Frequently asked questions

A trademark uniquely identifies your products or services to potential customers. Registering a trademark federally prevents competitors of your business from stealing your business name, logo, or slogan. A registered trademark owner can take legal action against infringers in federal court, and stop others from trying to register a similar trademark that might create confusion for actual or potential. Protecting your unique name, logo, or slogan in the form of a trademark is one of the most important investments in your business.

TrademarkUnion can assist you with trademark registration from the convenience of your home or office. Just fill out a simple questionnaire and let us take care of the rest. Start your trademark registration now!

No.

They all protect different kinds of intellectual property from infringement by others. A trademark protects business/brand names, logos or slogans that are linked to some type of goods or services. A copyright protects original work related to art or literature. A patent protects inventions of different types. For example, if you invent a new kind of hair dryer, you would apply for a patent to protect the invention itself. You would apply for a trademark registration to protect the brand name of the hair dryer. And if you plan on airing a TV commercial to market the hair dryer, then registering a copyright would make sense.

Yes.

The USPTO allows one trademark per application. That means one trademark application can only register either a name, a logo or a slogan. A logo trademark application can include text, but then the design and the text together are considered one trademark. You would have to file two applications if you want them protected individually.

After your application is filed, the United States Patent and Trademark Office (USPTO) assigns an attorney to examine the proposed trademark. The registration process takes around 6 months if the examining attorney finds no issue with the application. Otherwise, the process can take more than a year. If the trademark is approved, the USPTO will issue either a Certificate of Registration (if application is filed on an in-use basis) or a Notice of Allowance (if application is filed on an intent-to-use basis).

There are two main factors that determine whether an application should be approved. The first one being the similarity of existing registered trademark in a related field. Similar marks create likelihood of confusion which results in rejection. The second one being the uniqueness of your anticipated trademark in relation to your product. Marks that are “merely descriptive” are often rejected.

At TrademarkUnion, we help you navigate the process before filing your application.

You can start the registration process, but the USPTO will not officially register your trademark until you can show a proof of use of the mark in commerce. Some people get on with their business to see if it’s viable before registering the trademark while others begin the registration process to make sure their business is protected before spending time and money building it.

Yes.

TrademarkUnion’s filing service starts at $249 plus federal filing fees. At TrademarkUnion, we take care of your application so that you can focus on other important things that matter to you. Get started today in applying for your trademark through TrademarkUnion.

After you submit your application, our legal team does the case review and availability search for your trademark application. If we require any additional information from you, we will contact you either by phone or email. The application is usually ready within 1-2 business days after which it is filed. Sometimes, the process can take longer if there are delays getting responses from clients or if there are further clarifications required.

It takes around 6-9 months for the USPTO to issue the registration certificate after the filing date, if there are no legal issues with the application.

Oftentimes no. However, if the other mark is linked to different products or services, it might be possible because there would be fewer chance of confusion between existing and potential customers.

For example, Domino Sugar and Domino Pizza coexist because they both sell different products to prevent confusion between consumers.

Normally, it takes around six to nine months if you’re already using your mark in commerce.

The USPTO will either approve, ask for additional information, or send a non-final rejection as an Office action that requires a response within 6 months.

Typically, you will have to pay a legal preparation fee and a federal filing fee to register your trademark. At TrademarkUnion, the legal preparation fee for a U.S. trademark starts at $249 plus the federal filing fee of $350 per classification. During the examining phase of your application by the government, if there are any legal challenges by the government or a third party due to potentially confusingly similar trademarks, you will have to pay an additional fee for the office action response if you wish for an attorney to draft a response on your behalf. The cost can range from $299 to $799 depending on the complexity of the issue.

To apply for a trademark, you must provide the following details:

The applicant’s name;
A name and address for correspondence;
A depiction of the mark;
A statement that the mark is in use in commerce;
A listing of the goods or services;
The filing fee for at least one class of goods or services; and
A specimen, the application is being filed on an in-use basis.

