FEE INFORMATION
Application Fee for TEAS form
: The USPTO requires a higher application fee (compared to the fee for a "TEAS Plus" form) when eitherFee for failure to satisfy TEAS Plus requirements
:The applicant must pay an additional fee of $50 per class if, at any time during the examination of the TEAS Plus application, the Office determines that (1) the application did not meet the filing requirements for a TEAS Plus application as of the filing date, as set forth in Rule 2.22(a); (2) the applicant filed a paper form after the initial application, but a TEAS form existed for that purpose, e.g., a response to an Office action; and/or (3) the applicant refused to receive correspondence from the Office by electronic mail (e-mail) during the pendency of the application.
Application fee for TEAS Plus form
:The USPTO amended its rules to permit an applicant to pay a reduced
fee under certain circumstances when the applicant files a TEAS Plus form through the Trademark Electronic Application
System (TEAS) for a trademark or servicemark application for registration on the Principal Register under section 1
and/or 44 of the Trademark Act.* The reduced fee is applicable if the application as filed is a "complete" application,
i.e., it meets certain filing requirements beyond those required to receive a filing date, as set forth in Rule 2.22(a).
The applicant must also (1) later file certain communications regarding the application, such as a response to an Office
action, through TEAS (Note: the complete list of forms that must be filed through TEAS appears in Rule 2.23(a)(1)); and
(2) agree to receive communications concerning the application by electronic mail (e-mail) during the pendency of the
application.
*Note: The reduced fee option does not apply to applications filed pursuant to section 66(a) of the Trademark Act,
because they cannot be filed through TEAS, nor to any of the following types of applications for which a "TEAS Plus" form
does not exist: Supplemental Register; Certification mark; Collective Membership Mark; or Collective Trademark/Servicemark.
Argument(s)
If the examining attorney has refused your mark for any substantive legal reason, you are entitled to submit arguments in support of registration. You should simply and completely address the points raised by the examining attorney in the form. You are not required to provide case law support, although you may, as appropriate. If the examining attorney is convinced by your arguments, the examining attorney will withdraw the refusal(s). If not convinced, and assuming there are no other outstanding issues, the examining attorney will issue a final refusal. Your options at that point are 1) appeal to the Trademark Trial and Appeal Board (TTAB), an administrative adjudication board; or 2) not respond, which will lead to abandonment of the application. You may still be entitled to use this mark as your "trademark" or "service mark; however, you would not have the rights associated with a federal registration. You should seek the advice of an attorney experienced in U.S. trademark matters for a more complete explanation of anything in this form you do not understand or for any other legal advice relating to the use and/or registration of your trademark or service mark. The USPTO cannot recommend an individual attorney or law firm.
PDF attachment for argument
To use this approach, you should first enter within the Text box (accessed at "Click here to Enter Argument(s)") the statement "Please see the actual argument text attached within the Evidence section." Then, you would attach the full argument as a PDF file as "Evidence." While not, in a sense, truly "evidence," the USPTO sanctions this workaround approach, since the retention of formatting facilitates the reading of the argument; also, images can be included within the PDF file, which is not possible when entry is attempted directly within the Text box. HOWEVER, do not submit an entire response as one single PDF attachment. I.e., if specific portions of the Response to Office action form exist for entering the information, such as a disclaimer or amended goods/services, those entries must be made within the appropriate area of the form, and not merely included as part of the PDF attachment. The PDF should ONLY consist of the argument (and any images, if appropriate), and none of the other items necessary for a complete response to the issued Office action.
Evidence
You may attach image files of evidence that support the registrability of your mark; for example, dictionary excerpts, copies of relevant articles, web sites, etc. To attach anything as evidence, you must first scan the evidence into either a JPG/PDF file. For technical and security reasons, these are the only formats that the Office will accept; attachments in any other format will be rejected. Once this is done, you can then click on the browse button at the appropriate place in the form to select the JPG/PDF file(s) stored on your local drive that contains the piece of evidence. If you are submitting more than one piece of evidence, you must attach a separate file for each additional piece of evidence (i.e., it is not possible to attach one file having multiple pages of evidence).
JPG and PDF File Attachment Information
(Note: The MARK image attachment must be a JPG file.)
To attach a file you must first scan it as a JPG/PDF file. For technical and security reasons, these
are the only formats that the Office will accept; attachments in any other format will be rejected. Once
this is done, you can then click on the browse button at the appropriate place in the form to select the
JPG/PDF file(s) stored on your local drive that contains the appropriate file.
JPG Attachment: If you are submitting more than one JPG piece of evidence, you must attach a
separate file for each additional piece of evidence (i.e., it is not possible to attach one file
having multiple pages of evidence). Please note the following: 1) The acceptable evidence
image size is 8 1/2 " X 11". The evidence images are scaled to fit 7" X 7" on internal
USPTO databases. 2) You must be able to open and print the images from your browser. If
you cannot view and print the images from your browser, we will not be able to open the image
file. The evidence image must print no larger than 8 1/2" X 11". 3) If you cannot validate the
form after attaching an image file, please try validating the form without the image attached;
if successful, try re-saving the image using PowerPoint. Copy the image onto a blank slide and
use the "file type" save as feature to re-save the image as a JPG file. PowerPoint will ask if
you want the save to apply to all of the slides. Answer "Yes". Then try attaching and validating
with this new image file attached. You should also try this approach if the form drops your image
file during the validation process. If you cannot validate with the image attached or it is dropped
during the validation process, then we are not recognizing the image as a valid JPG image file.
