Intellectual Property Basics
1. Is a Trademark the same thing as a Copyright or Patent?
No. A copyright protects an original artistic or literary work. A patent protects an invention or discovery. If you need assistance with either of these, please call us — we can still help!
2. What is a trademark?
A trademark is a word, phrase, symbol, sound, logo, or design, or a combination thereof that distinguishes the source of a good/service from another source. Trademarks are applied to goods. Service Marks are applied to services. However, the term “trademarks” is customarily used to refer to both goods’ trademarks and service marks.
3. What is a patent?
A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. While we do not handle patent prosecution at MAVEN®, we have a network of attorneys that we can refer this work to.
4. What is a copyright?
Copyright is a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works. Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. It does not protect facts, ideas, systems, or methods of operation, but may protect the expression of these items.
5. What are the types of works protected by copyright?
Copyright protects original works of authorship. The Copyright Act specifies that works of authorship include:
- Literary works
- Musical works, including accompanying words
- Dramatic works, including accompanying music
- Pantomimes and choreographic works
- Pictorial, graphic, and sculptural works
- Motion pictures and other audiovisual works
- Sound recordings
- Architectural works
- Compilations, collective works and derivative works
6. Are Ideas or Facts Protectable by Copyright?
No. The Copyright Act also expressly excludes from protection ideas, procedures, processes, systems, methods of operation, concepts, principles, and discoveries, even if they are described, explained, illustrated, or embodied in an otherwise protectable work.
7. What are the Exclusive Rights granted by Copyright?
A copyright provides its owner with a bundle of exclusive rights in a protected work for the copyright’s duration. The primary exclusive rights granted by copyright are as follows, though some do not apply to all types of works:
- The right to create derivative works
- Public performance
- Public display
Federal Trademarks and the Federal Trademark Registration Process
8. What is the first step in the trademark process?
Selecting a trademark is the very first step in the overall application/registration process. This must be done with thought and care, because not every trademark is registrable with the USPTO. Nor is every trademark legally protectable, that is, some trademarks may not be capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar trademark on related goods or services. Businesses and individuals new to trademarks and the application/registration process often choose a trademark for their product or service that may be difficult or even impossible to register and/or protect for various reasons. Before filing a trademark/service mark application, you should consider:
- Whether the trademark you want to register is registrable, and
- How difficult it will be to protect your trademark based on the strength of the trademark
Note in this regard that the USPTO only registers trademarks. You, as the trademark owner, are solely responsible for enforcement whether in the marketplace on or on Amazon.
9. What kinds of trademarks have the greatest potential for registration and use?
When considering what makes a good trademark, the strength or distinctiveness of the trademark matters. The stronger and more distinctive the trademark, the greater the chances of being able to register the trademark and successfully enforce the trademark against possible infringers. Trademarks fall within one of the following categories, from strongest to weakest:
- Fanciful or Coined Trademarks: A fanciful or coined trademark is a novel term, a made-up word with no prior meaning. It can be a completely new word, a unique combination of parts of multiple words — the point is, you can’t find this word in the dictionary! It only exists as a trademark. Examples of coined trademarks are EXXON or KODAK. Neither trademark has any dictionary meaning at all. Because of this, fanciful or coined trademarks are generally the strongest trademarks.
- Arbitrary Trademarks: Arbitrary trademarks are those that are words that do have a dictionary definition but are totally unrelated to the product/service that the trademark serves to identify. Examples of arbitrary trademarks are APPLE for computers and BLACKBERRY for personal computing devices. Like fanciful or coined trademarks, arbitrary trademarks are strong trademarks. However, as an owner of an arbitrary trademark, you would not be able to stop others from using the trademark for goods/services related to the dictionary definition.
- Suggestive Trademarks: Suggestive trademarks allude to or hint (without directly describing) some characteristic of the owner’s goods/services. They stop short of describing the characteristics of the goods/services. Examples of suggestive trademarks are: AIRBUS for airplanes; JAGUAR for automobiles; and COPPERTONE for suntan oil.
- Merely Descriptive Trademarks: If you decide to use a phrase that merely describes your product, your rights may be very limited. For example, PARK N FLY for airport parking lots might be considered descriptive since it describes an attribute of the service. Words that describe any characteristic, attribute, feature, use, or location of the products/services or are merely laudatory (“best”, “world’s greatest”) are not generally granted trademark protection.
- Generic Terms: A generic term is a word or phrase that is or has become the common term associated with a particular category of goods or services to which it relates, thereby ceasing to function as an indicator of origin. Generic trademarks include “Clock” for timepieces, “Computer” for “computers”. Generic trademarks are never protectable.
Here are some helpful hints to finding a great name for your business:
- Pick a name that lends itself to word play;
- Avoid generic and descriptive trademarks;
- Simple works best — don’t make your trademark difficult to say, spell or understand; and
- Make sure it’s available for your use!
10. What is a trademark search?
A trademark search of your trademark before filing your federal trademark application or using your trademark may identify potential problems, such as a likelihood of confusion with a prior registered trademark or a trademark in a pending application. A search could save you the expense of applying for a trademark in which you will likely not receive a registration because another party may already have stronger rights in that trademark. Also, the search results may show whether your trademark or a part of your trademark appears as generic or descriptive wording in other registrations, and thus is weak and/or difficult to protect. The more comprehensive the search, the wider the net that is cast to look for potential conflicts.
11. Do I need to order a trademark search?
No. However, if you do not, you accept the risks associated with using or attempting to register a trademark that may belong to someone else. While conducing searches are “best practice,” we understand that some Brand Owners will not want to pay for a trademark search, then it is a risk vs. reward calculation that you, as the Brand Owner, will have to make. You can find additional information about trademark searches here: The Benefits And Advantages of a Trademark Search.