In-use basis: If you are basing your trademark application on “current use”, you must declare 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. The specimen of goods should display the mark on the goods/products, and the specimen of services should be used or displayed in the sales or advertising of the services. 

Intent-to-use basis: You may file your application on an intent-to-us basis if you have not yet used the mark in commerce, but plan to do so in the future. You can begin the filing process before using the mark. You must declare that you have a bona fide intention to use the mark in commerce.

You can think of trademark classes as categories that fall under your application depending on the types of goods and/or services you offer. The USPTO trademark classification system divides all goods and services into 45 trademark classes —34 for goods and 11 for services. Correctly identifying your goods and services is one of the most critical aspects of your application. A failure to correctly list the goods and services with which you use the mark may prevent you from registering your mark. And you will not be given a refund. The selected class(es) must correspond to the list of goods and services mentioned in the application in order to achieve full trademark protection.

It depends on what goods and services you provide.

The USPTO puts all products and services into 45 classes. Let’s say you are a teacher who also sells books. You might want to register in class 41 (education and entertainment services) and class 16 (paper goods) in order to gain trademark protection in both fields as your trademark protection is limited to the classes listed in your application.

What do customers purchase from you? An actual physical product that bears your trademark? Or do they hire you to perform an activity for them? If it’s products, you have goods. If it’s activities, you have services. 

You must list the specific goods and/or services for which you want to register your mark. You must be using the mark in commerce on all the goods and/or services if you filling your application on an in-use basis. If you are filing based upon an intent to use your trademark in the future, you must have a good faith or bona fide intent to use the mark on all the goods and/or services listed. The USPTO has divided the goods and services into categories called “International Classes”. Each class costs a separate government filing fee. At TrademarkUnion, we make the process very simple for you. Click here to start applying for your trademark now.

The information you provide will be reviewed by the legal team to make sure all the necessary details are present. A search will be conducted to make sure your anticipated mark is available. The legal team would check whether an acceptable specimen is provided or not. A specimen is a sample of how you actually use the mark in commerce on your goods or with your services, such as a product label or website. Our team will request you for the specimen if it is missing before filing your application with the USPTO. Apply now to start your trademark registration with TrademarkUnion.

If you are already using the mark in interstate commerce on all of the goods and services listed in your application, your correct basis should be under the “use in commerce” type of filing. If you are not yet using the mark in commerce, but have a bona fide intent to do so within the next 3-4 years, your correct basis should be under the “intent to use” type of filing. Selecting a basis is simple enough; it all depends on whether you’re already using the mark now or whether you intend to use it in the future. It is important that you submit the proof of use prior to receiving your trademark registration under either type of filing basis. For “intent to use” application, you may submit the proof of use later at an additional government fee of $100. TrademarkUnion can help you apply for your trademark and also submit your statement of use.

Not quite. Once your trademark application is filed, it takes around six to eight months of processing time before it is registered. If any legal issues arise in your trademark application during the examination phase, the process may further be extended until a final decision is made by the trademark office.

After your application is filed, it is reviewed within three months by an examiner who carefully goes through the application to determine if the mark qualifies for registration. If there are no errors, your mark ends up qualifying for the final stage where it is published in the USPTO Official Gazette for 30 days. At this point, anyone who objects to the trademark can do so and give evidence of why they object to it which further extends the processing time. A hearing is scheduled if someone objects to your trademark and both parties provide evidence to sustain their claim. After the publication phase, the final approval can be received within a year.

However, if the examiner determines that your application has any errors or legal issues, an office action is sent to you which gives you the chance to provide information regarding those issues within a timeframe of 6 months. If your explanations are valid, your application would move forward to the publication phase.

A specimen is an example of your product/service associated with your mark that your customer encounters in the marketplace (e.g., product labels or your website) while a drawing simply shows what the mark looks like. Both are completely different parts of the trademark application which are required if you wish your application to be accepted. If you are unsure about the specimen you are providing, it is recommended that you choose professional help to determine if the specimen is accurate or not.