4) After validation, you should be able to view your image from the validation page. If you cannot
view your images they are not properly attached. If you can view them, but they appear large, this
is not a problem as long as you were able to view and print them (as described at number 3, above).
If the images do print larger than desired, use your image software's zoom feature to reduce the
size of the image and re-save. If this does not work, use the 'Print screen' feature to cut-and-paste
the re-sized image onto a blank slide and re-save it as a JPG file, in the correct size. 5) The image
file should be scanned at a minimum of 300 DPI; however, 600 DPI will provide a clearer image. 6) Images
created on a Macintosh using Adobe Photoshop or Illustrator must be properly saved with appended file
extensions .jpg for use on a Windows system. We cannot open image files that are not properly saved
prior to attachment. 7) Internet Explorer on the Macintosh platform will NOT permit proper image
attachment. You must use Netscape or a PC. 8) Images that are no larger than 600 pixels either
horizontally or vertically when submitted reproduce better than images with higher or lower pixel
counts. 9) Adobe Photoshop/Illustrator users must ensure that images are saved with the RGB color
scheme. The USPTO cannot accept the CYMK color scheme. If you can open your image with your browser,
then it is saved in the RGB color scheme.
PDF Requirements: The USPTO will NOT permit submission of an overall response as a PDF file; i.e., the
evidence section cannot be used to attach a multi-page document consisting of arguments, evidence, revised
identifications of goods/services, additional statements, etc. Any portion of the ROA form that exists for
a specific purpose must be used for that purpose, rather than trying to shoehorn a complete ROA within the PDF
file.
Additional PDF Requirements: Failure to satisfy the specific USPTO requirements for
any PDF attachment may result in the TEAS form not validating. For the USPTO to accept any
PDF attachments, the PDF file must
Describe what the evidence submitted consists of
E.g., dictionary entry; newspaper excerpt; trade journal article
Classification and Listing of Goods/Services
:
New International Class
If the examining attorney has stated that you have placed your goods and/or services in the incorrect international class, you must adopt the classification(s) proposed by the examining attorney. This may require the payment of additional fees. If the number of classes that the examining attorney recommends exceeds the number of fees that have been paid, you must either limit the goods and/or services to the number of classes paid or pay the additional fees. For further information about classification, please see What are the different classes of goods and services?
New Listing of Goods and Services
If the examining attorney has determined that your original listing of goods and/or services is not acceptable, you must enter a new listing of goods and/or services. You should enter the complete listing of Goods/Services, regardless of the extent of changes made from the original listing (i.e., even if only one word has been changed, please repeat the entire listing, with relevant changes incorporated). If the examining attorney has suggested a listing, you should adopt that wording, assuming it is correct. If the examining attorney has not been able to suggest a new listing, perhaps because your original listing was simply too broad, please look for acceptable language for the goods and/or services in the USPTO's on-line Goods and/or Services Manual. Please note that while you may change the original listing, you can not broaden the listing. Any new goods and/or services must be within the scope of the original listing in order to be acceptable.
Section 44(d), Priority based on foreign filing: Check this box if applicant is filing the application within six months of filing the first foreign application to register the mark in a defined treaty country.
Country of Foreign Filing: Enter the country by clicking on the proper entry in the pull-down box. If the country is not listed (because it is not one of our top filers), select the listing "Other" in the pull-down box, and enter the information in the designated box.
Foreign Application Number: Enter the foreign application serial number, if available. If possible, enter no more than 12 characters. Eliminate all spaces and non-alphanumeric characters. For example, German application number 339 78 406.3/39 should be entered as 33978406339. Any characters beyond the 12th will NOT be picked up in the USPTO databases nor be printed in the Official Gazette.
Filing Date of Foreign Application: Enter the date (two digits each for both the month and day, and four digits for the year) on which the foreign application was filed. To receive a priority in filing date, the applicant must file the United States application within six months of filing the first foreign application in a defined treaty country.
Section 44(e), Based on Foreign Registration: An applicant relying on §44(e) as the sole basis for filing and registration must provide in the U.S. application all relevant information about an existing foreign registration(s). Although the applicant does not have to submit the actual copy of the registration certificate at the time of filing, the foreign registration(s) must be in force at the time of filing of the U.S. application. However, the applicant must file a copy of the foreign registration before the application may proceed to registration. The foreign registration must be "live" at the time the United States issues the registration based on that foreign registration. If the foreign registration is not in English, the applicant must also provide a translation of the foreign registration with the copy of the foreign registration. The translator should sign the translation, but need not swear to the translation.
Country of Foreign Registration: Enter the country of the foreign registration.
Foreign Registration Number: Enter the number of the foreign registration. If possible, enter no more than 12 characters. Eliminate all spaces and non-alphanumeric characters. For example, German registration number 339 78 406.3/39 should be entered as 33978406339. Any characters beyond the 12th will NOT be picked up in the USPTO databases nor be printed in the Official Gazette.
Foreign Registration Date: Enter the date of the foreign registration.
Renewal Date for Foreign Registration: Enter the date on which the registration was renewed, if applicable.
Expiration Date of Foreign Registration: Enter the expiration date of foreign registration.
Name of Person Authorizing Account Activity
If applicable, enter the name of the person who is authorized by the applicant to authorize the activity on the applicant's deposit account.
