The United States of America (U.S.) began with thirteen colonies
that declared their independence from Great Britain in 1776 after the
War of Independence. The U.S. was recognized as a new nation following
the Treaty of Paris in 1783.
The U.S. expanded across North America during the 19th and 20th
centuries, adding 37 new states to the original 13. The U.S. now
includes several overseas possessions.
The U.S. endured a violent Civil War from 1861 to 1865, World War
I and the Great Depression during the 1930s. The U.S. entered a period
of post-war growth following World War 11. Following the end of
the Cold War era, the U.S. remains the world's largest military power,
but is continually faced with concomitant budgetary and foreign policy
Who May Apply?
Any legal person may apply for registration of a mark based on any
of the following grounds provided for by the Lanham Act:
1. Use of a mark in commerce;
2. Intent to use a mark;
3. Pending foreign application in a Paris Treaty country;
4. Registration in a Paris Treaty country;
5. Request for extension of protection to the U.S. under the Madrid
Applicants may amend their basis for registration during the ap
plication process. However, while an application may be filed without
use, registration requires actual use of the mark in commerce, except
for foreign applicants filing under Section 44 (foreign registration or
pending foreign application in a Paris Treaty country) and applicants
seeking an extension of protection under the Madrid Protocol.
What Can Be Registered?
Generally, any word, name, symbol, or device, or any combination
thereof may be registered, if used by a person or for which a person
has a bona fide intention to use in commerce to identify and
distinguish his or her goods, including a unique product, from those of
others and to indicate the source of the goods, even if that source is
The Trademark Act provides for a Principal and a Supplemental Register. Marks that are ineligible for registration on the Principal
Register may be registered on the Supplemental Register if they are
capable of acquiring distinctiveness with respect to an applicant's
goods and/or service.
What Cannot Be Registered?
A mark by which the goods and for services of an applicant may be
distinguished from the goods andlor services of others will be refused
registration on the Principal Register if it:
(a) Consists of or comprises immoral, deceptive, or scandalous matter;
or matter which may disparage or falsely suggest a connection
with persons, living or dead, institutions, beliefs, or national
symbols, or bring them into contempt, or disrepute; or a
geographical indication which, when used on or in connection
with wines or spirits, identifies a place other than the origin of
the goods and is first used on or in connection with wines or
spirits by the applicant on or after January 1, 1996.
(b) Consists of or comprises the flag or coat of arms or other insignia
of the United States, or of any State or municipality, or of any
foreign nation, or any simulation thereof.
(c) Consists of or comprises a name, portrait, or signature identifying
a particular living individual except by his written consent,
or the name, signature, or portrait of a deceased President of
the United States during the life of his widow, if any, except by
the written consent of the widow.
(d) Consists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office, or a mark or
trade name previously used in the United States by another
and not abandoned, as to be likely, when used on or in connection
with the goods of the applicant, to cause confusion, or to
cause mistake, or to deceive.
(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or
deceptively misdescriptive of them, (2) when used on or in connection
with the goods of the applicant is primarily geographically
descriptive of them, except as indications of regional origin
that are registrable, (3) when used on or in connection with the
goods of the applicant is primarily geographically deceptively
rnisdescriptive of them, (4) is primarily merely a surname, or (5)
comprises any matter that, as a whole, is functional. Marks that have not acquired distinctiveness may nevertheless be
eligible for registration on the Supplemental Register if used in
commerce. When distinctiveness is acquired, these marks may then
be registered on the Principal Register.
Marks may be registered in any language. However, a translation
of any foreign wording in the mark must be provided and the application
itself must be in English.
Marks may not be registered if they disparage a person, institution,
belief or national symbol. Owners of famous marks may obtain injunctive
relief against a party that uses a mark that is likely to cause
dilution by blurring or dilution by tarnishment of the famous mark after
it has become famous, whether or not economic harm or actual confusion among consumers has occurred and whether or not the
marks are in competition.
The filing of an application for registration on the Principal Register
constitutes constructive use of the applied-for mark. Thus, the
resulting registration, if issued, generally provides the registration
owner with nationwide priority with respect to the mark for the goods
and services named in the registration over any subsequent domestic
and foreign applicants and subsequent mark users.
