I. Greater Protection
- Registered marks provide public notice of an owner’s claim of ownership of the mark.
- Registered marks provide the owner with the exclusive right to use the mark nationwide on, or in connection with, the goods/services described in the registration.
- U.S. registrations may be used as a basis to obtain a registration in a foreign country.
II. Discourages Others From Using Your Mark
- Registration gives the owner the right to use ® (federal registration symbol).
- Upon registration the mark will be listed in the United States Patent and Trademark Office’s online database.
- Upon registration the United States Patent and Trademark Office will decline registration to any trademarks it deems confusingly similar to your trademark.
III. Greater Legal Remedies
- Registration provides the owner the right to bring an action concerning the trademark in federal court.
- Registration grants the owner rights to recover heightened damages and fees from infringers.
- Registered trademarks provide the owner with a legal presumption of ownership
- You may be sued for infringement by a user of the same or similar mark.
- You may lose the right to expand outside your original business region.
- If you are found to infringe someone else’s trademark, you may be ordered to stop using your name, relinquish earned profits, and/or pay money damages and attorney’s fees.
- You may be forced to recreate advertising, signs, stationary, and websites.
- If you are forced to change your name, you may lose customers due to confusion
Class 1 (Chemicals): Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Class 2 (Paints): Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 3 (Cosmetics and Cleaning preparations): Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 4 (Lubricants and Fuels): Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
Class 5 (Pharmaceuticals): Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 6 (Metal Goods): Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
Class 7 (Machinery): Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
Class 8 (Hand Tools): Hand tools and implements (hand-operated); cutlery; side arms; razors.
Class 9 (Electrical and Scientific Apparatus): Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Class 10 (Medical Apparatus): Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Class 11 (Environmental control apparatus): Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 12 (Vehicles): Vehicles; apparatus for locomotion by land, air or water.
Class 13 (Firearms): Firearms; ammunition and projectiles; explosives; fireworks.
Class 14 (Jewelry): Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.
Class 15 (Musical Instruments): Musical instruments.
Class 16 (Paper Goods and Printed Matter): Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
Class 17 (Rubber Goods): Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
Class 18 (Leather Goods): Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 19 (Nonmetallic Building Materials): Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20 (Furniture and Goods Not Otherwise Classified): Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Class 21 (Housewares and Glass): Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Class 22 (Cords and Fibers): Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
Class 23 (Yarns and Threads): Yarns and threads, for textile use.
Class 24 (Fabrics): Textiles and textile goods, not included in other classes; bed and table covers.
Class 25 (Clothing): Clothing, footwear, headgear.
Class 26 (Fancy Goods): Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Class 27 (Floor Coverings): Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
Class 28 (Toys and Sporting Goods): Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Class 29 (Meats and Processed Foods): Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.
Class 30 (Staple Foods): Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Class 31 (Natural and Agricultural Products): Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
Class 32 (Light Beverages): Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 33 (Wine and Spirits): Alcoholic beverages (except beers).
Class 34 (Smokers’ Articles): Tobacco; smokers’ articles; matches.
Class 35 (Advertising and Business): Advertising; business management; business administration; office functions.
Class 36 (Insurance and Financial): Insurance; financial affairs; monetary affairs; real estate affairs.
Class 37 (Building Construction and Repair): Building construction; repair; installation services.
Class 38 (Telecommunications): Telecommunications.
Class 39 (Transportation and Storage): Transport; packaging and storage of goods; travel arrangement.
Class 40 (Treatment of Materials): Treatment of materials.
Class 41 (Education and Entertainment): Education; providing of training; entertainment; sporting and cultural activities.
Class 42 (Computer and Scientific): Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Class 43 (Hotels and Restaurants): Services for providing food and drink; temporary accommodation.
Class 44 (Medical, Beauty, and Agricultural): Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Class 45 (Personal): Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
Trademark applications based on use require a “Specimen of Use” to be included with your trademark application. A “Specimen of Use” is a sample of how you actually use your mark in commerce on your goods or in connection with your services. In addition, the “Specimen of Use” must show a very close association between the mark and the goods or services.
The following is a list of acceptable “Specimens of Use” for Products (International Classes 1 to 34):
• An image of your product displaying your mark
• An image of the packaging for your product displaying your mark
• An image of the labels, tags, or tickets used on your product
• An image of a product display, such as a banner or window display, maybe used, but with caution. The display must attract the buyer’s attention at the location where the sale is made, and the mark must be clearly connected to the goods.