Company/Firm name
Enter the name of the company or firm responsible for the deposit account.
Specimen(s)
You must attach, for each international class (as appropriate), one specimen showing the mark as used in commerce on or in connection with any item listed in the description of goods and/or services. To attach the specimen(s), click on the browse button to select the JPG/PDF file stored on your local drive and that contains the specimen(s). This is NOT simply the same as the image of your actual mark by itself. Instead, you must show how you are actually using the mark in commerce. For example, for goods, acceptable specimens would consist of scanned or digitally photographed tags, labels, instruction manuals, or containers that show the mark on the goods or packaging. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods. Examples of acceptable service mark specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.
Specimen Image File
Additional or New Specimen(s)
Describe what the specimen submitted consists of
E.g., scanned or digitally-photographed tags, labels, instruction manuals, containers, point of purchase displays, or the front page of a catalogue.
Mark
You can display a mark in one of two formats: (1) Standard Characters ; or (2) Stylized and/or Design. You may apply for only one mark in each application. You cannot present the mark in Standard Character Format and the mark in Stylized or Design Format in one application. Each variation is considered a separate mark. Under the Standard Character Format, you must enter the word(s), letter(s) and/or number(s) you wish to register (e.g., THE CAT'S MEOW). Under the Stylized or Design Format, you must attach an image (which may consist solely of a pictorial element; word(s), letter(s) or number(s) in a particular stylization; or a combination thereof); and, if appropriate, enter the literal element of the mark. In a Standard Character Format mark, do not include quotation marks around the mark unless you are actually using, or intend to use, the quotation marks as part of the mark. Also, do not include any information related to a "pseudo mark" in this field. The USPTO is responsible for the pseudo mark field in the search system, not the applicant. If you wish to register a stylized or design mark, do not attempt to enter any information under Mark in the Standard Character Format section. Instead, click on the circle selecting Stylized or Design Format and attach a JPG image file (the only acceptable file type) to show the actual appearance of your overall mark. However, if there are literal elements in the mark, you should also enter those elements in the field underneath where the image file was attached (again, not under the Standard Character Format section). If your mark is in the stylized or design format, you should describe the mark in the appropriate field below where the image has been attached; if a color mark, list the portions of the mark that are in color and the corresponding color for each. (E.g., "A stylized letter C; "A bird with a blue body, a red head, and a yellow beak."). Do not enter the description within the field for LITERAL ELEMENT; that field is only for use where the mark itself includes words.
Stylized and/or Design If you are using, or intend to use, your mark with a stylized appearance or design that you want to protect, you may want to consider filing in this format; otherwise, choose the Typed Format above. Attach a JPG image file showing a black-and-white image of your mark. (Click on the 'Browse' button to select from your local drive the JPG image file-these are the only image file formats you can use.) Color images are not recommended. Although the USPTO will accept a color image, it will be converted to a black-and-white image before the application can proceed to registration. If color is an important feature of your mark that you wish to protect, use the description of the mark field (under the Additional Statement section) to explain where the color(s) appear in the mark (e.g., "The mark consists of a bird with a blue body, a red head, and a yellow beak."). NOTE: If you do not see the Additional Statement section on the form, it is because you entered "No" on the Form Wizard for Question 8. Unfortunately, you would need to create a new form, going back to the Form Wizard and answering Question 8 "Yes."
Properly-sized JPG image file: All black-and-white jpg images and color jpg images should be scanned at no less than 300 dots per inch and no more than 350 dots per inch, and within the pixel range suggested by the USPTO, namely, a length and width of no less than 250 pixels and no more than 944 pixels; e.g., a valid pixel dimension is 640 X 480 pixels. To ensure your image file meets these suggested sizes, you can use a free graphic viewer, e.g., Irfanview. If you cut-and-paste an image into Irfanview, or open an image file using the program, select "Image" from the tool bar and "Information" from the drop-down choices to view the current DPI and pixel dimensions. If your image is not in the proper dimension, you can use Irfanview to change the DPI and pixel dimensions: 1) Select "Image" from the tool bar; 2) Select "Resize" from the drop-down choices; 3) Set the DPI to 300 - 350 and change the pixel dimension to within the accepted range of 250 X 944; 4) If the new image file looks acceptable to you in the new dimensions, save the image file, by selecting "File" from the tool bar and using the "Save As" feature to save the file as a JPG image. If the image is not clear, do not submit the image. Instead, seek the assistance of a graphic artist to create the properly-sized jpg file.
Black-and-white: The "ideal" "black-and-white" image would consist of only two colors, namely, black and white. Unfortunately, due to limitations within the existing JPEG format, that is impossible. Instead, the "best" possible image will be a grayscale image that is as close to black and white as possible. This grayscale image can be created by image editors that will save the image in 8-bit JPEG, which eliminates all color elements from the JPEG image. When scanning your image file, you should confirm that the settings on your scanner are set to create a black-and-white or grayscale JPEG, not a color image. If you submit a black-and-white or grayscale image that has colors associated with it, the examining attorney will reject the image. To decrease the color depth in an existing JPEG image to only grayscale ( and as close to pure "black-and-white" as possible), you can use a free graphic viewer, e.g., Irfanview. If you copy-and-paste an image into Irfanview, you can decrease the color depth to two colors by following these steps: 1) Select "Image" from the tool bar; 2) Select "Decrease Color Depth" from the drop-down menu; 3) Select "2 colors, black and white;" 4) Click "ok;" 5) Confirm view of image as a pure black and white image; 6) Select "File" from the tool bar and select "Save As;" 7) Select "Save as grayscale JPEG" that appears in a popup window titled "JPEG/GIF save options"; 8) Save the image as a JPEG; and 9) Attach this image to your application as your proper black-and-white mark image. If you are not able to reproduce your mark as a pure black-and-white image, you should seek the assistance of a graphic artist. NOTE: The form will "reject" a "black-and-white" image that has colors associated with it. Black-and-white images with a color claim are acceptable, but drawings that are lined for color are not; you must submit an actual color image.