The most common reason for rejection of a trademark application by an examining attorney is the likelihood of confusion. If you do not submit your application under the guidelines provided by the United States Patent and Trademark Office (USPTO), you will likely get your application rejected and find yourself unable to protect your mark.

The major factors that the USPTO attorney considers before making a decision include.

• Are any marks similar to your anticipated mark?
• The commercial relationship between the goods/services that have been listed in the application against those that are listed in the registered or pending application.

The USPTO attorney uses the Trademark Electronic Search System (TESS) so they can look through any similarities between applications.

The benefit of registering through TrademarkUnion means you get an attorney who evaluates your application for such similarities before the application is filed.

No, you will not receive a refund as we cannot anticipate all forms of rejections from the government or third parties. However, we can help you overcome the rejections easily by refuting the claims made by the government for a fee of $299 to $799.

The basic search is where we try to look for exact matches (or direct hits as we like to call them) in the federal database to see if someone else has already registered the same mark. However, in the comprehensive search, we do a thorough examination of all those marks that are exact or similar to your mark including the ones that are not registered.

Not really. Usually, mark owners with no federal or state registration are entitled with common law trademark rights simply by being the first to use the trademark in commerce. The owner of such marks can simply take action against you because they were the first ones to use the mark. However, it’s difficult to look out for common law trademarks. For that reason, we recommend our customers to opt for a comprehensive search that includes searches beyond state or federal registries, such as corporate names and names used on internet and social media platforms. To help you with this, we offer comprehensive search packages like the International and Federal, State & Common Law search.

You can find out whether a similar trademark already exists or not by performing a search on the TESS on the United States Patent and Trademark Office (USPTO) website. This helps identify the exact matches that may or may not be present in the USPTO database.

However, the exact match search does not give you a result of any similar names that may be present in the database. It does not tell you if someone else already owns a mark in a related category which might prevent your application from being approved. It’s always better to opt for a more comprehensive search before applying for registration.

When applying for trademark registration, it is important that you identify the right class of goods or services that your trademark falls under because failure to do so can result in a rejected application. If you end up registering for the wrong class, you will not be allowed to change the class, or switch from a good to a service.

The USPTO has an online “trademark identification manual” to help you find the trademark classification that’s right for you, but we understand that it can be a difficult and time consuming process. So, to make it easier for you, we simply identifying the class(es) for you when applying for your trademark registration.

The Office action is official document that is sent your way when a USPTO examining attorney has found some errors or legal issues after evaluation of your application. It outlines the reasons why the application is being rejected and, if applicable, provides a list of additional requirements that must be met for reconsideration.

The USPTO updates the status of your application and notifies the contact person(s) listed on your trademark application via email. If you have sought out the help of an attorney and they have been handling your trademark application, the attorney will promptly notify you of the updates.

You can also allow us to alert you about your trademark application without having to keep a constant check on it. However, if you’ve filed the application yourself, you will have to regularly keep a check on your application process to see if you’ve received an Office action or any other update.

The point in time you receive an Office action from the USPTO, you have six months to respond to it. However, if you don’t respond in the given time, your application will be abandoned which means you’ll have to start the registration process from the beginning.

After the USPTO examining attorney reviews your application and identifies legal issue in it for the first time, you will receive a non-final Office action. If you fail to address or resolve all the issues in your response to the non-final Office action, you will receive a final Office action. At that point, you can either comply with the requirements or file an appeal with the Trademark Trial and Appeal Board.

This entirely depends on what type of Office action is issued by the USPTO against your application. Both you or your attorney can respond to the Office action and ensure that the problems are addressed adequately.

While some office actions consist of problems that are easy to resolve, others can be quite complex depending on the legal matter. It’s always better to consult with an attorney before filing an Office action response in order to prevent losing your trademark protection and the non-refundable filing fee.

