1. Intellectual Property Rights
Presented by
Dr. B.Rajalingam
Assistant Professor
Department of Computer Science & Engineering
Priyadarshini College of Engineering & Technology, Nellore
Revision (Unit 2)
Trade Mark Registration Processes
2. Syllabus
• Purpose and Function of Trade Marks
• Acquisition of Trade Mark Rights
• Protectable Matter
• Selecting and Evaluating Trade Mark
• Trade Mark Registration Processes
Trade Marks: Dr. B.Rajalingam19 May 2020 2
3. Trade Mark Registration Processes
• There are two primary paths to registration for U.S.- based applications: a use -
based application (alleging use in interstate commerce) and an intent-to-use
application (alleging a bona fide intent to so use the mark in the future).
• Both types of applications share many common features and progress through the
registration process in a fairly similar fashion.
• The process for federal registration of a mark can be expensive and can take as
long as 10 to 18 months, even if there are no significant problems or delays.
Trade Marks: Dr. B.Rajalingam19 May 2020 3
4. Preparing the application
• Once a mark has been selected and cleared for use and registrability, an application
for federal registration of the mark should be prepared and filed.
• The application consists of a request for registration, information about the
applicant, an identification of the goods and/or services offered under the mark, a
drawing of the mark, a verification or declaration signed by the applicant or agent
or attorney, the basis for filing the application a specimen showing use of the mark,
and a filing fee.
• The process of moving an application through the USPTO is called prosecution.
• The application must be in English.
• Fill-in forms for electronically filed applications are provided by the USPTO.
• The USPTO “strongly discourages” paper or “self-created forms” and prefers that
applicants use its electronic application system.
Trade Marks: Dr. B.Rajalingam19 May 2020 4
5. Cont…
• The USPTO does not generally require that the documents submitted to it be
originals. Photocopies may be submitted (except for foreign registrations and
certain other special documents for which certified copies are required).
• Thus, if a client signs an application and returns it to your office by facsimile(fax),
you may photocopy the signature page, attach it to the application, and file it with
the USPTO, as long as the signature is legible.
• The USPTO permits the filing by fax of most papers and documents; however,
trademark applications are not acceptable by fax.
• They must be hand delivered to the USPTO, filed by mail, or, preferably,
submitted electronically.
• All of the requirements relating to the filing and prosecution of trademark
applications are governed by the Trademark Manual of Examining Procedure
(TMEP).
Trade Marks: Dr. B.Rajalingam19 May 2020 5
6. Cont…
• Most trademark practitioners keep the TMEP handy at all times.
• The USPTO introduced its electronic filing system in 1998.
• The Trademark Electronic Application System (TEAS) permits applicants to file
nearly all documents electronically.
• Documents can also be prepared using the USPTO online forms, printed out, and
then mailed to the USPTO.
• USPTO receives it within seconds after filing and promptly issues a confirmation
of receipt (called a “success” page or screen) of electronic filing.
• These electronically filed documents are examined more quickly than their paper
counterparts.
• Documents submitted electronically using TEAS are considered filed on the date
the USPTO receives the transmission.
Trade Marks: Dr. B.Rajalingam19 May 2020 6
7. Cont…
• Documents requiring signatures use a symbol adopted by the applicant as a
signature.
• Similarly, when submitting an image or specimen, the applicant must submit a
digitized image in .jpg or .pdf form.
• The USPTO prefers that applicants file documents electronically using TEAS,
and by 2008, 97 percent of all trademark applications were filed electronically.
The USPTO almost exclusively communicates with customers electronically.
• By 2011, more than 70 percent of all trademark applications were filed,
processed, and disposed of relying completely on electronic systems and
communications.
• The TEAS system can be accessed at http://www.uspto.gov.
Trade Marks: Dr. B.Rajalingam19 May 2020 7
8. The Applicant
• An application to register a mark can be made only by the owner of the mark.
• Applicants may be natural persons or business entities such as corporations, partnerships,
associations, unions, or other organizations.
• Government entities such as nations, states, municipalities, and other governmental bodies
also can apply to register marks that they own.
• The applicant’s name must be in correct legal form.
• Thus, a corporation that owns a mark should be identified in the application by the name set
forth in its articles of incorporation.
• Clients often abbreviate their corporate names or make mistakes in the punctuation of their
corporate names.
• Because the certificate of registration will issue in the name of the applicant as set forth in
the application, errors in an owner’s name will result in errors in the certificate of
registration.
• All states allow online verification.
Trade Marks: Dr. B.Rajalingam19 May 2020 8
9. Identification of Goods or Services
• The application must identify the goods and/or services offered or to be offered
under the mark that is the subject of the application.
• Careful consideration must be given to drafting this part of the application.
• Goods and services are categorized b the USPTO into 45 separate classes, called
International Classes because most other nations use this same classification
system established by WIPO.
• Until 1973, the USPTO used a different classification scheme, called the United
States Classification Scheme.
• Each class requires a filing fee (presently $325 for electronic TEAS filing).
• Preparing the application require careful analysis of all of the goods/services for
which the mark will be used to ensure that the mark receives all the protection it
needs.
Trade Marks: Dr. B.Rajalingam19 May 2020 9
14. Basis for Filing Application and Method of Use
• Actual Use. The applicant claims actual use of the mark in commerce, specifying
a date of first use in commerce.
• Intent-to-Use. The applicant claims a bona fide intent to use the mark in
commerce.
• Foreign application. The applicant claims a bona fide intent to use the mark in
commerce and that the mark is the subject of a prior foreign application.
• Foreign registration. The applicant claims a bona fide intent to use the mark in
commerce and that the mark is the subject of a prior foreign registration.
• Extension of Protection. The applicant, a foreign entity, files an application in
its home country and then files a request for an extension of protection to the
United States under the Madrid Protocol.
Trade Marks: Dr. B.Rajalingam19 May 2020 14
15. Drawing of Mark
• One of the most critical parts of the application is the drawing or the display of
the mark sought to be registered.
• Because the drawing is entered into the automated records of the USPTO and is
available to the public through TESS and TARR and because the drawing is used
when the mark is ultimately published in the USPTO publication Official Gazette
and is reproduced in the actual certificate of registration, the drawing must
conform with specific USPTO requirements.
• There are two types of drawings: standard character drawings and special form
drawings.
• A standard character drawing is simply a typewritten display of the mark.
Trade Marks: Dr. B.Rajalingam19 May 2020 15
16. Specimens
• If the application is made under and alleges that the mark has been used in
commerce, the USPTO will require that the applicant submit proof of such use by
providing a specimen of the mark showing exactly how the mark is seen by the
public.
• One specimen must be filed for each class of goods named in the application.
• Thus, if the application is for HELENA (& SWAN DESIGN) for soap in I.C. 3 and
sweaters in I.C. 25, two specimens must be submitted.
• For applications filed electronically, the applicant must submit a digitized image of
the specimen in .jpg or .pdf format.
• Most law firms use digital cameras to take pictures of their clients’ specimens and
then download them and attach them to the electronic application.
Trade Marks: Dr. B.Rajalingam19 May 2020 16
17. Declaration and Signature
• The application must be signed by and include a declaration or verification by the
applicant or its agent or attorney.
• The declaration is a statement placed at the end of the application whereby the
signatory acknowledges that the statements in the application are true and that
the signatory understands that willful false statements are punishable by fine or
imprisonment and may jeopardize the validity of the application or any
registration resulting from the application.
Trade Marks: Dr. B.Rajalingam19 May 2020 17