In the United States, the first to use a trademark acquires common law rights. So if a person or business is already using your trademark or one similar to the one you have selected, you run the risk of violating the first user’s trademark rights. Even if you successfully register a federal trademark, your use may conflict with a prior user’s rights. Adopting or using any trademark carries some risk however, conducting a search helps you determine how much risk is associated with your trademark.
A trademark search is not required prior to filing an application but it is always recommended prior to adopting, using, or registering a trademark. A search could save you the expense of adopting and/or applying to register a trademark that you may not be able to use and/or register in the future.
12. Can I conduct my own searches?
Yes. We recommend that you do. The USPTO offers a free search system known as Trademark Electronic Search System. TESS allows you to search the USPTO’s database of registered and prior pending applications to help determine whether any marks therein could prevent registration of your trademark due to a likelihood of confusion. If the USPTO finds another registered trademark or earlier-filed pending trademark confusingly similar to yours for related goods/ services, it will refuse to register your trademark.
Please keep in mind the standard for a likelihood of confusion refusal or conflict is not whether your trademark is identical or whether your goods/services are identical to another but whether two marks are confusingly similar. Therefore, if your trademark shares a component with another trademark (e.g. a single word or design) and/or is offered in connection with related goods/services, that could present a conflict from the USPTO’s perspective. Therefore, you may want to consider additional search options to determine whether your trademark conflicts with the marks of others. A conflict can arise if a third party has registered a confusingly similar trademark OR used a similar trademark in commerce (even if the trademark is not registered.)
13. How long does the application process take?
The length of time for the federal trademark application process itself depends on whether you are currently selling products or not. If you are currently selling products, and the trademark is approved without objection or opposition, the USPTO takes about 12-18 months to issue a registration.
14. What is required to file an application?
- Owner (“Applicant”) name and type;
- Owner address;
- Owner e-mail address;
- The trademark – a standard character trademark, a stylized/design trademark, or a sound trademark;
- Identity of goods/services;
- If use-based application, examples of how the trademark is used on products/packaging/services.
- If use-based application, dates of first use.
You can read our blog post here with the differences between an intent-to-use application versus a use-based application: Intent-to-Use Applications vs. Use-Based Applications.
15. Who should be listed as the Applicant in a trademark application?
It is important that you properly identify the Applicant in the trademark application. The Applicant can be person, corporation, partnership, joint venture, association, or other organization. Normally, the Applicant is the owner of the trademark. The owner of a trademark is the person who applies the trademark to the goods/services that he/she produces or uses the trademark to advertise his/her goods/services. If the Applicant is not the owner, the application may be deemed void if the wrong party is identified as the Applicant.
For Canadian Applicants: Canadian entities may be organized under either national or provincial laws. Therefore, if the applicant is organized under the laws of a Canadian province, entity designations such as “corporation of Ontario,” “corporation of Quebec,” “company of British Columbia,” etc. are acceptable.
For Foreign Applicants: The Trademark Manual of Examining Procedure provides a list of entity designations by various foreign countries to identify legal commercial entities. Please consult this list to determine the proper foreign entity designation. USPTO Foreign Entity List.
16. What is the difference between goods and services?
Goods are products, such as laundry baskets or candles. Services are activities performed for the benefit of someone other than you or your company, such as legal services or catering.
The difference between goods and services can sometimes be confusing. Are your customers paying you to receive a product or to receive a specific activity? If your customers are paying you for a product, such as a bicycle, then you have a good. However, if your customers are paying you to perform an activity, such as repairing a bicycle, then you have a service. You may list both goods and services in an application.
17. Once the application is filed, can I change anything? Can I add goods/services?
Once the application is filed, you can only make minimal changes and such changes are subject to additional fees and costs. You cannot change the trademark (i.e. by adding more words or a design) and you cannot add goods/services.
18. What goods/services should I list in my application?
You must list the specific goods and/or services you are using or will use with the trademark you want to register. If your application is based on “use in commerce,” you must be using the trademark in commerce for all the goods and/or services listed in your application. If your application is based on a “bona fide intent to use the trademark,” you must have a good faith or bona fide intent to use the trademark on all the goods and/or services listed.
If you have identified goods/services that are in use and others that are not, you can either file a combined use/intent-to-use application or an intent-to-use application.
19. How do I accurately list my goods/services?
You should research your goods/services in the USPTO’s Acceptable Identification of Goods/Services Manual to find acceptable wording to describe your goods/services in the application.
When you apply for a trademark registration, you must specify the goods/services you want to use the trademark for – that is the basis for protection. All goods and services are divided into different classes according to an international system called The Nice Classification. The system is made up of 45 classes where Classes 1 through 34 are different goods and Classes 35 through 45 are different services. The division of classes for goods are mainly based upon the material or subject matter of use, while the division of classes for services are based on the professions or the result of the service. Services are services provided to third parties. You can access The Nice Classifications here: https://www.wipo.int/classifications/nice/en/index.html.
You will notice that the Nice Classifications are broad categories of goods/services. In order to file a trademark application with the USPTO, you must specifically identify the products/services within the broad categories. You cannot file a trademark application to cover an entire class of goods. For example, an application for “Class 025” would not be accepted by the USPTO and would result in an Office Action.
Please review our blog post for additional information: Which Goods Services Should I Include In My Federal Trademark Application.
20. What is the difference between a USE-BASED or INTENT-TO-USE application?
Use-Based Applications: A use-based application can be filed if you are using your trademark on all of the goods/services listed in your application, the trademark appears on the products or packaging for the products, and you have made sales across state lines or internationally.
Intent-to-Use Applications: An intent-to-use application can be filed if you have a bona fide intention to sell products using a particular trademark but have not begun selling those products across state lines or internationally.
Please review our blog post here for additional information: Intent-to-Use Applications vs Use-Based Applications.
21. Are there other filing bases besides use-based or intent-to-use based applications?
Yes. Based on international agreements/treaties, an owner may file an application in the U.S. based on a foreign application/registration issued by another country (a “Section 44” application). Also, a foreign owner may file an international application in its home country and request an extension of protection to the U.S. (a “Section 66(a)” application).
