14 Nov 2018 / 18:04 GMT
01 Articles Overview
02 Business Planning, Benefits & Strategies
03 S Corporations and C Corporations
04 Estate Tax, Discussion
05 Non profit corporation
06 Schedule C, Unincorporated Businesses
07 Section 1244 Stock
08 Stock transaction tax rules For Day Traders
09 Tax Treaty Countries
10 Trademarks
11 USA, State Death taxes
Articles of Interest
Trademarks
 

 
  • Introduction


    Trademark is a complicated area of law. WNLLC can, provide you with the procedure for registering your federal trademark and explain some of the legal issues around doing so. By the way, we warn you ahead of time that the trademark search (step 2) is by far the worst part of registering a trademark. Once the search is over, it's pretty much clear sailing. Don't give up just because the search seems daunting.
     
  • Learn What a Trademark Is


    WNLLC You should know about the three different types of protection that exist whenever you want to protect an idea you came up with:
     

    A Trademark...


    Protects a word, phrase, symbol, design, or combination of these things. Basically, you get something trademarked to protect your product's name, logos, and such ilk. Examples of trademarked items are the names "Coke," "Coca-cola," "McDonald's," the McDonald's golden M logo, stuff like that. In a nutshell, you can only trademark a clever little word, catch phrase, or design, and use it to market your goods and services. Here's the technical definition of a trademark:
     
    The U.S. Patent and Trademark Office (USPTO) defines trademarks and service marks as follows:
    "A TRADEMARK is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product." Furthermore, "a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services."

    A Patent...


    Protects the physical characteristics of a new invention, or a new procedure. We won't get into the details; at the present. A
     

    Copyright...


     
    Protects an original expression (artistic or otherwise). Music, art, books, and website articles all get copyrighted.
     
    But wait, couldn't a lot of these things overlap? When does a phrase become long enough so that it no longer needs a trademark, but a copyright? Well... it can get blurred, but do your best. If your phrase or logo exists as a means for you to sell a product, then you're probably looking for a trademark.
     
    There are two systems of trademark law: common law and federal. In order to get common law trademark protection you have to use the trademark only within your state. This is for purely local business (you open a Mom & Pop store in your backyard). However, unless your business will definitely be limited to one state and you don't plan to use the Internet, it is best to register your trademark for federal protection. Even if you don't think that you're ever going to expand out of state, you should still go for federal protection, because if you're ever going to purchase from or sell to out-of-state, that qualifies as interstate commerce. We'll discuss that particular situation later on in step 3. So go for the federal trademark.
     
    Incidentally, when you use a trademark before it has been registered, you should always put a TM (for a trademark) or a SM (for a service mark) in small letters next to the trademark. You may not use the R in a circle design (which is reserved for federally registered trademarks) next to your trademark until after it has been registered, by which we mean after your application has been received, processed, and accepted, not just after you fill out the form.
     
    What happens if you use the phrase that you're trying to get trademarked, but then find out that someone else is using it? Well, it depends. If you began using the phrase first, even before you went through the legal processes, you have precedence over the other person. Proving who used the phrase first can be difficult and court costs can add up, so don't bother waiting. Our point: once when you come up with your idea, proceed immediately and apply for a trademark.
     
  • Perform a Trademark Search


    WNLLC When you first conceive of a mark that you would like to use to market your goods or services, you should immediately check to see if anyone else is using it. There's no sense wasting your time with all the rest of the procedure if someone else has already registered it. You also need to see whether anyone has registered a mark that is substantially similar to the one you want to use. You do this by checking other people's applications to the United States Patent and Trademark Office (USPTO).
     
    There are two main tests for "substantial similarity." First, is the trademark likely to cause confusion among consumers so that they might mistake the two suppliers of products or services for each other? For example, it would be confusing to have a software company called "Micrasoft" because there is already a software company (you may have heard of it) called "Microsoft." Second, is the new trademark likely to cause dilution of the respect for the older one? For example, no one would mistake "Microsoft Porn Service" for the big, bad, software company, but you'd better believe the proprietor would be receiving a letter from Bill Gate's lawyers in short order.
     