However, third parties who used the same or a similar mark prior
to an applicant's filing date are not precluded from using their mark
and may continue to do so despite a subsequent application and any
registration to that issue. Such right, however, may be limited to any
geographic scope in which the third party used the mark prior to the
application filing date.
Also, parties that have priority based on an earlier foreign registration
will have rights superior to those of an applicant who subsequently
files for registration without the benefit of such priority.
Use or intent to use applications filed under the Paris Convention
must include the following:
(1) name of the applicant;
(2) address for correspondence;
(3) clear drawing of the mark;
(4) list of the goods or services; and
(5) filing fee for at least one class of goods or services.
Applications that do not include all of the above minimum requirements
will not be accepted by the Office and will therefore not be
given a filing date and will not be examined. In such instances, the
Office will notify the applicant that the application is not acceptable
and will refund any fee paid.
Other requirements for applications are summarized for each filing
basis below. Failure to provide these items with the application will
not prevent the application from receiving a filing date but will result
in the issuance of an Office Action by the examining attorney requiring
the missing item(s).
Applicants must indicate whether they seek registration on the
Principal or Supplemental Register.
Applications that allege current use of the mark must include an allegation of use with the
date of first use and the date of use in U.S. commerce. These applications
must also be accompanied by a specimen showing use of the
mark in commerce for each class of the goods or services listed in the
application. However, failure to file an acceptable specimen will not
result in denial of a filing date. Instead, the examining attorney will
issue an Office action requiring submission of the specimen.
Applications filed as intent to use applications must
include an affirmation that the applicant has a bona fide intention to
use the mark in commerce.
Applications filed as Paris Convention applications,
whether or not claiming priority, must include a certified copy of the
foreign registration certificate on which the application is based. If
such a certificate is not available at the time the application is filed, it
must be provided in order for the mark to be registered. If Paris priority
is claimed, the application must include the priority date claimed.
Evaluation & Review
Examining attorneys review the - application for basic filing requirements and eligibility for registration. Examiners also review applications
for each of the following general requirements:
1) Acceptability of the drawing of the mark and any necessary
character claim, color claims, color description and/or mark description,
translation, and agreement between the mark and
any required specimen;
2) Completeness of owner and entity information;
3) Acceptability of identification of goods and/or services and
4) Correct filing basis and dates of use, if applicable;
5) Acceptability of any required specimen(s) showing use of the
6) Acceptability of the declaration, including the signature; and
7) Acceptability of the mark for registration on all statutory
grounds, including both relative and absolute grounds
Examining attorneys review the specimen showing use of the mark
for applications filed based on use of the mark in commerce.
Applications filed under Section l(b), intent to use, must also
contain a declaration of a bona fide intent to use the mark in
commerce. If the mark is approved for publication by the examining
attorney, the Office will publish the mark. If no oppositions are filed,
the Office will issue a notice of allowance. The applicant will then
have six months to file a statement of use with a specimen showing
use of the mark in commerce for each class of goods and/or services
listed in the application.
Registrations issued before November 16, 1989, are effective for 20
years and may be renewed for 10-year periods. Prior to November 16,
1989, these registrations could be renewed for periods of 20 years.
Registrations issued after November 16, 1989, are effective for 10
years and may be renewed for 10-year periods.
To remain in effect for the full duration provided by the statute,
registrants must file an affidavit of continued use or an acceptable
excuse for failure to use the mark in commerce during the sixth year
of the registration, measured from the publication date. Failure to file
this affidavit within six months after the due date will result in the
cancellation of the registration if the application was filed with a use
or intent to use filing basis. A similar affidavit must be filed every 10
years during the last year of each registration term.
No grace period exists for filing of the six-year affidavit of use for
registrations based on an extension of protection to the United States
under the Madrid Protocol. Filing of the ten-year affidavit of use may
be made within a three-month grace period after the expiration of 10
years upon payment of a penalty fee.