22. What happens to my application once it is filed with the USPTO?
Once the application is filed with the USPTO and the fee is processed, the application is reviewed by the pre-examination section and given an initial classification. If the application is complete, the USPTO will issue a filing receipt for the trademark application. Throughout the entire process, we will monitor the progress of your application and alert you of any updates with regard to your application.
Upon reviewing a new trademark application, the Examining Attorney assigned to the application reviews every aspect of the application, including registerability of the trademark, compliance with the U.S. Trademark Act and Trademark Rules, and procedural requirements. If the application does not meet all of the requirements, the USPTO’s Trademark Examining Attorney will issue an Official Office Action.
23. What is an Office Action?
If based on the Examining Attorney’s review, the application is not entitled to registration for any reason, he/she will issue an Office Action. The Office Action typically supplies information as to how to correct whatever problems exist in the application and gives the Applicant six (6) months to respond. If no response is filed within the statutory six (6) month period, then the application will be deemed abandoned.
If a response is timely filed, the application will be re-examined in light of the Applicant’s response. If the Examining Attorney finds that his/her requirements/ refusals were in fact met by the Applicant’s response, he/she can then approve the trademark for publication. If the Examining Attorneys finds that there is at least one requirement or refusal which was not sufficiently addressed by the Applicant, then the Examining Attorney may issue another office action refusing registration and/or making additional requirements as called for under the circumstances. Again, the Applicant has another opportunity to respond. This procedure can continue until the Examining Attorney’s action is made final or until the Applicant fails to respond.
24. Why would I get an Office Action?
The USPTO routinely issues office actions in connection with trademark applications. The USPTO can issue an office action for technical reasons including, without limitation:
- The application is missing information;
- The identity of the Applicant must be clarified;
- The trademark in the application and specimens do not match;
- The specimens are digitally altered or manipulated;
- The description of the trademark needs to be amended;
- The good/services need to be clarified.
The USPTO also routinely issues office actions for more substantive reasons including, without limitation:
- Disclaimer of descriptive elements;
- Refusal on basis of immoral or scandalous matter, deceptive matter;
- Refusal on basis of flag, coat of arms, or other insignia of United States, State or municipality, or foreign nation;
- Refusal on basis of matter protected by statute or convention;
- Refusal on basis of name, portrait, or signature of particular living individual or deceased U.S. President without consent;
- Refusal on basis of likelihood of confusion, mistake, or deception;
- Conflicting marks in pending applications;
- Refusal on basis of descriptiveness;
- Refusal on basis of geographic significance;
- Refusal on basis of surname; and/or
- Marks composed of, in whole or in part, domain names.
25. How much does it cost to respond to an Office Action?
To respond to an Office Action on the basis of technical issues, we charge a fee of $250-400 per basis of refusal identified in the Office Action.
The fees involved to respond to an office action for more substantive reasons depend on the nature and scope of the issues. Responding to a substantive office action requires legal argument and a much more detailed response in order to convince the USPTO to reverse its refusal. Therefore, you should expect that responding to an office action issued for substantive reasons will be a minimum of $2,500.
26. What is a Notice of Publication?
If the Examining Attorney raises no objections to registration, or if the Applicant overcomes all objections identified in an Office Action, the Examining Attorney will approve the trademark 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 trademark is published in the “Official Gazette,” any party who believes it may be damaged by registration of the trademark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.
If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. It can take three to four months from the time the notice of publication is sent before the Applicant will receive official notice of the next status of the application. During this time, we will continue to monitor to your application.
27. What is an Opposition?
An opposition is similar to a litigation proceeding in a federal court but is held before the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO. An opposition is a proceeding in which one party is seeking to prevent registration of another party’s trademark. Under the law, if a party believes that he will be damaged by the registration of a trademark, he can file an opposition.
28. What is a Notice of Allowance?
A Notice of Allowance will only be issued in connection with INTENT-TO-USE applications. For more information about the difference between intent-to-use applications and use-based applications, please check out our blog post here: Intent-to-Use Applications vs Use-Based Applications.
If the trademark (which is the subject of an INTENT-TO-USE application) is published and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a Notice of Allowance. It does not mean the trademark is registered yet. Once the Notice of Allowance issues, the Applicant then has six (6) months from the date of the notice of allowance to either:
- Use the trademark in commerce and submit a statement of use (SOU); or
- Request a six (6) month extension of time to file a statement of use (extension request).
If the Applicant cannot demonstrate use within the initial six-month period, the Applicant may file a six- month extension request with the USPTO upon a showing of good cause. The Applicant may file a total of five (5) extensions for a total of 36 months.
29. Do I have to use my trademark before I receive a trademark registration?
Yes, you do. We know — it seems counterintuitive. You may believe that you need to have a registration before you start using the trademark to identify your goods/services. However, the USPTO requires that you demonstrate “use in commerce” before the USPTO will register your trademark.
30. What is a Statement of Use?
A Statement of Use (SOU) or Amendment to Allege Use (AAU) is only applicable in INTENT-TO-USE applications. A statement of use (SOU) must be filed in order for the USPTO to issue a Certificate of Registration for a trademark that is the subject of an INTENT-TO-USE application. For more information about the difference between SOUs, please check out our blog post here: Intent-to-Use Applications vs Use-Based Applications.
31. What are Dates of First Use?
For use-based applications, dates of first use must be provided to the USPTO for each class of goods/services. For intent-to-use applications, dates of first use must be provided to the USPTO at the time of filing a Statement of Use or Amendment to Allege Use.
The date of first use anywhere is the date when the goods were first sold or transported, or the services were first rendered, under the trademark, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type.
The date of first use in commerce is the date when the goods were first sold or transported, or the services were first rendered, under the trademark in commerce that may be regulated by the U.S. Congress, i.e. across state lines or with a foreign country. Please be as specific as possible when providing dates of first use (i.e. month / day / year).