    The USPTO has a free searchable database of federally registered trademarks, and you can use this whenever you want to perform trademark searches (we'll tell you how in a minute). Unfortunately, because of the two schemes of trademark protection (common law and federal), not all of the trademarks in use will be federally registered. Therefore, the USPTO's free database won't tell you if someone is using an unregistered trademark that has common law protection. Furthermore, the USPTO's database is usually a few months behind on registered trademarks, so it won't show you recently registered trademarks.
     
    These issues make your trademark search more difficult, but we'll try to help you out.
     
    You can also access more up-to-date records than what the USPTO offers with an online trademark search service like NameProtect.com. Their instant free online searches include weekly updated federal records plus Canadian trademarks all registered internet domain names, and a huge library of US company names.
     

    Why bother searching?...


    There are two sorts of risks associated with not performing a thorough trademark search. First, if you send in an application and it is rejected because there is an existing registered trademark that is identical or substantially similar, the USPTO will still keep your application fee of $325 per class of goods and/or services. Second, if you infringe someone else's trademark, you could suffer legal consequences. If you use a trademark that someone else has federally registered, you could be considered a willful infringer (because you could so easily have checked) and be massively penalized. If you infringe on someone else's trademark without knowledge (i.e., it's not federally registered and you didn't know about it), and the party upon whose trademark you've infringed successfully sues for an injunction against your use, you will have to stop using your trademark and pay whatever it costs to change to a new trademark. It's unlikely that you will be successfully sued for damages for trademark infringement, because it's difficult to prove that an infringer's use of the trademark actually harmed the original user's business (but this is also a possibility).
     
    We're sure that most of this information about trademark searches is confusing and labrynthine in some aspects; if you are in doubt you will probably have to consult a trademark attorney or a trademark search service (you can find these in your area in the Yellow Pages or through Martindale-Hubbell). However, with significant expenditures of time and diligence you may be able to do this on your own. In order to see whether or not someone else is using an identical or similar trademark to yours, you'll have to perform a trademark search. There are a number of ways you can do this, and we'll list them from the cheapest and least certain to the most expensive and most certain.
     
    1. Search for free on the Internet or in a USPTO Library
    2. Save time by using an affordable Online Trademark Search Service
    3. Subscribe to an Online Trademark Database
    4. Pay a Commercial Trademark Search Service

    Search for free on the Internet or in a USPTO Library


    Yes, the best things in life are free, including scanning endless websites to see if other people are using the trademark that you fancy. The first thing to do is go to the USPTO's database of federally registered trademarks and conduct a search of the word or phrase you intend to use, or of words or phrases which describe the symbol or design you intend to use. Try several different combinations, instead of just the exact word or phrase you want, because you need to see if there's anything substantially similar in use (remember?). This database is free to search as often as you want.
     
    Next, you conduct similar searches on the Internet using your favorite search engine(s). Type in the exact word or phrase and see what comes up. Chances are, you'll get thousands, and then you've got to use your web-searching skills. See if any of the identical or similar occurrences in websites are being used to promote a product and have a little TM (™) or an R in a circle (®) next to them. If you find an identical trademark, you're out of luck. However, if you find a similar trademark it's still possible that you might be able to use the one you want, but you'll probably have to check it with a lawyer or a trademark search company (discussed later in this step).
     
    It's also a good idea to check in the phone book, Yellow Pages, and/or with state business directories to see if there is anyone using the trademark or something similar. Common-law trademark protection applies to anyone who has used a trademark, and a good way to find out if someone else has rights in your proposed trademark is to see if it occurs anywhere else.
     
    This method is not very certain, but if you're the gambling sort (we're not recommending that you be that sort in any way that exposes us to liability) you might want to give this a shot and apply if you don't find anything identical or similar.
     
    You can also do a complete trademark search for free (if large quantities of your time are worth nothing) by going to a local Patent and Trademark Depository Library and following the instructions they'll give you there. We assume you have significant other calls on your time to do this, but we mention it anyway, just to give you the option. You can find out more about these libraries, including their locations, here: http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html.
     
    If you do find something you think might be similar to the trademark you want to use, you should probably consult with a trademark attorney.
     