Literal element: Enter the word(s) or letter(s) that appear within the overall composite mark (as shown in the attached JPG image file). E.g., if the mark consists of the design of a cat and the words THE CAT'S MEOW underneath, you would enter in this field THE CAT'S MEOW. You would not enter "The design of a cat and THE CAT'S MEOW"- it is the actual image file that will show this. NOTE: Do not enter any word(s) or letter(s) that do not appear in the attached image; the image file must reflect the overall mark, consisting of both the design and the word(s)/letter(s).
Describe the mark: Enter a description of the mark, and if colors appear in the mark, the location of all of the colors. E.g., if the mark consists of a red bird sitting on a green leaf, you must enter either "a bird sitting on a leaf; the bird is red, the leaf is green" or "a red bird sitting on a green leaf" (with no final punctuation or initial capitalization, and without the introductory words "The mark consists of."
Material Alteration
The examining attorney will determine whether any proposed amendment of the mark is acceptable. A change is not acceptable if it materially alters the character of the mark. The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.
As a general rule, the addition of any element that would require a further search to determine whether a confusingly similar mark exists will constitute a material alteration. Also, deletion of matter from the mark can result in a material alteration. However, the deletion of non-distinctive matter may not constitute a material alteration. For example, the deletion of the generic name of the goods or services would not generally constitute a material alteration, unless it was so integrated into the mark that the deletion would alter the commercial impression. In some circumstances, even descriptive or other types of non-distinctive matter may be deleted, if the overall commercial impression is not altered.
You may not amend to a standard character drawing if the deletion of a design element or the elimination of the special form would alter the commercial impression. Usually, the mere amendment from stylized lettering to standard character form will not represent a material alteration. An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted.
However, the addition of matter that the applicant has previously registered for different goods or services is not permissible. Any proposed amendment to delete previously registered matter from the mark will be evaluated as to whether the deletion would represent a material alteration of the mark, without regard to whether the matter to be deleted is the subject of an existing registration.
These general rules are subject to exceptions. Each case must be decided on its own facts. The controlling question is always whether the new and old form of the marks create essentially the same commercial impression.
Standard Characters
Use this option to register a mark that is comprised of word(s), letter(s), number(s), or any combination thereof, with no design element and when you are not claiming any particular font, style, size, or color, and absent any stylization or design element. The application must also include a statement that "The mark consists of standard characters, without claim to any particular font, style, size, or color." The electronic form will automatically generate the correct statement. Registration of a mark in standard characters will provide broad rights, namely use in any manner of presentation. To be eligible for a claim of standard characters, the entered character(s) must appear in the accepted standard character set; you must be able to enter these characters directly into the designated field of the form.
Stylized and/or Design
Use this option if you wish to register a mark that is comprised of stylized word(s), letter(s), and or number(s), and/or a design element. The design may appear by itself, or combined with word(s), letter(s), and/or number(s).
Procedural Matters/Informalities/Applicant Information
Use this section to change the applicant's name; the applicant's address; the applicant's phone number; the applicant's entity type; the applicant's state/country of citizenship; and/or enter a new correspondence address or Email address.
Entity Type: Indicate the applicant's entity type by clicking on one of the circles that appear in the boxes under this section (i.e., "individual, "corporation," "partnership," etc.), and enter the corresponding information in the space to the right of the circle selected.
Individual: Enter the applicant's country of citizenship.
Corporation: Enter the applicant's state of incorporation (or the applicant's country of incorporation if the applicant is a foreign corporation).
Limited Liability Company: Enter the state under whose laws the limited liability company is organized (or if the limited liability company is foreign, the country).
Partnership: Enter the state under whose laws the partnership is organized (or if the partnership is a foreign partnership, the country) in the appropriate designated field. In the other designated field, enter the name and citizenship of any general partners who are individuals, and/or the names and state or (foreign) country of incorporation of any general partners that are corporations, and/or the names and states or (foreign) countries of organization of any general partners that are themselves partnerships.
Limited Partnership: Enter the state under whose laws the partnership is organized (or if the partnership is a foreign partnership, the country) in the appropriate designated field. In the other designated field, enter only the names and citizenship or state or country of organization or incorporation of the general partners.
Joint Venture: Enter the state under whose laws the joint venture is organized (or if the joint venture is a foreign joint venture, the country) in the appropriate designated field. Enter the name and entity type of each entity participating in the joint venture. In the other designated field, enter the citizenship of those joint venture participants who are individuals, and/or the state or (foreign) country of incorporation of those joint venture participants that are corporations, and/or the state or (foreign) country of organization- and the names and citizenship of the partners- of those joint venture participants that are partnerships.
Sole Proprietorship: Enter the state or country where the sole proprietorship is organized in the appropriate designated field. In the other designated field, enter the name and citizenship of the individual who composes the sole proprietorship.