32. What is the difference between the Supplemental and Principal Registers?
At the federal level, trademarks are registered under the Lanham Act in the USPTO. The USPTO administers two trademark registers:
- Principal Register. The Principal Register is the primary register of trademarks the USPTO maintains, subject to additional registrability requirements, and is reserved for trademarks that are inherently distinctive or that have acquired distinctiveness.
- Supplemental Register. The Supplemental Register is the secondary register and is reserved for certain nondistinctive trademarks that do not inherently qualify for registration on the Principal Register but that are capable of distinguishing goods or services. If a trademark on the Supplemental Register acquires distinctiveness through use and promotion over time the owner may file a new application to register the trademark on the Principal Register.
You can find additional information about the Supplemental and Principal Registers here: The Supplemental Register, Descriptive Marks, and Brand Registry.
33. When can I use the ™, SM, and ® symbols?
Each time you use your trademark, it is best to use a designation with it. If registered, use an ® after the trademark. If not yet registered, use TM for goods or SM for services, to indicate that you have adopted this as a trademark or service trademark, respectively, regardless of whether you have filed an application with the USPTO.
You may only use the ® symbol with the trademark on or in connection with the goods/services listed in the federal trademark registration. NOTE: Several foreign countries use the ® to indicate that a trademark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.
34. What are Specimens of Use?
The USPTO requires Specimens of Use before a trademark registers because it wants to see how real-life examples of how your trademark is viewed by the public. For a use-based application, you must submit specimens at the of filing; for intent-to-use applications, you must submit specimens within 6 months of approval by the USPTO. We must see evidence of use of the trademark in connection with each product identified in your application; however, only one specimen must be submitted for each class of products/services.
35. What are appropriate specimens for goods?
A specimen for goods could show the trademark on or attached to the goods or on packaging for the goods. For example, your specimen could be a photograph of the goods with a tag or label attached or a photograph of packaging showing your trademark. A display specimen would show the trademark near a picture, photograph, or textual description of the goods and include information necessary to purchase the goods.
The specimen may not be a digitally-altered image or photograph, computer illustration, artist’s rendering, or similar mock-up of these items. It must be a photograph of the actual product or packaging that is being sold to customers.
Appropriate specimens may be:
- tags/labels which appear on the products;
- product packaging;
- the trademark as imprinted or stamped on the product itself;
- for computer programs, a screenshot of the trademark; and
- catalogs or online displays.
36. What are appropriate specimens for services?
A specimen for services must show the trademark used in providing or advertising the services. Specimens for trademarks used in connection with services (Classes 035-045) can be:
- Internet web page advertising;
- newspaper/magazine/trade journal advertising;
- promotional brochures on which the service trademark is imprinted;
- handbills, posters, leaflets, circulars, fliers;
- business signage (on storefront, office door or company vehicle – provide photos);
- trade show demonstration materials (provide photos);
- static displays in customer showrooms (provide photos);
- billboard advertising (photographs); and
- radio/television advertising (provide script/photos).
37. Once a trademark is registered, is it registered forever?
No. A trademark must continue to be in use in order to remain a valid trademark. To keep the registration “live,” the registrant must file specific maintenance documents. Failure to make these required filings will result in cancellation and/or expiration of the registration. If your registration is cancelled or expired, your only option is to file a brand new application and begin the entire process again from the very beginning. The fact that your trademark was previously registered does not guarantee registration when you submit a new application.
The duration of a trademark registration is 10 years so long as between the 5th and 6th year after registration, the registrant files a Section 8 Affidavit of Continued Use. A Section 8 Affidavit must set forth those goods/services recited in the registration on or in connection with which the trademark is still in use in commerce and must include a specimen clearly evidencing continuing use of the trademark for goods/services in each of the relevant classes. The USPTO notifies the registrant of the acceptance or refusal of the Section 8 Affidavit. If the registrant fails to file the Section 8 Affidavit, the trademark will be deemed abandoned.
Between the 5th and 6th year after registration, the registrant also has the option of filing a Section 15 Declaration of Incontestability if the trademark has been in continuous use for five or more years. An incontestable registration is “conclusive evidence of the validity of the registered trademark and the registrant’s exclusive right to use the trademark in commerce.”
Between the 9th and 10th year after registration, the registrant must file a second Section 8 Affidavit of Continued Use. In addition, if the registrant wishes to renew the registration for additional 10-year periods, the registrant must file a Section 9 Renewal Application.
38. Does someone need to have a U.S. Trademark Registration to have trademark rights?
No. In the United States, parties are not required to register their marks to obtain protectable rights. You can establish “common law” rights in a trademark based solely on use of the trademark in commerce, without a registration. You can learn more here: Right to Use Trademarks vs Right to Register Trademarks.
39. Does my U.S. Trademark Registration protect me in other Countries?
No. Trademark rights are territorial. Your federal registration only grants rights to you in the United States. You can learn more here about foreign trademark rights: Why, Where, and When Should I File Foreign Trademark Applications.
40. What benefits come from having a U.S. Trademark Registration?
Owning a federal trademark registration on the Principal Register provides a number of significant advantages over common law rights alone, including:
- A legal presumption of your ownership of the trademark and your exclusive right to use the trademark nationwide on or in connection with the goods/services listed in the registration (whereas a
- state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the trademark is used);
- Public notice of your claim of ownership of the trademark;
- Listing in the USPTO’s online databases;
- The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol “®”;
- The ability to bring an action concerning the trademark in federal court; and
- The use of the U.S. registration as a basis to obtain registration in foreign countries.
41. If I file a U.S. trademark application, will my information be public?
Except for payment information, all personal information you submit to the USPTO, including your domicile address, e-mail address, and telephone number, will become part of a public record viewable on the USPTO website, as well as other websites that index USPTO data, such as Google®.
Providing your telephone number is not required information.