    Save Time by Using an Affordable Online Trademark Search Service


    If you do not have the time to search on your own, you can use an online trademark search service for an reasonable price. We recommend Nameprotect.com because of the ease of use and the quality of their service. You can search all the names you want in their online databases, and it's FREE!
     
    Not only are their records updated weekly, their online results also show all pending, registered, expired, canceled and abandoned trademark records from the USPTO.
     
    This online service also throws in a Canadian trademark search and a search of all registered domain names under the .com, .net and .org extensions. NameProtect.com also offers state, common law and international comprehensive search reports for an extra fee, and a great online tutorial that walks you through the federal trademark application process.
     

    Subscribe to an Online Trademark Database


    You can also perform a search on your own by subscribing to Compuserve, which allows you access to the TrademarkScan database maintained by Thompson and Thompson. This database lets you do a really thorough search of federal and state trademark registration lists. Again, you should try different combinations of the words in your trademark to see if there is a substantially similar trademark in use. You will be charged by the search, but it's cheaper than getting someone else to do it for you. Most commercial trademark search firms use this service. It is the most complete, it's cheaper than other subscription services, and it offers online help. You can use the above link to visit their website or you can call them at 1-800-848-8990.
     
    The only problem with this method is that you might err at doing this kind of search and end up doing it wrong. If you do find something you think might be similar to the trademark you want to use, you should probably consult with a trademark attorney.
     

    Pay a Commercial Trademark Search Service


    If you have significant other calls on your time, risk-averse, or both, you should probably pay a professional search service to do your search. This service doesn't come cheap - a complete search of all registered and unregistered marks could run you between $300 and $500 - but it gives you peace of mind and, someone else to blame. Some of these services will also provide you with a legal opinion about whether or not the trademark you want to use is substantially similar to someone else's trademark. You can find these in the yellow pages or online in Martindale-Hubbell (go there and select "Trademark Search Services" from the pulldown menu next to the heading "Service Type" and then enter your state and city).
     
  • Complete the Federal Trademark Application Form


    Once you're content with your trademark search and you feel confident that you can use the trademark you want without infringing on anyone else's rights, it gets easy. It's easy, but it costs money (unavoidable) and the application won't be processed for a long time.
     
    There are two types of application you can file (there's another one for non-U.S. applicants, and you can find out about more about that at the USPTO's website). The first is the "use" application, which is the one you complete if you have already begun using the trademark in commerce (see next paragraph). The second is the "intent-to-use" application, which you complete if you have not yet used the trademark but you have a genuine intent to use it. If you're confident that there won't be any problems with your application, we recommend that you go ahead and start using the trademark and then complete the "use" application. The USPTO won't register your trademark until you use it and submit an "allegation of use" to them, so if you complete the "intent-to-use" application it means more paperwork for you later (you have to send them the allegation of use within six months, or up to three years if you apply for a series of extensions).
     
    The use of a trademark "in commerce" refers to the Constitutional grant of authority to Congress to regulate "interstate commerce." We're not going to go into it because most of the discussion is couched in legal terms and technical , but Congress liked the idea of using this power really broadly, and it's not tough to fit under it. The USPTO defines "interstate commerce" as: "For goods, '[i]nterstate commerce' involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, 'interstate commerce' involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.)."
     
    Whichever type of application you decide to complete, before you apply you should try to determine ahead of time whether or not the application will be accepted. In addition to the requirement that nobody else be using the trademark you want to use (or something similar), your trademark must also be distinctive. That means it cannot be so generic that it just describes the product instead of the source of it. For example, if you sell timber, you cannot trademark the word "wood" or "timber," but you could trademark "wood-o-rama" or "timbermania." Furthermore, the USPTO will not register a trademark that contains:
     
    • names of living persons who have not given their consent
    • the U.S. flag
    • other federal and local governmental insignias
    • the name or likeness of a deceased U.S. President without his widow's consent
    • words or symbols that disparage living or deceased persons, institutions, beliefs or national symbols, or marks that are judged immoral, deceptive or scandalous

    Again, if in doubt, talk to a lawyer. We don't mean to harp on this, but seeing a lawyer doesn't necessarily mean you're going to break the bank. Let's say you're willing to do a lot of the legwork yourself, but you're not sure whether the somewhat similar trademark you found in your trademark search (see step 2) is substantially similar, or whether "wood-o-rama" is immoral or scandalous.
     