If you do not respond to an Office action sent by the USPTO, your application will be abandoned after a period of six months.

A Statement of Use is simply a declaration that states that the trademark is being used in goods and/or services that are available for sale in interstate commerce. It is a mandatory part of a trademark application that is filed on an intent-to-use basis.

Your Statement od Use includes a sworn statement that is signed by you or someone authorized to sign for you, attesting to use your mark in interstate commerce. Along with the Statement of Use form, you must submit the following in order for the declaration to be made.

• A filing fee for each class of goods and/or services;
• A specimen that shows usage of the mark in commerce for each good and/or service mentioned in your Notice of Allowance.

Once a ‘Notice of Allowance’ is issued by the USPTO, you have six months to submit a Statement of Use.

An Allegation of Use is another name for a Statement of Use that is required for trademark applications filed on an intent-to-use basis to prove that the goods and/or services you are filing for are being used commercially. It has to be submitted to the USPTO for the trademark to be registered.

A Notice of Allowance is a sign that shows the USPTO has gone through your application and found no issues with it. All that is required from you now is the Statement of Use to prove that you are using your trademark on goods and/or services that are available for sale in interstate commerce.

In simple words, this is the USPTO attorney’s way of saying, “You’re almost there. Just show me how you are using your mark commercially and you’re good to go”.

Once the Notice of Allowance is sent your way, you have a period of six months to provide a trademark Statement of Use or file an Extension Request. If you fail to do so, your trademark is considered abandoned.

If you’ve received a Notice of Allowance, fear not because we can help you file a Statement of Use or file a Statement of Use Extension Request.

An applicant is supposed to file an Extension Request to demonstrate that they still intend to use the mark in commerce, but need additional time to prove it. The Extension Request is a sworn statement and requires signature of the owner of the mark or person authorized to sign on behalf of the owner. If the Extension Request is granted, the applicant has six months to either file a Statement of Use or request for another extension.

Applicants should consider filing a Statement of Use Extension Request prior to using goods and/or services commercially. To protect the identity of their brands prior to their release, many companies apply for trademark registration as soon as development on their new brand begins, then continue to file multiple Extension Requests before they can actually submit the Statement of Use once their goods and/or services are available for sale to the public.

You can request up to five (5) extensions with a deadline of 6 months each. This means that intent-to-use basis applications have a maximum of 36 months (including the initial 6-month period) from the issuance date of their Notice of Allowance to file their Statement of Use. If you’ve exhausted all the extension periods without filing a Statement of Use, the USPTO will deem your application abandoned.

To view the mailing date of your Notice of Allowance, visit https://tsdr.uspto.gov/ and enter the USPTO serial number for your trademark.

Every single extension gives you an additional six months to submit a Statement of Use.

If you do not file a Statement of Use or an Extension Request within 6 months of the issuance of your Notice of Allowance, the USPTO will abandon your application.

After you file the 5^th extension, you cannot avail any more extensions. If you fail submit the Statement of Use within the extension periods, the USPTO will consider your application abandoned. What you can do next is file a new trademark application if you still plan on using the mark in the future. The new application would give you a chance to request up to five additional extensions.

A renewal for your trademark must be made between the 9th and 10th year after registration, followed by each successive 10-year period after that. If you exceed your renewal deadline by less than 6 months, you can still renew by paying an additional fee within the USPTO grace period. If you end up exceeding that grace period, your trademark registration would be canceled.

You will need to provide:

1. Your USPTO trademark registration number; and
2. A recent specimen showing that you’re using your trademark to sell the goods and/or services listed on your registration. For goods/products, you can provide photos of the product, product packaging, product label, etc. where the mark can be seen prominently. For services, you may include brochures, advertisements or websites that prominently display your trademark associated with the services you’re selling.

The USPTO does not limit the number of times you can renew your registration provided that you’re still using the trademark in commerce in the right way.