If you want to hide your domicile address from public view, you must provide an alternative mailing address that can be publicly viewable, and you must provide this address information in the initial application form.
42. What are these official-looking notices I am getting in the mail? Are these valid or solicitations?
Third-party websites and internet search engines may post your USPTO application information online as part of a legitimate service. Companies not associated with the USPTO, however, may mail or e-mail you misleading offers and notices concerning your trademark application that look very official. These companies often use names similar to the USPTO, for example, the terms “United States” or “U.S.” combined with “trademark.” The notices often mimic the look of official government documents by emphasizing official government data, such as the USPTO application serial number, the international class(es), and filing dates. Many refer to other government agencies and include legal-looking references. Most require “fees” to be paid.
You do not need to respond to these solicitations, even if they indicate there is a looming deadline at the USPTO. You may separately confirm a USPTO deadline directly on the USPTO website.
Keep in mind that all official correspondence from the USPTO will be directed to your counsel of record on the application. If you do not have counsel representing you in connection with your application, then it will be from the “United States Patent and Trademark Office” located in Alexandria, VA, and from the e-mail domain “@uspto.gov.” Read trademark-related communications carefully before determining whether you need to respond.
43. How do I check the status of my federal trademark application?
If we are representing you in connection with your application, then we will timely notify you of any updates relating to your application. You may also check the status of any pending application using the USPTO’s TSDR system. You must have your application serial number (a serial number is an eight-digit number that usually begins with 79, 85, 86, 87, or 88). Enter your application serial number and click on the “Status” tab.
44. What assurances do I provide when I submit documents to the USPTO?
A verified statement or declaration contains assurances you are making when you file an application, request for extension of time to file a statement of use, allegation of use, and other application-related submissions, i.e. substitute specimens. Assurances are specific statements you make about your ownership and/or use of the applied-for mark. These statements are sworn to under penalty of perjury. Therefore, assurances or other statements made in your application and subsequent submissions must be truthful and made with knowledge of the penalty of perjury.
For Amazon Sellers
45. What are the benefits of participating in IP Accelerator (IPA) for Amazon Sellers?
- Vetted Firms: Sellers get access to a curated network of trusted IP law firms that provide high quality trademark registration services to help brands secure a trademark registration.
- Predictable Costs: Amazon has pre-negotiated rates for basic services covering a single brand for a single class of goods or services. Additional fees may apply for other services including searching for multiple brands and filing for additional types of intellectual property (e.g., design patents).
- Faster Access to Brand Protections: Rather than waiting for a registration to issue in order to gain access to Amazon Brand Registry, IPA participants are eligible to enroll in Brand Registry as soon as the participating firm files their trademark application.
You can learn more about the IP Accelerator program here: https://brandservices.amazon.com/ipaccelerator.
46. What brand protection benefits are available to me if I use the IPA program?
By filing an application through an IP Accelerator law firm, you will be invited to enroll in Amazon Brand Registry and have access to the following brand protection benefits:
- Proactive brand protections: Amazon will use information provided about the brand to implement protections that attempt to proactively identify and remove potentially bad listings that could harm the brand and our customers.
- Powerful search and reporting tools: You will have access to the Report a Violation tool that provides powerful text and image based searching capabilities and simplifies the process of reporting potential infringement (e.g., common law trademark infringement) with multiple features designed specifically for brands.
- Other brand-building features: You will be able to further build and grow their business on Amazon by taking advantage of powerful tools designed for brands such as Enhanced Brand Content (EBC) product detail pages, Brand Stores, Sponsored Brands, and the Brand Dashboard. For more information, go to https://services.amazon.com/brand-benefits.
- For more information about Amazon Brand Registry and pre-negotiated rates available to Amazon Sellers, please go to: https://brandservices.amazon.com/faq.
47. Can brands who don’t have a Seller Account participate in IP Accelerator?
Amazon Seller Accounts are free and the best way to use the IP Accelerator Services. However, Brands who are not Sellers can still participate in IPA and get early access to the benefits of Brand Registry.
48. Are IPA law firms part of Amazon?
Law firms that participate in the IP Accelerator program are not employees, partners, or agents of Amazon. Each law firm operates independently of Amazon and has no control over Amazon policies or decisions.
49. Can I hire a non-IPA law firm to finish the application process started by an IPA law firm?
No. If a Seller hires another firm prior to issuance of the federal trademark registration, the application will no longer qualify for IPA’s early access to Brand Registry benefits and automated brand protections. This applies whether the Sellers represent themselves or engage a non-IPA law firm.
50. If I terminate the IPA law firm, will the registration still be eligible to enroll in Brand Registry?
Eventually, yes. Once the application matures into a registration (remember, the USPTO process takes 12-18 months), you can enroll through the normal self-service registration process for Brand Registry.
51. What if I already have a pending trademark application and want to enroll in Amazon Brand Registry?
IP Accelerator is focused on brands that are just starting the IP protection process. If you already filed an application with the USPTO, this application cannot be “transferred” into the IPA program. However, an IPA law firm can file a new application on your behalf, e.g. if an office action has already issued, which can address the issues raised in the issued office action.
Amazon also recently launched a self-service program in the U.S. that accepts pending trademark applications for enrollment into Brand Registry. Because the trademark applications aren’t being filed by our vetted firms, the program doesn’t offer the same benefits as IPA; nonetheless, brands can add their information to the waitlist at the following address to be considered: https://brandservices.amazon.com/pending-trademark-request.
52. Do trademark applications for the Supplemental Register qualify for early access into Brand Registry?
No. Only applications for the Principal Register qualify for early access to Brand Registry.
Here is a real example of a trademark on the Supplemental Register:
BREWBIKE, Registration No. 5783887, registered in connection with the following goods/services on the Supplemental Register:
“Mobile food cart services featuring coffee, tea, cocoa, water, pastries, oatmeal; mobile beverage cart services featuring coffee, tea, water, and cocoa; retail store services featuring food and beverages.”