The items required for the filing of an affidavit of use generally
(1) an application containing a verified statement and setting
forth the goods and/or services that are in use or for which there is
excusable nonuse, along with an acceptable explanation of the
special circumstances for which such nonuse is excusable, if applicable;
(2) specimen(s) showing current use of the mark in commerce;
(3) the applicable fee.
The documents required for renewal include: (1) a renewal request signed by the registrant or the registrant's
(2) a fee for each class to be renewed;
(3) an additional fee if the renewal application is filed during the
six-month grace period; and
(4) a list of the goods or services to which the renewal applies, if
less than those included in the registration.
Registrations under the Madrid Protocol must be renewed through
the World Intellectual Property Organization's International Bureau.
Registrants of marks on the Principal Register who wish to allege
that their registration is incontestable must file an additional affidavit
asserting that the mark has been continuously used for the five years
following registration. This affidavit is not required and may not be
filed for marks on the Supplemental Register. However, there are
benefits to claiming incontestability. The affidavit of incontestability
may be combined with the affidavit of use.
Use of the applied-for mark is required for use-based applications
filed under Section l(a). Use applications must be accompanied by a
verified statement of use providing the first date of use anywhere and
the first date of use in commerce that may be regulated by the U.S.
Congress, as well as a specimen showing use of the mark as it appears
in the drawing and showing use in connection with the applied for
goods and service.
Specimens for trademarks may consist of, for example, a label, tag,
container for the goods or a display associated with the goods at their
point of sale, or screen displays (for computer programs, movies, television programs ). Specimens for service marks may consist of, for
example, brochures, signs, and letterhead if they show the mark used
in connection with the services identified in the application.
Applications filed with an intent-to-use basis under Section l(b)
need not be accompanied by a specimen showing use. However, the
applicant must file a verified statement that the applicant has a bona
fide intent to use the mark.
Thus, after the application is filed, the applicant must either file an
amendment to allege use or a statement of use accompanied by a
specimen. An amendment to allege use may be filed at any time before
the examiner approves the application for publication. If the applicant
has not filed a specimen before publication of the mark, she must wait
until after the publication period. If no opposition to the mark is filed,
the applicant must file a statement of use accompanied by an acceptable
specimen. Thus, either an amendment to allege use or a statement
of use is required of Section l(b) applications, depending on the
stage that processing of the application has reached. However, both
documents serve as an allegation of use and proof of use.
Applications filed under Sections 44 (Paris Conventionlforeign
registration applications) and Section 66 (Madrid applications) require
the filing of a verified statement indicating a bona fide intent to use
the mark but do not require a specimen showing use of the mark in
cornmerce. The verified Statement is filed with the International
Bureau and the Office does not require that this statement be re-filed
in the U.S.
Use of a mark by a related company inures to the benefit of the
registrant. A related company includes any person whose use of the
mark is controlled by the owner of the mark in relation to the nature
and quality of the goods or services for which the mark is used." If
this applies, the applicant should note this fact in the application.
The country code top level domain or ccTLD for the United States is .US. The current authorized administrative organization is NeuStar
Inc. in the State of Virginia.
Disputes concerning domain names may be arbitrated according to
a variation of the international uniform dispute resolution policy or
UDRP through several authorized providers. These include the American
Arbitration Association and the National Arbitration Forum.
The Anticybersquatting Consumer Protection Act prohibits bad
faith registration of domain names. Owners of marks that are
adversely affected by a bad faith registration may file in rem actions
against the domain name(s) based on claims of infringement and/or
dilution under the Act.
Any person who uses any word, term, name, symbol, or device, or
any combination thereof in commerce in connection with any goods or
services, or any container for goods, or who engages in any act, trade,
practice, or course of conduct in commerce likely to cause confusion,
mistake or deception as to the affiliation, connection, or association of
such person with another, or to the origin, sponsorship, or approval of goods and/or services or commercial activities by another, is liable for
infringement. A party will also be liable for any misrepresentation of
the origin, nature, characteristics, or qualities of his or another party's
goods and/or services, commercial activities or their geographic origin.
A prevailing plaintiff may recover actual damages, (or treble damages
in the case of willful infringement), profits, attorney's fees and costs.