Trust: Enter the state or country where the trust is organized in the appropriate designated field. In the other designated field, enter the name and citizenship of the individual trustees. Note: The application should be filed in the name of the trustees, not the name of the trust. At the initial "Name" field, the entry should read: "The Trustees of the [specify name] Trust."
Estate: Enter the state or country where the estate is organized in the appropriate designated field. In the other designated field, enter the name and citizenship of the individual executors. Note: The application should be filed in the name of the executors, not the name of the estate. At the initial "Name" field, the entry should read: "The Executors of the [specify name] Estate."
Other Entity Type: Use either the Domestic Entity pull-down box or the Foreign Entity pull-down box to indicate the appropriate entity. If not listed therein, select "OTHER" from the list and then make an entry in the free-form text box (e.g., "joint applicants" or "multiple applicants").
DOMESTIC REPRESENTATIVE
The applicant may appoint a Domestic Representative if the applicant's address is outside the United States. The following is hereby appointed applicant's representative upon whom notice or process in the proceedings affecting the mark may be served.
Representatives Name: Enter the name of the domestic representative.
Street Address: Enter the street where the domestic representative is located.
City: Enter the city in which the domestic representative is located.
State: If a U.S. state, enter the state by clicking on the proper entry in the pull-down box. Otherwise, select the listing "Other" in the pull-down box, and enter the information in the designated box.
Zip Code: Enter the U.S. postal zip code for the domestic representative's address.
Firm Name: If applicable, enter the name of the law firm with which the attorney is associated who is being designated as the domestic representative.
Phone Number: Enter the domestic representative's telephone number.
FAX Number: Enter the domestic representative's FAX number.
Internet/E-Mail Address: If available, enter the domestic representative's internet/e-mail address.
Authorize: In accordance with the notice in the Federal Register dated June 21, 1999 [Internet Usage Policy, Fed. Reg. Vol. 64, No. 118 ( June 21, 1999, pp. 33056-66)], this will grant the USPTO permission to send correspondence regarding this application to the applicant or its representative.
Policy: In accordance with Office policy, all correspondence will be sent to the applicant or its representative in the following order: 1) the applicant's attorney's e-mail address, if provided; or 2) the applicant's domestic representative's address, if no attorney has been appointed; or 3) the applicant's address, if the applicant has not also named an attorney to represent it before the Office or a domestic representative to accept service of process. If the applicant has appointed an attorney, the Office must correspond with the attorney and cannot send correspondence directly to the applicant.
Change of Correspondence Address Form
Use the Change of Correspondence Address Form if you want to change a Correspondence Address, i.e., the postal service address or e-mail address to which the USPTO should send any correspondence. Do NOT use the form, however, if you wish to change either an actual Power of Attorney or Appointment of Domestic Representative, or the physical address of the applicant or owner (which requires a regular amendment). Additionally, do NOT use the form to change the applicant's name or to transfer ownership of an application or registration from one party to another. Those steps must be done through the Assignments Division. For more information, click here. For an Assignment Recordation Form Cover Sheet (PTO-1594), click here. To access the Change of Correspondence Address Form, click here.
Additional Statement: This section is for the entry of various statements that may pertain to the mark. Some or all of these statements may not apply to the mark, and in no case must you enter any of these statements for the application to be accepted for filing (although you may be required to add some of these statements to the record during the actual prosecution of the application). You are limited to certain statements designated by the USPTO (you may NOT enter free-form text for any sort of miscellaneous statement). The following are the texts of the most commonly asserted statements:
DISCLAIMER: "No claim is made to the exclusive right to use _________apart from the mark as shown." (Enter descriptive/generic wording).
STIPPLING AS A FEATURE OF THE MARK: "The stippling is a feature of the mark and does not indicate color." (i.e., the mark consists, in part, of actual "dots"-- the stippling-- as a feature of the mark, rather than those "dots" being an attempt to show coloration or shading in the mark).
STIPPLING FOR SHADING: "The stippling is for shading purposes only." (i.e., the "dots" -- the stippling-- that are used as part of the mark on the drawing page are only to show that the mark has lighter and darker features; the "dots" are not actually part of the mark).
PRIOR REGISTRATION(S): "Applicant claims ownership of U.S. Registration Number(s) __________." (Enter registration number(s) for the same or similar marks. Do not use any commas within the number, and ensure that the entry is 7 numerals long (i.e., if necessary, add leading 0's to number, e.g., 0086417). If there are more than 3 numbers, click the box for "and others" after the third number.)
MARK COLOR: List all colors, including black and/or white, that appear in the mark.
DESCRIPTION OF THE MARK: Enter a description of the mark, and if colors appear in the mark, the location of all of the colors. E.g., if the mark consists of a red bird sitting on a green leaf, you must enter either "a bird sitting on a leaf; the bird is red, the leaf is green" or "a red bird sitting on a green leaf" (with no final punctuation or initial capitalization, and without the introductory words "The mark consists of."
TRANSLATION: "The foreign wording in the mark translates into English as ___________."
TRANSLITERATION: "The non-Latin characters in the mark transliterate into ________, and this means _________ in English."