The USPTO considered the wording BREWBIKE in the trademark descriptive of the goods/services and therefore, not eligible for registration on the Principal Register. This Supplemental Registration would not qualify for Brand Registry.
However, if the Brand Owner filed an application to register the trademark BREWBIKE with a distinctive logo or design, the USPTO may have accepted the trademark on the Principal Register with a disclaimer of the wording BREWBIKE. What this means for Brand Registry is that you would have the ability to enjoy some of the benefits of Brand Registry (Enhanced Brand Content (EBC) product detail pages, Brand Stores, Sponsored Brands, and the Brand Dashboard) but you would not be able to prevent other third party sellers from using the wording BREWBIKE.
53. Will only word trademark applications qualify for Brand Registry?
No. Applications filed on the Principal Register, for word trademarks, or designs with words, letters or numbers qualify for early access to Brand Registry.
54. Does the Classification of Goods/Services affect Brand Registry eligibility?
The classification of goods and services does not affect whether the application qualifies for Brand Registry.
55. Does a Disclaimer effect the trademark’s eligibility for Brand Registry?
Not necessarily. So long as a trademark has enough distinctive matter to be registered on the Principal Register the trademark may be enrolled into Brand Registry. This is true even if the entire literal portion of the trademark is disclaimed. The distinctive design portion may still be protected through Brand Registry.
56. Do ITU Applications qualify for early access into Brand Registry?
Yes. However, brand owners filing intent-to-use applications may not receive the full suite of infringement reporting benefits offered through Brand Registry.
57. To enroll in Brand Registry, do I have to have goods available for sale on Amazon?
No. Amazon does not require that products be available for sale on Amazon but the Seller will have to have a Brand Registry account.
58. How long does it take for me to receive an invitation to Brand Registry?
If you meet the eligibility requirements for Brand Registry, and you have a Seller Account in Good Standing, you should receive an invitation to Brand Registry within 3-4 weeks from the IPA law firm’s notification to Amazon of your USPTO federal application number. However, there may be delays due to the time it takes for application data to be available on the USPTO’s website. If you do not have a Seller Account, your invitation may be slightly delayed since these are manually entered into Brand Registry.
59. What happens if you submit a trademark application, but I have not received my Brand Registry invitation email from Amazon?
Once the application has been filed, and your IPA law firm confirms that it notified Amazon, you should reach out to Amazon for status of your Brand Registry invitation. Please use this link to reach out to the Brand Registry Support team: https://brandregistry.amazon.com/cu/contact-us.
60. Once my brand is enrolled in Brand Registry, do I have to continue the U.S. application process?
Yes. In order for your brand to continue to be enrolled in Brand Registry, your application for the brand must be active and ultimately, result in a federal trademark registration. You continued eligibility for Brand Registry during the application process is contingent on your application remaining with an IPA law firm and ultimately becoming a registered mark. For example, if you receive an office action and fail to respond, your application will ultimately be deemed abandoned by the USPTO and removed from Brand Registry.
61. Does the Applicant have to be the Seller of the Trademark-Branded Products on Amazon?
No. The Applicant does not need to sell the products him/herself. The Applicant can create a Brand Registry account and designate agents to be Sellers of its brand. The Applicant name and the name used to enroll in Brand Registry must match in order to successfully enroll your brand in Brand Registry.
62. Can I enroll my brand in Brand Registry if my Seller Account is deactivated, suspended, or in bad standing?
No. To enroll in Brand Registry, the Seller must have an active (in good standing) Seller account. If the Seller’s Seller Account has been suspended, the Seller needs to resolve the issue with the Amazon Seller Performance Team prior to applying to enroll the brand in Brand Registry. Sellers can contact the Seller Performance team at Sellerfirstname.lastname@example.org.
If a Brand Registry account is created with pre-existing Seller Account credentials and there is any type of block on the selling account (or any related account(s)) in any marketplace, you will be blocked. Please log in to your Seller Account, visit Performance–>Performance Notifications in Seller Central to see the reasoning for the block. Sellers can also contact the Seller Performance team at email@example.com.
63. What can I do if I initiated my IPA request using the wrong email address?
The Brand Registry enrollment email will be sent to the email address identified with the Seller in the SPN dashboard upon its initial request to the IPA law firm. If you contact your IPA law firm with an email address that is not listed in your Amazon Seller Account, then your brand will not be connected with your Seller Account.
Therefore, you should initiate an IPA request while logged in to your active Seller Account. If you already have an active Brand Registry account, then you may do so through that account as well.
If you used an email address that is not connected with your Amazon Seller Account; you can either (i) start a new initial contact with the correct email (Email #2) and the IPA firm can terminate the incorrect initial inquiry with Amazon; or (ii) you can add the second email (Email #2) to your Brand Registry account.
The best scenario is that the Seller contacts an IPA law firm while logged into the Seller Account to be associated with its Brand and that the email address is consistent for the Seller Account and Brand Registry.
64. Does the new trademark application need to be enrolled in Brand Registry before a Brand Registry Account can be created?
No. A Brand Registry account can be created without reference to a trademark. However, no enrolled brands will appear. The Brand Registry account creation and brand enrollment processes are related, but separate.
65. What information is necessary to create a Brand Registry account?
Brand owners simply need to provide an email address and phone number.
66. Is it possible for Agents to Represent a Brand on Amazon and to get access to Brand Registry?
Yes. The Applicant should open a Brand Registry account, and once he/she has enrolled the brand in their Brand Registry account and accepted the terms and conditions, he/she can add additional representatives of that brand, including agents, by logging into his/her account and submitting a request to Amazon’s Brand Registry Support team. Please note that all users of the brand will need to have their own Brand Registry account and login credentials.
67. If I file an application for a standard character trademark in all capital letters, does that prevent me from using different capitalization with Brand Registry?