    Take your specific questions to a trademark lawyer and he or she will probably be able to answer them in relatively short order. You can find a trademark lawyer in the Yellow Pages or on the Martindale-Hubbell Lawyer Locator.
     
    Once you've answered all these questions to your satisfaction, there's nothing else holding you back. Go to the USPTO website and click on "Trademarks" in the left-hand column. There you will find the application forms online, plus instructions and much helpful information.
     
    Another option is to visit NameProtect.com. For $65 plus the government filing fee, many people choose to use the AutoMark online tutorial instead of going through an attorney or trying to figure out the federal trademark application themselves offered online by the USPTO. With helpful instructions, pointers and tips, AutoMark helps you input the information necessary for your federal application. When you are finished (about a 15-minute process) AutoMark will complete your federal application in document form. All you do is download, print, sign and submit your application to the USPTO with the government filing fee and any necessary drawings or explanations of use.
     
  • Follow up the application


    Well, no one ever promised that your dalliance with the law would be like "L.A. Law" or "The Practice." This fourth step confirms it: once you've sent in your application, you must sit and wait for many months. It can take up to nine months (or possibly years, if there are problems) from the time you send in the application to the time your registration is official and complete. During that time, and afterward, there are follow-up actions you must perform, which vary depending on whether you filled out a "use" application or an "intent-to-use" application (see step 3).
     
    1. The follow-up procedure for "intent-to-use" applications.
    2. The follow-up procedure for "use" applications.

     

    Follow-up for "Intent-to-Use" Application


    • After you apply, use the trademark in interstate commerce as soon as possible. See step 3 or the USPTO website for a definition of "interstate commerce." Submit an "allegation of use", a sample of the use, and the required fee.
    • Answer any correspondence from the USPTO promptly, following all instructions to the letter. A missed deadline or a mistake can result in a long delay.
    • After about four months, an attorney at the USPTO will examine your trademark application for acceptability. If it is unacceptable, the USPTO will inform you of this, their reasons for so determining, and any corrections you must make. This correspondence will also contain information about available appeals processes. At this point you can make the corrections, appeal the decision, or abandon the trademark. If the trademark is acceptable, the trademark will be posted in the USPTO's Official Gazette and a notice of publication will be sent to you.
    • Once the trademark has been published in the Official Gazette, anyone who believes that your use of the mark might damage him or her has 30 days in which to file an opposition to your registration. If such an opposition is made, you will be informed and then you must fight it or abandon your trademark.
    • If no opposition is filed, you proceed to the next step. If you've already used the trademark and submitted your allegation of use, you will receive a Certificate of Registration about three months after the date of publication in the Gazette. The Certificate means you're registered and you may use the R in the circle next to your trademark. Goosebumps. If, however, you've been lazy, and you haven't used the trademark, you will receive, instead, a Notice of Allowance about three months after publication. You have six months from receipt of this notice to use the trademark and send in the necessary documentation, or apply for a six-month extension. Once you've used the trademark and sent in the allegation of use, etc., you will receive your Certificate of Registration.
    • Your trademark registration is good for ten years, and you must renew it every ten years. In addition, after the fifth anniversary of your registration and before the sixth, you must file a Section 8 affidavit to let the USPTO know that you're still using the trademark (information at their website). During the ten years, always use the circled R with your mark, protect your rights by keeping others from using your trademark or similar ones, don't abandon your trademark or stop using it, and control the use of your trademark by licensees (specify under what circumstances they may use it).