SIGNIFICANCE OF WORDING, LETTER(S), OR NUMERAL(S): If any word(s), letter(s) or numeral(s) appearing in the mark have a significance in the relevant trade or industry or as applied to the goods/services in the application, you should specify this significance to avoid inquiry by the examining attorney. If it appears that the word(s), letter(s) or numeral(s) may have significance, particularly to someone unfamiliar with the specific usage of the word(s), letter(s) or numeral(s), but in reality the usage is only as a trademark, you should indicate that there is no significance in the relevant trade or industry or as applied to the goods/services listed in the application, no geographical significance, nor any meaning in a foreign language. E.g., "X-10" could be used as a specific model number, and this significance should be noted. If, on the other hand, this is a totally arbitrary designation, then it should be stated that there is no actual significance in the relevant trade or industry.
§2(f), based on Use: "The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement."
§2(f), based on Prior Registration(s): "The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). ____________." (Enter registration number(s) for the same or similar marks. Do not use any commas within the number. If more than one entry, separate each with a space, with no punctuation. e.g., 1247873 1324638 1462387. If there are more than 3 numbers, add "and others" after the third number).
§2(f), based on evidence: "The mark has become distinctive of the goods/services, as demonstrated by the submitted evidence." Evidence to support this claim must be submitted separately, either electronically through the reliminary amendment form, which allows for attachment of up to 50 images, or through a traditional paper submission.
§2(f) IN PART, based on Use: "_______ has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement." (Enter the appropriate word(s)).
§2(f) IN PART, based on Prior Registration(s): "______ has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). ____________." (In the first box, enter the appropriate word(s). In the second box, enter registration number(s) for the same or similar marks. Do not use any commas within the number. If more than one entry, separate each with a space, with no punctuation. e.g., 1247873 1324638 1462387. If there are more than 3 numbers, add "and others" after the third number).
§2(f), IN PART, based on evidence: "_______" has become distinctive of the goods/services, as demonstrated by the submitted evidence." Evidence to support this claim must be submitted separately, either electronically through the preliminary amendment form, which allows for attachment of up to 50 images, or through a traditional paper submission.
NAME(S), PORTRAIT(S), SIGNATURE(S) OF INDIVIDUAL(S): Click on the first circle if the name(s), portrait(s), and/or signature(s) shown in the mark does identify a particular living individual, and enter the appropriate name(s). Click on the second circle if the mark includes a name(s), portrait(s), and/or signature(s), but this does NOT identify a particular living person.
SUPPLEMENTAL REGISTER: An intent-to-use applicant may file an amendment to the Supplemental Register only after the applicant has begun using the mark and filed an amendment to allege use under §1(c) or statement of use under §1(d) that meets minimum filing requirements. In such a case, the effective filing date of the application is the date on which the applicant met the minimum filing requirements for the amendment to allege use or statement of use. 37 C.F.R. §2.75(b); TMEP §1102.03. The applicant may amend to the Supplemental Register after a refusal to register on the Principal Register, including a final refusal. If the final refusal was under §2(e)(1), §2(e)(2) or §2(e)(4) of the Trademark Act, or on grounds pertaining to other non-inherently distinctive subject matter, amendment to the Supplemental Register is procedurally an acceptable response. See 37 C.F.R. §2.75.
CONCURRENT USE: Enter the appropriate concurrent use information, e.g., specify the goods and the geographic area for which registration is sought. For specific requirements, see TMEP section 1207.04.
MISCELLANEOUS STATEMENT: Enter information here ONLY if required in the Response to Office Action and there is no other section of the form that is appropriate.
NEW CORRESPONDENCE INFORMATION
Name: Enter the name.
Firm Name:
Enter the name of the company or firm for the address.
NOTE
: Even if the firm name has not changed,
you must re-enter the original information; otherwise, the firm name will be deleted from the database.
Street Address: Enter the street address .
Internal Address: Enter the internal address; e.g. Suite 200, or Room 10G3
City: Enter the city of the address
State: Enter the U.S. state or Canadian province.
Country: Enter the country of the address by selecting either USA or Canada. The USPTO will only mail correspondence (1) within the USA (e.g., to the domestic representative address, if the applicant's address is outside the United States); and (2) to Canada, if said address is that of a Canadian agent or attorney.
Zip Code/Postal Code: Enter the U.S. zip code or Canadian postal identification code.
Phone Number: Enter the phone number.
Fax Number: Enter the phone number.
E-mail: Enter the E-mail address.
Authorize: In accordance with the notice in the Federal Register dated June 21, 1999 [Internet Usage Policy, Fed. Reg. Vol. 64, No. 118 ( June 21, 1999, pp. 33056-66)], this will grant the USPTO permission to send correspondence regarding this application to the applicant or its representative.
Trademark Rule 2.33
Under this rule, "A person who is properly authorized to sign on behalf of the applicant is:
Qualified: The appropriate person must personally sign the form by keying in the combination of characters preceded and followed by the "/" (forward slash) symbol that the signatory has adopted as his or her "signature." (e.g., /rdr/ or /127/ or /jane smith/). If the applicant is an individual, said individual must sign. If the applicant is a partnership, a general partner must sign. If the applicant is a corporation, a corporate officer must sign. If the applicant has appointed an attorney, then said attorney must sign.
Signature for declaration
Under Trademark Rule 2.33, "A person who is properly authorized to sign on behalf of the applicant is:
Represents
If a foreign attorney who is not a member in good standing of the bar of the highest court of a U.S. state (other than an authorized Canadian attorney/agent) is the only representative who has appeared on behalf of the applicant in this matter (e.g., a foreign attorney who is listed as the correspondence address in a §66 application), and the foreign attorney is not otherwise authorized to practice before the USPTO under the rules, the Office considers the applicant to be unrepresented.
