letter that raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final Office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final Office action, the examining attorney will issue another non-final Office action that sets forth the new issue(s) and continues any that remain outstanding. Applicants must respond to non-final Office action letters within 6 months from the date they are issued to avoid abandonment of the application."

Once your application has been assigned to an examining attorney, the first step is for the examiner to review the application & should there be any issues with the application, an Office Action will be sent to the applicant. Since most folks now list an email address, your inbox is the place to look for it.

Segue: Once your application is filed, add the USPTO to your address book so as to avoid any messages getting trashed -- TEAS@uspto.gov is the email address you'll get your notice of filing from and then messages after that will be specific to your examiner's law office, so to be safe, accept any messages coming from uspto.gov

More definitions next week...

Do Your Due Diligence

Once your Federal trademark application is filed, it's on you, the applicant, to keep an eye on your status, any emails & any requests from the USPTO. Failure to do so could result in your application becoming canceled, so this is important.

Here's what the USPTO says:

"Trademark applicants and registrants should monitor the status of their applications or registrations in cases where a notice or action from the USPTO is expected. Inquiries regarding the status of pending matters should be made during the following time periods:

(1) During the pendency of an application, an applicant should check the status of the application every six months between the filing date of the application and issuance of a registration; and
(2) After filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, a registrant should check the status of the registration every six months until the registrant receives notice that the affidavit or renewal application has been accepted."

I respectfully disagree with the USPTO's assertion to check your status every 6 months. While the entire registration process can be poky, it's better to stay more on top of your filing. At TradeMark Express we recommend to our clients that they check their status every two weeks to one month. This way if the USPTO had, for instance, sent you an Office Action that needed a response, you'll have plenty of time to deal with it.

To check your status, go here and enter your Serial Number. I'll devote tomorrow's post to defining common status descriptions.

How do I Trademark a Slogan?

Here's another question from one of our readers:

Shannon ....

I'm a book author, and I came up with a very 'catchy' slogan to be used in future advertising campaign.

What steps do I need to take to trademark and/or copyright this slogan so that it is exclusively mine??

Alan Roger Currie Author, "Mode One: Let The Women Know What You're REALLY Thinking"

Thanks for your question Alan!

First, it's not possible to copyright a slogan.

Copyrights can be obtained for things of an artistic nature. This includes, of course, poetry, films, sculptures, music, fiction, etc. But can also include things that may not necessarily seem "artistic" in the general sense of the word. Copyrights can also be obtained for advertising copy, games, software programs and blueprints, to name just a few.

It may be possible to file for a trademark for the slogan as long as it's used to indicate & identify the source of goods/services.

If we're talking about a merely informational slogan or a slogan that conveys advertising information, it's not eligible for trademark registration.

Click these links to see what the USPTO has to say:

Slogans or Words Used on the Goods
Slogans, Refusal Based on Descriptiveness
Matter that Does Not Function as a Service Mark

Hope that helps Alan!

Any other questions, please email me: by clicking here OR comment below.

Read more about trademarks here