    Follow-up for "Use" Application


    • Answer any correspondence from the USPTO promptly, following all instructions to the letter. A missed deadline or a mistake can result in a long delay.
    • After about four months, an attorney at the USPTO will examine your trademark application for acceptability. If it is unacceptable, the USPTO will inform you of this, their reasons for so determining, and any corrections you must make. This correspondence will also contain information about available appeals processes. At this point you can make the corrections, appeal the decision, or abandon the trademark. If the trademark is acceptable, the trademark will be posted in the USPTO's Official Gazette and a notice of publication will be sent to you.
    • Once the trademark has been published in the Official Gazette, anyone who believes that your use of the mark might damage him or her has 30 days in which to file an opposition to your registration. If such an opposition is made, you will be informed and then you must fight it or abandon your trademark.
    • If no opposition is filed, you will receive a Certificate of Registration about three months after the date of publication in the Gazette. The Certificate means you're registered and you may use the R in the circle next to your trademark. Goosebumps.
    • Your trademark registration is good for ten years, and you must renew it every ten years. In addition, after the fifth anniversary of your registration and before the sixth, you must file a Section 8 affidavit to let the USPTO know that you're still using the trademark (information at their website). During the ten years, always use the circled R with your mark, protect your rights by keeping others from using your trademark or similar ones, don't abandon your trademark or stop using it, and control the use of your trademark by licensees (specify under what circumstances they may use it).

     
  • If in doubt, consult an attorney


    The fact is that consulting a trademark attorney can go a long way toward covering your patent and/or trademark. Do what you have time to do and what you feel comfortable doing by yourself, and consult an attorney to fill in the gaps.
     

    Where Do I Start?


    There are several resources within the USPTO website. These include information as well as online capabilities for every stage of the registration process. In fact, you can conduct most of your trademark business with the USPTO online.Therefore, you should familiarize yourself with our site before you begin the trademark application process.
     

    Types of Intellectual Property


    The first step is to determine what type of intellectual property protection you need. There are three types of intellectual property: trademarks, patents and copyrights. The Trademark Office of the USPTO handles trademarks only. For information on patents, please visit Patents or contact 800-786-9199. For information on copyrights, please contact the Copyright Office (a division of the Library of Congress).
     

    Basic Information and Rules of the Road


    Ok, so now you have determined that a trademark is what you need. Your second step should be to familiarize yourself with the general rules and requirements for applying for a trademark registration. To do so, go to Basic Facts About Trademarks booklet and the Frequently Asked Questions. You can look up legal terms as well as other terms relating to trademarks in our Glossary. For specific rules and regulations, please consult the Trademark Manual of Examining Procedure (TMEP).
     

    Searching Trademarks


    The next step is to search our database, before filing your application, to determine whether anyone is already claiming trademark rights in a particular mark.You may conduct a search online for free via our TESS (Trademark Electronic Search System ) database. If your mark includes a design element, you will need to search it by using a design code. To locate the proper design code(s), please consult the Design Search Code Manual.
     
    You may also conduct a trademark search by visiting the Trademark Public Search Library, between 8:00 a.m. and 5:30 p.m. at 2900 Crystal Drive, 2nd Floor, Arlington, Virginia 22202. Use of the Public Search Library is free to the public. Also, certain information may be searched at a Patent and Trademark Depository Library near you. These libraries have CD-ROMS containing the database of registered and pending marks. (However, the CD-ROMS do not contain images of the design marks.)
     
    If your search yields a mark that you think might conflict with your mark, you should check its status via our TARR (Trademark Applications and Registrations Retrieval ) database. You will need the serial number or registration number of a particular mark to access information on TARR.
     

    Identification of Goods and Services


    Now that you have chosen your mark and conducted a trademark search, you will need to draft a description of goods and/or services.A trademark application is incomplete without a statement identifying the goods and/or services with which the mark is used or will be used. The identification of goods and/or services must be specific enough to identify the nature of the goods and/or services. The level of specificity depends on the type of goods and/or services. For examples of acceptable identifications, please consult the Acceptable Identification of Goods and Services Manual.
     

    Mark


    Another consideration is the depiction of your mark. Every application must include a clear representation of the mark you want to register. We use this representation to file the mark in the USPTO search records and to print the mark in the Official Gazette and on the registration certificate . There are two possible mark formats: (1) standard character format ; or (2) stylized or design format. The standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element or word(s) or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark; do not submit a representation of a mark that attempts to combine a standard character format and a stylized or design format.
     

    Filing a Trademark Application


    You may file your trademark application online using TEAS - the Trademark Electronic Application System. TEAS allows you to fill out an application form and check it for completeness, and then submit the application directly to the USPTO over the internet. You can pay by credit card, through an existing USPTO deposit account, or via electronic funds transfer.
     