Associate
This option is proper where (1) another attorney who is a member of the same firm as the appointed attorney is filing the response or (2) an in-house counsel is the appointed attorney and an associated in-house counsel is filing the response. When firms merge or otherwise alter their composition, if the originally appointed attorney remains a member of the new firm, all attorneys in the new firm are associates of the appointed attorney and are proper respondents.
The applicant has filed or is concurrently filing a signed revocation of power of attorney with the USPTO.
Example: Attorney A was originally appointed in the application. The applicant has revoked Attorney A's power and hired new counsel, Attorney B. The USPTO will recognize Attorney B as applicant's attorney if a revocation of power of attorney signed by the applicant is filed with the USPTO before Attorney B appears on behalf of the applicant.
The USPTO has granted the request of the prior representative to withdraw.
Example: Attorney A was originally appointed in the application. Attorney A requested and was granted withdrawal of power of attorney. Attorney B seeks to file a response on behalf of the applicant. The USPTO will accept the response of Attorney B and recognize Attorney B as applicant's attorney in the matter.
The applicant has filed a power of attorney appointing me in this matter.
Example: Attorney A was originally appointed in the application. The applicant has hired additional counsel, Attorney B, who is not associated with Attorney A. The USPTO will recognize Attorney B as one of applicant's attorneys if a power of attorney signed by the applicant is filed with the USPTO before Attorney B appears on behalf of the applicant.
The applicant’s appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing me as an associate attorney in this matter.
Example: Attorney A was originally appointed in the application (either singly or in conjunction with "other appointed attorneys"). Attorney A appoints Attorney B, who was not appointed initially and who is not an associate of Attorney A's firm. The USPTO will recognize Attorney B as one of applicant's attorneys if a power of attorney signed by Attorney A is filed with the USPTO before Attorney B appears on behalf of the applicant.
USPTO display of standard character mark: The
USPTO will create an image of a standard character mark based upon the following guidelines:
1) a single line can consist of no more than 26 characters, including spaces; 2) after 26
characters, the mark will automatically continue onto the next line. If it is one continuous
word string (where several words have been "telescoped" to create one long "word," e.g.,
THEVERYBESTCOOKIESINTHEWORLD, the continuation on to the next line will be left justified;
on the other hand, where there are clear breaks in the mark, e.g., THE VERY BEST COOKIES IN
THE WORLD, the next line will be centered, to distinguish between the continuation of one very
long word from the first line, versus the beginning of a new word on the next line; 3) component
words are never separated between lines; i.e., whereas the mark THEVERYBESTCOOKIESINTHEWORLD
would be displayed with the portion THEVERYBESTCOOKIESINTHEWOR and the final LD on the second
line (left justified), the mark THE VERY BEST COOKIES IN THE WORLD will have the wording THE
VERY BEST COOKIES IN on line 1, and THE WORLD on line 2 (centered)- it did not try to put part
of the word "THE" on the first line, even though the first line had not reached the 26 character
limit, because it would have meant "splitting" the component word "THE"; and 4) a "hard return"
will be respected, but it will still be within the context of the 26 character limit. E.g., if
the mark was to appear as THE VERY BEST on line 1 and COOKIES IN THE WORLD on line 2, it could
be entered with a "hard return" after BEST, and the USPTO will match the intention as reflected
in the original typed entry. However, where the mark is entered with the return after THE, because
the intention is to show only the mark on the next line, the USPTO display will not match the intention.
Instead, it will show the mark as THE VERY BEST COOKIES IN on line 1, THE by itself on line 2 (forced
there because of the 26 character limit), and WORLD by itself on line 3 (forced there because of the use
of the hard return). Therefore, if it is critical for some reason for the mark to be displayed a definite
way (vis-Ã -vis the issue of certain words appearing on specific lines), then you must use the special form
(stylized or design) option, and attach your own .jpg image of the mark; however, you could not make a
claim of standard characters if attaching a .jpg image.
Signature:
The appropriate person must sign the response by personally keying in the combination of
alpha numeric characters of the signatory's own choosing, preceded and followed by the
forward slash symbol (/); e.g., /rdr/ or /127/ or /jane smith/). This should not be
keyed in by someone else on behalf of the proper signatory. If there are joint or
multiple applicants, or if it is corporate policy to have two or more officers sign
the application for one applicant, each must sign and provide the relevant information.
Signature Method: The appropriate person (i.e., (1) a person with legal authority to bind the applicant; or (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney who has an actual or implied written or verbal power of attorney from the applicant) must personally sign the form by keying in the combination of characters preceded and followed by the forward slash symbol (/) that the signatory has adopted as his or her "signature." (E.g., /rdr/ or /127/ or /jane smith/). Someone else on behalf of the proper signatory should not key this in. If there are joint or multiple applicants, or if it is corporate policy to have two or more officers sign the application for one applicant, each must sign and provide the relevant information.
Signatory's Name: Enter the name of the person signing the response.
Signatory's Position: Enter the appropriate title or equivalent for the signatory's position, if applicable (e.g., "President," "General Partner," "duly authorized officer") or the relationship to the applicant (e.g., "Manager," "Trademark Administrator"). If an individual applicant signing on his or her own behalf, enter "Owner." If an attorney, enter "Attorney of record, [specify at least one state] bar member;" i.e., to help confirm that you are authorized to sign, you must enter the name of at least one state in which you have active bar membership. Please note that "state" includes the District of Columbia, Puerto Rico, and other federal territories and possessions.