No. A federal trademark application showing the trademark as “ABC” (standard character trademark) IS customary practice to give you flexibility in appearance. If you want your brand to display as “abc”, then you can contact Brand Registry Support under “Listing Issue” to request that the display of your trademark be corrected to the capitalization format you want. There is no restriction on capitalization when enrolling in Brand Registry.
68. Where can I get more information about Brand Registry?
You can find useful information about Amazon Brand Registry here: https://brandservices.amazon.com/eligibility.
69. What is required to enroll a Brand in Brand Registry with a pending trademark application through the IPA program?
- If the Seller has an active Seller Account, then the legal entity or individual named in the Seller account should match the Applicant of the federal trademark application;
- If you have an active Seller Account in good standing, an Amazon Request ID Number;
- The Brand Name must match the trademark as filed; and
- Trademark application or serial number.
70. For Brand Registry enrollment, does use of the trademark have to match the application filed?
Amazon Brand Registry requires brand names to match the exact punctuation of the trademark in the trademark application. If you have already been using a brand name on Amazon, the trademark application must match that exact brand name in order to enroll it in Brand Registry. For example, if you use “ABC 123” as your brand name but file an application for “ABC123”, you will not be able to enroll “ABC 123.”
71. Is there a way to rectify the discrepancy between Seller’s “brand” already enrolled in Brand Registry and USPTO Trademark designation?
No. All brands are enrolled in Brand Registry matching the USPTO’s Trademark designation or the literal elements in your USPTO application. If you file an application with a combination stylized letter and word trademark, the brand enrolled in Brand Registry will match the USPTO Trademark designation. See example:
If you are already selling on Amazon, you should confirm use of the brand on Amazon (see illustration below) matches the trademark depicted in the application. If it does not, Amazon is requiring that you go back and amend your ASINs to reflect that the brand name matches the USPTO’s trademark designation. This most often comes up in WORD + DESIGN trademarks.
Sometimes, your best chances of federal trademark registration on the Principal Register will require the filing of a WORD & DESIGN trademark and this may impact how the brand is recognized in Brand Registry. In that case, you will have to decide whether you are willing to change the ASINs to reflect the USPTO’s Trademark Designation as the example above demonstrates, file a new application for the Brand Name, and/or change your Brand Name to something that is more distinctive to warrant a Principal Registration.
72. Can new brands be enrolled into a Brand Registry account?
Yes. After the Brand Registry account is opened and the first brand is enrolled, additional brands can be enrolled at any time by clicking on ‘Enroll a new brand’ from the home page of their account.
73. What if I want to file additional applications for the same Brand adding additional goods/services; do I need to add the subsequent applications to my Brand Registry account?
You will not be required to add the additional applications to your Brand Registry Account since enrollment does not require classification of goods/services. However, if you want to enforce your trademark on Amazon through the Report a Violation tool, you will need to provide the federal application or registration number in order to enforce the brand showing the brand and the goods/services are the subject of a federal trademark application or registration.
74. What do I need to do once the trademark application is filed?
- Your IPA law firm will notify Amazon of your trademark application.
- You must wait approximately three (3) weeks for an email invitation from Amazon inviting you to Brand Registry.
- Once you receive that email, you must create a Brand Registry account.
- If you have a Seller Account, then use the same email address to create a Brand Registry account.
- If you already have a Brand Registry account (because you have other Brands), then please note your account information.
- Once your Brand Registry account is created, respond to Amazon’s email and advise Amazon that your Amazon Brand Registry account is created.
- Amazon will manually enroll your brand. You will not have a registration number and Amazon will have your application number from your IPA law firm.
- You will receive an email notification from Amazon that your brand was successfully enrolled.
75. What if I have difficulty enrolling in Brand Registry?
If you have trouble with your enrollment, you may contact Amazon at http://www.amazon-brand-registry.com/eng/contact_us with the following information:
- Description of issue
- Your email
- Service Provider Network Request #
- Trademark Application #
Once your application is filed by an IPA law firm, and the IPA law firm notifies Amazon of your application filing, your IPA law firm is not involved in the Brand Registry process. If you want us to assist with the Brand Registry process after the application is filed, then you will be charged at our hourly rates.
76. How do I change the email address on my Brand Registry account?
- Create a new Brand Registry user account with the additional email (Email #2) at https://brandregistry.amazon.com/?ref=asus_abr_home_enroll&ld=ELXX1-sim.amazon.com_null
- Log into Brand Registry with your existing account (Email #1) at https://brandregistry.amazon.com
- Go to Brand Registry Support > Update role or add new user
- Add Email #2 as a new user with the appropriate role
77. Brand Registry enrollment is asking me for a registration number but when I enter the application number, I get an error message – how do I fix this?
You will not have a registration number for 12-18 months until after your trademark application is filed. You do not need a registration number if you filed through an IPA law firm. If you receive an error message that looks like the following, then you are using the registration enrollment link (and you must have an existing trademark registration), not the application enrollment link.
Please use the following enrollment link: https://brandregistry.amazon.com/brand/enrollment.
78. If I use an IPA law firm, does Amazon own any rights in my trademark?
Absolutely not. Amazon is simply providing a mechanism for you to connect with reputable law firms to assist you with your trademark rights.
79. I am an Amazon Seller/Vendor who enrolled a brand in Amazon Brand Registry prior to April 30, 2017. Do I need to re-enroll?
Yes. If you enrolled a brand in Brand Registry prior to April 30, 2017 and your brand meets eligibility requirements, you need to re-enroll in the Brand Registry. Go to: https://brandservices.amazon.com/eligibility.
80. Does Amazon require a Seller Account to access IP Accelerator firm benefits?
No. Since Amazon does not require Brand Owners to have an Amazon Seller account to participate in the IP Accelerator program, your IPA law firm will notify Amazon of any information regarding your filings. You should let your IPA law firm know if do or do not have a Seller Account.
81. What are your fees for preparing and filing my federal trademark application and notifying Amazon about our trademark application?