    You may also contact the Trademark Assistance Center at 1-800-786-9199 for a hard copy of the Basic Facts brochure, or a paper form. Paper forms are not processed as quickly as those submitted electronically, however.
    NOTE: If you live in Northern Virginia or cannot use "800" numbers, the number is (703) 308-9000.

    If you file an application online through TEAS, you will receive a summary of the filing by e-mail and your application will be assigned an immediate serial number. Otherwise, if you file a paper application by regular mail, please allow at least two to three (2-3) weeks to receive a filing receipt for your application. The filing receipt will include the serial number of the application.
     
    All future correspondence with the USPTO must include this serial number. You should receive a response to your application from the USPTO within five to six 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.
     
    You may monitor the progress of your application through the TARR database or our status line at 703-305-8747.
     

    What Happens Next?


    After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees.
     
    A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.
     
    If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office action, the applicant's response to the Office action must be received in the Office within six months of the mailing date of the Office action, or the application will be declared abandoned.
     
    If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.
     
    If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.
     
    The USPTO will send a Notice Of Publication to the applicant stating the date of publication. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, on a foreign registration under Section 44 of the Trademark Act, or an extension of protection of an international registration to the United States under Section 66(a). A Notice of Allowance will issue for intent-to-use applications.
     
    If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published.
     
    If the mark is published based upon the applicant's bona fide intention to use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a Notice Of Allowance about twelve (12) weeks after the date the mark was published. The applicant then has six (6) months from the date of the Notice of Allowance to either: (1) Use the mark in commerce and submit a Statement of Use ; or (2) Request a six-month Extension of Time to File a Statement of Use .
     
  • Abandoned Applications


    Abandoned for Failure to Respond


    Abandoned means that the application is no longer pending and, thus, cannot mature into registration. During the pendency of an application, an examining attorney will issue an Office action letter to the correspondence address of record. A response to that letter must be received in the USPTO within 6 months from the mailing date of that letter. If the Office does not receive a response within this period, the application is declared abandoned. The Office will then mail a Notice of Abandonment to the applicant or the applicant's attorney.
     
    Applicant may petition to revive the abandoned application (return the application to active status) if the delay in responding the Office action letter was unintentional.
     
    A Petition to Revive includes a signed statement by someone with first hand knowledge of the facts stating that the delay in responding was unintentional, a $100 petition fee and a response to the unanswered office action letter. The Petition to Revive MUST BE RECEIVED IN THE OFFICE WITHIN TWO MONTHS FROM THE MAILING DATE ON THE NOTICE OF ABANDONMENT. A Petition that is not timely filed will be denied.
     
    If a response was not filed because the applicant did not receive the Office action, the applicant must still file a Petition in order to revive the application. The applicant need not include a response to the Office action.
     
    If the abandonment resulted from the Office mailing the office action letter to the wrong address, the Office will reinstate the application at no cost. A Request for Reinstatement may be faxed to (703) 746-3000. A REQUEST FOR REINSTATEMENT MUST BE RECEIVED WITHIN TWO MONTHS FROM THE ISSUE DATE OF THE NOTICE OF ABANDONMENT. A REQUEST FOR REINSTATEMENT THAT IS NOT TIMELY FILED WILL BE DENIED.
     
    If a timely response was received in the Office, yet the application was declared abandoned, the applicant may request reinstatement of the application, provided they can submit proof of receipt in the Office. Click on "proof" for a listing of acceptable forms of proof of receipt in the Office.
     