Date Signed: Enter the date (two digits each for both the month and day, and four digits for the year) on which the form is signed. The current date is populated automatically when the box is clicked; however, if necessary, that information can be deleted and a different date entered.
TEXT FORM
(1) e-mailed to the proper signatory as a "hyperlink" (no "downloading" of a portable form is required). The signatory will sign and date the response by affixing the "electronic signature," consisting of an arbitrary alpha-numeric combination placed between two forward slash symbols (e.g., /john smith/). The signed version automatically is returned to the original preparer, who can then complete the submission process to the USPTO.
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(2) printed out and then mailed or faxed to the signatory, who will sign the form in the traditional "pen-and-ink" manner, and then mail or fax the signed form back to the preparer. The handwritten signed version should then be scanned and re-attached as a JPG/PDF file (the only image formats acceptable) to the original electronic response; the complete response can then be validated and filed electronically.
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Directly
E-Signature
Through this method, the "text form" may be e-mailed to the proper signatory as a "hyperlink" (no "downloading" of a portable form is required). The signatory will sign and date the response by affixing the "electronic signature," consisting of an arbitrary alpha-numeric combination placed between two forward slash symbols (e.g., /john smith/). The signed version automatically is returned to the original preparer, who can then complete the submission process to the USPTO.
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Handwritten ("pen-and-ink") signature
Through this method, the "text form" may be printed out and then mailed or faxed to the signatory, who will sign the form in the traditional "pen-and-ink" manner. Once the signed form has been mailed or faxed back to the preparer, this signed declaration must be scanned and re-attached as a JPG/PDF file (the only image formats acceptable) to the original electronic response; the complete response can then be validated and filed electronically.
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CLICK ON THE DESIRED ACTION
Validate Form:
This allows you to run an automated check to ensure that all mandatory fields have been completed.
You will receive an "error" message if you have not filled in one of the five (5) fields that are considered "minimum filing requirements" under the Trademark Law Treaty Implementation Act of 1998. For other fields that the USPTO believes are important, but not mandatory, you will receive a "warning" message if the field is left blank. This warning is a courtesy, if non-completion was merely an oversight. If you so choose, you may by-pass that "warning" message and validate the form (however, you cannot by-pass an "error" message). NOTE: A successful validation ONLY means that the required fields have an entry. WE HAVE MADE NO DETERMINATION AT THIS TIME AS TO WHETHER THE INFORMATION ENTERED IS CORRECT. This will only occur during the prosecution of the response.
Once data in an response is validated, you will have the options of (1) printing the response, in whole or in part; (2) going back and modifying the data in the response; (3) downloading and saving the response; and/or (4) submitting the response electronically for filing with the USPTO. If you choose to submit an response electronically for filing with the USPTO using the "Submit" button, an electronic receipt showing the information submitted will be returned
to your designated e-mail address. This receipt will confirm that the USPTO has received the response.
NOTE: Within your actual session, you should also see a screen that says "SUCCESS! We have received your response and assigned serial number _________ to your submission." If you do NOT see this screen, then your submission did NOT reach the USPTO.
Clicking on the various phrases listed in the box under "response Data" (which are available once the response data has been validated via the "Validate Form" button at the bottom of the response form) will generate (1) the response data in either a "Scannable Form" or in an easy-to-read "Input" format; (2) a drawing page; and (3) the specimen image (if applicable). Any or all of these can then be printed using the print function in your browser.
PLEASE NOTE:
Due to technical limitations within the browsers now available, and to simplify the process and prevent possible errors, where you are filing an response with 1) a mark image file (in JPG format, to show the mark in a stylized manner or a design); and/or 2) a specimen image file (in JPG/PDF format, to show the mark as actually used in commerce), neither of these file(s) will be available for viewing or printing an response that was previously downloaded and saved. Either or both of these files will need to be re-attached to the response before final submission to the USPTO.
Reset form: This button clears ALL information you may previously have entered in the response and allows you to start again with a "new" response.
"Track change" feature for modified identification of goods/services:
The third section will be headed "Final Description" and will show the changes fully integrated into the listing as would ultimately appear in the Official Gazette; i.e., absent any of the special "track change" features used in the previous section.
Sample 1: The wording "yellow pages" was deleted. Because it was part of a longer string wherein other words are retained, the entire listing is first shown as deleted with a strike-through and in brackets, and then the "remaining" wording is shown immediately thereafter. NOTE: In the future, we hope to modify the approach so that only the wording being removed will be struck through (here, e.g., only "yellow pages" rather than the entire phrase).
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Sample 4: The wording "white pages directories" has been added as a totally separate entry, so it appears in red and underlined.
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Sample 5: For the first class, the wording ", financial statement preparation" was deleted, but because that wording was in the middle of a clause containing commas, the wording on either side is also struck through and then re-presented as new wording, i.e., underlined/red. NOTE: In the future, we hope to modify the approach so that only the wording deleted will be struck through, without the need to re-present the other wording as underlined/red. For the second class, the wording "and housing" was added. Unlike Sample 4 where a new "stand alone entry" was added, here because the wording "and housing" was added to an existing listing, that listing is struck through (but only up to the point where it hits the comma "delimiter") and then re-presented. NOTE: In the future, we hope to modify the approach so that only the wording being being added will be presented in red and underlined, rather than having the retained wording struck through and then re-presented.
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