Our flat fees on our flat fee schedule. Once you provide us with information about your brand, business, and Amazon account, we provide you with our recommendation which will include a more accurate quote about fees. Our fee includes notifying Amazon of your federal trademark application.
82. What if I have a brand that I want to protect but the brand is not for Brand Registry, can I get the same rates?
Our negotiated rates are only for Amazon Brand Registry brands going through the IPA program.
83. Can you answer my questions about Amazon Brand Registry or Enhanced Brand Content?
Amazon questions should be directed to Amazon. We are available to assist you with researching answers to your questions; our hourly rates apply.
84. It has been more than 15 business days and I have not received my Brand Registry invitation, what can I do?
If you do not receive your Brand Registry invitation after three (3) weeks or 15 business days from receiving notification that your federal trademark application was reported to Amazon, please use this link to reach out to the Brand Registry Support team: https://brandregistry.amazon.com/cu/contact-us.
85. What type of search do you include with my federal trademark application?
We include a courtesy “knockout” search when you provide us with information about your brand. We search the USPTO records for identical marks and a Google Search for identical marks for identical services. This is a preliminary search and identifies immediate conflicts. This type of search is limited and scope and should not be considered to confirm trademark availability and registerability. However, if potential conflicts are found in this search, it is usually an indicator that your proposed trademark carries risk.
86. How can I pick a trademark that is risk-free?
Picking a mark that is risk-free is nearly impossible. Certain business risks inherently coincide with trademark selection and use. As discussed in the previous FAQs, rights in trademarks are based on use and such rights accrue to the first user whether or not he/she/it registers the mark with the USPTO or in any State. The best way to assess the level of risk associated with a particular mark is to order a comprehensive trademark search.
87. Do you enroll me in Brand Registry?
No. We notify Amazon of your federal trademark application. You create a Brand Registry account. Amazon enrolls your brand. If you need our assistance with this process, we can do so at our hourly rates.
88. Do you offer refunds if the USPTO issues an Office Action in connection with my trademark application does not register?
No. We do not offer refunds for our fees. The filing of a federal trademark is a legal proceeding before the United States Patent and Trademark Office. We cannot and do not give any guarantees regarding the results or outcome of your trademark application.
89. Can I use an Agent to communicate with you?
The attorney-client privilege is a very powerful doctrine in the American legal system. The privilege protects communications made between clients and their attorneys for the purposes of seeking legal advice. Under the attorney-client privilege, parties typically cannot be compelled to reveal confidences made during the attorney-client relationship. One exception to this rule is when other parties are present to conversations (that includes emails). If other parties are involved in communications between the attorney-client, then the attorney-client privilege is broken.
90. Are there any hidden fees?
No. We do not hide our fees. Our fees are outlined in our engagement letter and flat fee schedule, which are provided to you. Please carefully review them. As is customary in the legal industry, we charge both hourly rates and/or flat fees depending on the nature of the services provided. We outline all of our rates to you at the outset of our engagement and if you are a client of our firm, then you have agreed to our rates and when they apply.
91. What are flat fees?
Our flat fees are noted in our flat fee schedule. In addition, we may identify a flat fee for certain work (i.e. office action responses).
For example, our flat fee for the federal trademark application process (for a use-based application) includes:
- Preparing and filing the application based upon the information you provide to us;
- Conducting a search of USPTO records and Google for identical marks;
- Reporting the Notice of Publication; and
- Sending you an electronic Certificate of Registration.
If there are no issues with your application, then there are typically no other fees. However, if for example, the USPTO Trademark Examining Attorney assigned to your application contacts us for clarification or a third party files a request of time to file a notice of opposition, our hourly rates would apply.
92. Can you please clarify when hourly rates apply?
We have worked with several clients for more than a decade and it is our hope that by being completely clear and transparent about our fees, you know what to expect by working with us and that leads to a long-lasting relationship.
We understand that you do not wish to pay for unnecessary attorneys’ fees, and we do not want that either. That is why we have developed these Frequently Asked Questions – so that you can find the answers to many of your questions right here! However, as a law firm, the services that we provide are information and/or counsel and is measured in how much time it takes to provide you with that information and/or counsel. Our hourly rates range from $150 (for administrators and paralegals) to $400 for attorneys and are specifically referenced in your engagement letter.
As a business, we are sure that you agree that if you spent your days giving away your product, you would not have much of a business left. Similarly, if we spent our days answering all of the questions we received without compensation, we would not either!
Hourly rates apply for all work outside of what is in the flat fee schedule or has been identified by us in writing as part of the flat fee.
Our flat fee services include our correspondence to you and providing you with updates about the flat fee services you have engaged us for. When we have an update on your matter, we provide you with an update.
However, our flat fee services would not include your request for updates. An easy rule of thumb to tell when hourly rates will apply is: If you are reaching out to us with a question, usually, an hourly rate will apply. We understand that may be confusing but please bear in mind that to respond to your request, we are either providing you with information and/or we must review your file and research a response. This takes our time and is outside the scope of our flat fee services; therefore, we charge accordingly.
For example, hourly rates will apply, without limitation, when we spend time:
- Responding to your emails;
- Reviewing your file;
- Telephone consultations;
- Strategy advice;
- Advice or counsel regarding specimens;
- Advice or counsel regarding the appropriate use of your trademark;
- Brand Registry advice;
- Trademark enforcement;
- Review of documents;
- Review of emails;
- Preparation of agreements; and/or
- Researching fees for foreign filings.
We accurately record and track our time for the work done for you and/or your matters. We provide you with a description of our services through our regular monthly billing with descriptive invoices. These invoices have detailed entries for each segment of time.
93. How long does it take you to respond to my emails?
Typically, it takes us 2-3 business days to respond to your emails. We aim to respond sooner however, we typically respond to emails in the order they were received and our timing can change depending on the volume of work we are handling at the time of receipt of your email.
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