    • Filing Fee and Refund Policy. The filing fee is $335.00 per class of goods and/or services (i.e., an application may only have one mark, but may cover multiple classes; e.g., an application with two classes would be for both computer software in Class 9 and t-shirts in Class 25, making the filing fee $670.00). Although only one mark is permissible per application, a mark may consist of several elements that are joined to form a composite whole (e.g., words plus a design). You do not have to have already used your mark before filing an application. However, if the mark has not already been used in interstate commerce at the time of filing, but instead the application is based on an "intent-to-use" the mark in interstate commerce in the future, an additional fee of $100.00 per class will be required when the "Allegation of Use" form is submitted (whereas a "use-based" application does not require this additional fee). Also, the filing fee is a processing fee for the application. This fee is not returned even if ultimately the USPTO does not issue a registration. You should take all necessary steps to ensure the mark is registrable before filing the application.
    • Avoiding Formatting Problems. Simply cutting and pasting a Word or Word Perfect document into a TEAS form may cause the introduction of unwanted characters in the form and/or prevent successful validation of the form. This is especially true for heavily formatted Word or Word Perfected documents. To avoid this problem, you should convert the Word or Word Perfect document to a text format. This can be done by using the "save as" and 'save as type" features of Word or Word Perfect. Because a text document does not allow for complex formatting and it is best to prepare responses or recitations of goods and or services with little or no formatting. There is not a problem with text that is typed directly into the form or text that was previously saved as an html document. If the form you are trying to use allows you to attach images as evidence, you could create JPG images of heavily-formatted documents and attach them to the form via this method.
    • Image files for TEAS must be in JPG format. Image files for TEAS must be in JPG format. (Note: the Electronic Trademark Assignment System (ETAS), unrelated to TEAS, the image files must be in a TIFF format). To file an initial application for a stylized or design mark, you must be able to attach a black-and-white image file. Where a specimen (sample) of actual use in commerce is required, you must attach a scanned image or digital photograph, showing the mark "in use"), not exceeding 2 megabytes per attachment.
      Please note the following:
      1. Mark images should not include the trademark, service mark or registration symbols (TM, SM, ). These symbols should only appear on specimens.
      2. Mark images should be submitted with as little white space around the design as possible. Unless a color image is being submitted for a mark wherein color is claimed as a feature of the mark, the mark image should be pure black-and-white, with no gray areas. See link to additional help within the Mark Section of the form, under "black-and-white."
      3. If you cannot validate the form after attaching an image file, please try validating the form without the image attached; if successful, try re-saving the image.
      4. After validation, you should be able to view your image from the validation page. If you cannot view your images they are not properly attached. NOTE: Both the Mark and Specimen images may appear huge when you review the images via the links below, and you may not be able to print them in the proper dimensions from this page (i.e., the mark image must print no larger than 3.15 x 3.15 inches (8 x 8 cms.) and the specimen image must print no larger than 8 1/2 x 11 inches). This does not indicate that there is a problem with your image file. Current browser and monitor technologies display all images at 72 dpi, causing images scanned at a higher dpi level to appear huge after attachment. The USPTO can process your image file, if you were able to save and print your image attachment from your image creating software in the proper dimensions prior to attaching the image to the form. See link to additional help within the Mark Section of the form, under "properly-sized JPG image file."
      5. Images created on a Macintosh using Adobe Photoshop or Illustrator must be properly saved with appended file extensions .jpg for use on a Windows system. We cannot open image files that are not properly saved prior to attachment.
      6. Internet Explorer on the Macintosh platform will not permit proper image attachment. You must use Netscape or a PC.
      7. Adobe Photoshop/Illustrator users must ensure that images are saved with the RGB color scheme. The USPTO cannot accept the CYMK color scheme. If you can open your image with your browser, then it is saved in the RGB color scheme.
      8. Do not zip your image files or add any additional compression. JPG files are already compressed.
    • Three payment options available. Three options (credit card, automated deposit account, and Electronic Funds Transfer will now appear after clicking on the PAY/SUBMIT button, which is available on the bottom of the Validation Page after completing and validating the application form. You will not specify a payment option in the Form Wizard or within the form itself.
    • Availability. TEAS is available 24 hours a day, seven days a week, for issuance of filing dates when the USPTO is officially closed. However, because TEAS will not permit payment processing from 12 a.m. to 4 a.m. on Sundays, you cannot transmit an application during that period (although you can complete an application and save it using the download portable form feature available once you successfully validate the application, to resume the payment piece at a later time).
    • Additional Help. For additional general trademark information, please telephone the Trademark Assistance Center, at 703-308-9000, or e-mail your question to TrademarkAssistanceCenter@uspto.gov. If you need help in resolving glitches or need answers to technical questions, you can email us at PrinTEAS@uspto.gov. Please include your telephone number, so we can talk to you directly, if necessary.