• A copy of a web site page that displays the mark prominently
The following is a list of unacceptable Specimens of Use for marks on goods:
• ANY specimen showing the mark with an ® symbol. It is ILLEGAL to use the ® symbol until after your mark is registered with the United States Patent and Trademark Office. However, it is okay to use a specimen with a TM next to the mark.
• Price lists, trade directories, catalogs, and publicity releases
• Advertising material
• Internal company documents
Acceptable specimens for services include a variety of materials that cannot be used as specimens for products. The following is a list of acceptable “Specimens of Use” for Services (International Classes 35 to 45):
• A screen shot of a web site page that prominently displays the mark.
• Images of advertising and marketing materials, such as brochures, newspaper and magazine ads, billboards, direct mail ads, and menus for restaurants.
• Signs displaying the mark
• Business cards or stationery showing the mark may be used if the related services are plainly shown on them (i.e. Legal Sherpa’s business card for legal filing services include the Legal Sherpa mark and the text, “The entrepreneur’s guide to legal filings”)
• Radio ads (submit a sound file in WAV or MP3 format). However, because the United States Patent and Trademark Office requires a JPEG attachment for a specimen, we will create a JPEG file that consists of the statement, “A WAV file (or MP3 file) has been sent directly to the TEAS support team for processing.”
The following is a list of unacceptable “Specimens of Use” for marks for services:
• Specimens showing use of the mark in connection with goods and not services
• Invoices or packing slips
• News releases or articles based on news releases
• Specimens showing only use of the mark to identify a company (i.e. use on a letterhead without having text identifying the services represented by the mark)
If the examiner determines that there are no problems with your application, the examiner will approve your application for publication and you will receive a “Notice of Publication.” Your mark will then be published in the Official Gazette and anyone may oppose your registration for a period of 30 days following publication. Historically, it is very unlikely that someone will oppose your registration.
Once this 30-day period passes, no person has opposed your registration and you are filing on an actual-use basis (as opposed to an intent-to-use basis), you will receive a “Certificate of Registration”.
A Legal Sherpa Federal knock-out search will provide you with the information you need to determine whether your trademark, or a possibly confusingly similar trademark, has been filed with the United States Patent and Trademark Office.
Our comprehensive trademark search expands this search to state and common law databases.
• The right to produce (copy) the work
• The right to prepare derivative works
• The right to distribute copies of the work
• The right to perform the work, and
• The right to display the work
• Copyright registration establishes a public record of your copyright.
• Copyright registration is necessary for works of U.S. origin before the filing of an infringement suit.
• If made before or within five years of publication, your registration certificate is prima facie evidence of the validity of your copyright.
• If a copyright is registered within 3 months of publication, or before an infringement of the work occurs, once infringement is proven copyright owners may be awarded statutory damages of up to $150,000 plus attorney’s fees and court costs. Without registration, only an award of actual damages and profits will be available.
• Copyright registration gives the copyright owner the ability to record the registration with U.S. Customs. Recording with U.S. Customs protects against the importation of infringing copies.
• The author or authors of a work
• Anyone who has acquired one or more of the author or authors’ exclusive rights
• The authorized agent of any of the above
• Literary works
• Sound recordings
• Architectural works
• Pictorial, graphic and sculptural works
• Pantomimes and choreographic works
• Motion pictures and other audiovisual works
• Musical works, including any accompanying words
• Dramatic works, including any accompanying music
• Ideas and facts are not eligible for copyright protection, however, the words with which a writer expresses ideas or facts are eligible for protection.
• An author is free to copy from a protected work for purposes such as news reporting, teaching, criticism, or research as long as the value of the copyrighted work is not diminished.
• Works not fixed in a tangible form of expression are ineligible for copyright protection.
• Titles, names, short phrases, and slogans are ineligible for copyright protection (See Trademarks For More Information)
Copyright protection for works created and published during 1923-1963 lasts for 95 years from the date of publication if the copyrighted works were timely renewed. Copyrighted works published during 1964-1977 lasts for 95 years regardless of whether a renewal was filed.
Copyright protection for works created, but not published, before 1978 lasts at least until 70 years after the author dies.
• Reproduce the work
• Display or perform the work
• Distribute the work, and
• Prepare applications of the work (derivative works)
• Making unauthorized copies of an original work of authorship for commercial purposes
• Outright plagiarism of another’s prior original work of authorship
• E-mailing a copyrighted song to all your friends
• Sharing a copyrighted song via an MP3 file sharing network