If you do not renew your trademark in the given time frame, you will end up losing the federal protection of your trademark. You will then have to go through the registration process all over again in order to protect your mark again or try to revive your previous registration.

A trademark assignment is where you transfer the rights of a trademark from one or more owner to someone else. Trademark assignments are always in writing and a contract is drafted to ensure the transfer of rights is done smoothly with the authorization of all relevant parties.

Trademark assignments can transfer the rights from not only registered trademarks but also those that are filed and undergoing the application process at the USPTO.

A trademark assignment should be carried out every time a trademark changes ownership. The trademark’s new ownership should be registered through a trademark assignment with the USPTO. For example, an assignment should be recorded if you sell your trademark, if you gift your trademark to someone else, or if your organization structure changes such that a new entity ends up owning the trademark rights.

There are two things that you need to provide with your trademark assignment recordation:

1. USPTO trademark registration number or trademark serial number.
2. A copy of the trademark assignment contract. The contract should consist of the new and old ownership information, along with the trademark(s) being transferred, as well as any other significant information related to the assignment.

The trademark assignment recordation process is essential in keeping the ownership records current in the USPTO database. The current owner needs to be recognized by the USPTO so there are no future problems due to mismatch. It is also important because the USPTO or another party may try to contact the owner due to some reason. Failure to contact the current owner of a trademark can result in inconvenience to USPTO, previous and current owner, and other third parties.

If a company is sold to a new owner, all the trademarks registered with it are moved to the new owner by default. A trademark assignment should be carried out if you plan on selling a company and retain the trademark rights to yourself.

Generally, trademark owners are responsible for enforcing their own trademark rights. In order to enforce your trademark rights, you need to be aware when others are infringing your mark. Trademark Monitoring is a service that alerts you when someone is using a mark similar to yours.

The USPTO obviously prevents conflicting marks from being registered. However, in order to enforce your rights at a larger scale, you need to know when others are using trademark similar to yours. Trademark monitoring gives you that information so you can take action against infringers at the right time to prevent others from taking advantage of your brand value and your customers.

A conflict occurs between two trademarks when one is confusingly similar to another that is already registered. The major factor that determines the chance of conflict is when both the marks are similar with goods/services that are alike. However, a conflict can arise if a mark can potentially create confusion in the market if it sounds similar to an already registered trademark. In some cases, trademarks that may seem similar can coexist if they are unlikely to cause confusion in the market. For example, two trademarks that may seem similar can both be allowed if they are used for products or services that are unrelated, and are therefore unlikely to cause confusion.

While the trademark does give you sole ownership of your intellectual property, it is not necessarily true that others can’t use the mark at all. Someone can use the mark independently provided that they limit its usage to the agreed upon terms or use it in a non-infringing purpose as long as no more of the trademark is being used than is necessary for this purpose. It is important to know that trademark laws only control commercial use of the mark.

Copyright is a form of protection granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.

Copyright, a form of intellectual property law, protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.

Generally speaking, the owner of a copyright has the right to do the following:

• Reproduce copies of the work
• Prepare derivative works
• Distribute copies
• Perform the work publicly either in person or recorded
• Display the work publicly

In most cases, a copyright lasts for the life of the author plus 70 years. If the author of the work died in 2020, then the copyright, in most situations, would last until 2090. For works made for hire, and for anonymous and pseudonymous works, the duration of copyright is 95 years from publication or 120 years from creation (whichever is shorter).

Copyright does not protect names, titles, slogans, or short phrases. In some cases, these things may be protected as trademarks.

The original content, code and design elements appearing on a website may be protected by copyright. You will submit a printed out version of your site and the copyright protection will apply to the version submitted. Because websites are frequently updated, you may want to submit your revised version of your website, too. Registration of a revised version covers only the new or revised material added.

Copyright law does not protect domain names. The Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization that has assumed the responsibility for domain name system management, administers the assigning of domain names through accredited registers.

Publication is not necessary for copyright protection.

“Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

No. Names are not protected by copyright law.