Online Trademark Terminology

Reviewing and understanding the following definitions, explanations and examples of trademark terms helps you provide us the information we need via our online trademark questionnaire to properly apply for a trademark registration with USPTO.

1. Owner of the Trademark. Generally, the owner of the trademark is the person or entity which controls the use of the trademark, and is also the applicant in the trademark application. The owner of the trademark can be an individual or an entity (corporation, LLC, partnership, sole proprietorship, etc.). Here are two examples: first, let’s say that you are the sole owner (LLC member) of a LLC called FlexOne LLC, and you wish to register FlexOne; in this case, it would be generally alright to list either yourself or the LLC as the owner of the trademark; this is because, you, as the sole owner of the LLC, have control over the use of the trademark. Contrarily,  if you share the ownership of the LLC with your friend John, the LLC should generally be listed as the owner of the trademark.

If the owner of the trademark is an individual, his/her name starting with the last name (e.g., Brown, Peter) should be provided in our online trademark questionnaire. If the owner is an entity, its name (e.g., FlexOne, Inc.) should be provided.

If the owner is also known as (AKA), is doing business as (DBA), is trading as (TA), or was formerly known under a different name, that information should be provided as well.

2. Trademark Owner Type. Whether the owner of the trademark is an individual or a business entity must be indicated. If a business entity, the appropriate entity type (e.g., corporation, LLC, etc.) must be indicated.

3. Trademark Owner’s ‘Citizenship’. If the mark owner is an individual, indicate his/her citizenship (U.S., or foreign country). If the mark owner is an entity, indicate the U.S. State or the foreign country where the entity was formed. Example: if the owner of the trademark is a corporation which was incorporated in the State of Delaware, select Delaware.

5. Mark Type. The most common choice here is “Standard Characters” mark. This means that the trademark consists of words, letters, numbers, or a combination thereof, with no design element, and no claims to font style, size, or color (e.g., Flex21). This trademark type provides broad rights and protection, because the owner can use it in any manner of presentation she chooses (e.g., Flex21, Flex21, etc).

“Special/Design” should be indicated as trademark type, if your mark is a design (logo), includes a design element, or is a word mark (words, letters, numbers, symbols) with claims to font style or color. You can send us a copy of your special mark with your answers to our online questionnaire. This file should contain only the mark by itself.

If your mark is a special mark, indicate if you wish to claim certain colors, and if yes, list the claimed colors. Lastly, describe the special mark; example: letter R colored in red, letter P colored in blue, and letter N colored in black, all capitalized, etc (if your mark is  RPN). Note that generally we recommend that the trademark be applied for as black-and-white, without claim to any colors, as it offers broader protection.

6. Goods or Services Associated with the Trademark. A description of the goods or services associated with this trademark is required. USPTO recommends to supply a description of the goods or services as they are commonly known. Examples of goods: laptop computers, office furniture, etc. Examples of services: computer repair services; furniture restoration services, etc. Once engaged (by submitting the online questionnaire and online payment), we will review your description of goods or services. For example, one thing we review for is to ensure that all of your goods and services fall within one single trademark class.

BE SPECIFIC. USPTO requires it: “descriptions of goods and services in applications must be specific, explicit, clear and concise.” USPTO may refuse registration if the description of the goods and/or services is indefinite or too broad, as for example, when the words internet, products, parts, equipment, etc. are used alone or together with insufficiently specific words.

BE ACCURATE. The lack of a bona fide (good faith) intention to use the mark with ALL goods and/or services listed in an application or the lack of actual use on all listed goods and/or services (if filed based on actual use in commerce) could jeopardize the validity of the registration, possibly resulting in its cancellation.

7. Is the Mark Currently Used in Commerce? Use in commerce is the most common basis for applying for federal trademark registration. Chose this filing basis if the mark is currently used by the owner in commerce in connection with the goods or services listed. Use in commerce in this context means use in commerce that is subject to U.S. Congress’ regulations: interstate commerce (e.g., shipping goods with the trademark on them to out-of-state customers) or commerce between U.S. and a foreign country (import, export of goods with the mark on them).

The second option here, intent-to-use, is the second most common basis for filing for federal mark registration. Indicate this option if the owner is not currently using the mark but intends in good faith to do so in the near future. Choosing this filing basis means that, after the examination of the trademark application by the USPTO examiner is complete, the owner will have  to file an Statement of Use with the USPTO, including a fee and a specimen showing how the trademark is used in commerce. While this makes the process a bit more expensive, the advantage of filing for registration before the mark is actually used in commerce is that the owner’s priority to the trademark starts with the date of filing. In other words, you “reserve” your trademark, to block others from filing for the trademark before you can setup your business and engage in commerce activities.

A specimen is required if applying for registration on the “use in commerce” basis. A specimen is a proof that the mark is actually used in commerce in connection with the goods or services listed above. For goods, an acceptable specimen could be a picture which shows the trademark on the goods or on the packaging, or, a copy of an e-commerce page where the goods can be purchased. For services, an acceptable specimen could be an advertisement (business card, flyer, web page, etc.) showing that the respective services are marketed using the mark.

9. Foreign Application or Registration? If priority or filing basis could be claimed based on existing foreign application or registration, indicate so. It could facilitate or expedite the U.S. registration of your trademark with USPTO.