What is the difference between “intent to use” and “use in commerce”?

“Intent to use” and “use in commerce” are the two bases for filing a federal trademark application. The basic difference between these two filing bases is whether or not the owner has used the mark on all of its goods/services. If the owner has already used its mark in commerce, the owner may file under the “use in commerce” basis. If the owner has not yet used the mark in commerce, but intends to use the mark in the future, the owner must file under the “intent to use” basis. An “intent to use” application will require filing an additional form and fee once “use in commerce” is established.

What is a Trademark?

A “trademark” is a word, design, symbol, or phrase, or a combination thereof that identifies and distinguishes the source of one party’s goods over those of others. The term “trademark” is often used to refer to both trademarks and service marks.

What does it mean to “trademark” a product, business name or logo?::
When people say they would like to “trademark” their product, business name or logo, they typically mean that they seek to register their name or logo with the United States Patent and Trademark Office. Securing a federal registration provides the trademark owner with important benefits; however trademark ownership is actually determined by who uses the mark in commerce first.

What happens once your trademark application is filed with the United States Patent and Trademark Office?

Within three to six months you will likely receive some communication from the United States Patent and Trademark Office. If there is a problem with your application, you will receive an “action letter” which is a letter from your trademark application examiner explaining the problems with your application.

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”.
How long will it take for your trademark to be registered by the USPTO?::
Securing a federal trademark registration typically takes between 9 and 18 months.
Will you be required to communicate with the United States Patent and Trademark Office?::
It is likely that you will be communicating with the United States Patent and Trademark Office after the filing of your application. Few applications go through the process without any issues. If you do receive an “action letter” you must respond to this letter is a timely fashion. You can answer “action letters” yourself, however, it is advisable to seek the advice of an attorney upon receiving an action letter. If you fail to respond in a timely fashion, your application may be considered abandoned.
Will the United States Patent and Trademark Office notify me when the time comes to renew my trademark registration?::
No, but Legal Sherpa will let you know. The trademark owner is responsible for keeping track of the required renewal dates. An affidavit of use must be filed: (1) between the fifth and sixth year following registration and (2) within the year before the end of every ten-year period after the date of registration. If the trademark owner misses the deadline, its trademark registration will be cancelled. If your registration is cancelled and you would like to maintain the benefits of registration, the owner must re-register its trademark with the United States Patent and Trademark Office.
What is a trademark search?::
A trademark search is a methodical hunt for the existence of any registered or unregistered trademark or service mark that is the same or similar to your mark, is being used anywhere in the country, and is being used in a way that may lead to customer confusion.
Why should you hire Legal Sherpa to do a trademark search?::
It is important to conduct a trademark search for potentially conflicting marks since you may have to change your mark if you are not the first user of the mark and in some cases you may be ordered to pay damages if a judge concludes that your mark creates a likelihood of customer confusion.

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.

What is a service mark?

A “service mark” is the same as a trademark. However, a “service mark” is a word, design, symbol, or phrase, or a combination thereof that identifies and distinguishes the source of one party’s service over those of others rather than being the source of goods.

Are you required to register your trademark with the USPTO to obtain trademark rights?::
No. Trademark rights in a mark can be established by using the mark in commerce, without a registration. However, owning a federal trademark registration provides important benefits.

What are the benefits of trademark registration?

Obtaining a federal trademark registration amplifies the protection your mark receives, discourages others from using your mark, and provides greater legal remedies.

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.
Are there consequences for not federally registering your trademark?

The implications of not attaining federal protection over your trademark can be extremely costly and even jeopardize your business. Some consequences include:

  • 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
Who can file a trademark application?

The owner of a trademark is the only one who may file an application for registration with the United States Patent and Trademark Office. The owner may be an individual, corporation, partnership, LLC or other type of legal entity.

Must the owner of the mark be a U.S. citizen to obtain a federal registration?

No. However, you must provide your country of citizenship on your application

What happens when a trademark owner uses the same trademark for different products or services?

Each product or service is categorized within a particular international class of goods or services. If a trademark owner uses the same trademark for different products or services, the owner must either file separate applications covering each good or service independently or file a single application encompassing the multiple classes of goods or services. The USPTO requires a $325 filing fee for each class of goods or services.

What is the international schedule of classes of goods and services?

This system pertains to federal trademark applications filed on or after September 1, 1973 for the classification of goods and services. During the application process your product or service will be assigned to one or more of the specified international classes.

What international class best fits my product or service?

The following classifications are from the International Classification of Goods and Services under the Nice Agreement (9th Ed.). A more detailed version may be found at the WIPO website at www.wipo.int/classifications/nivilo.


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.

Is it possible to apply for registration of a mark under more than one international class?

Yes, an applicant can register under more than one international class. This is because the class(es) you register under is an important determinant of the scope of protection your mark receives. The more classes a mark is registered under, the greater the protection you are likely to receive.

How many classes should you include in your trademark application?

The number of classes you should include depends on your circumstances. There is a $325 federal fee for each additional class included in your application. But remember, the classes you can register under are restricted to those which include the goods and/or services that you are already offering or the goods and/or services that you are planning to offer.

Can you apply to register any combination of a logo, name, and slogan all in one application?

A trademark owner can register any combination of a logo, name, and slogan all in one application and claim rights for the cumulative use. However, if a trademark owner wants to use and protect each separately, the owner should apply for separate registrations.

What happens if a trademark owner registers its trademark and later finds out that someone else was already using the trademark but does not have a federal registration?

The trademark owner’s registration may be subject to cancellation if the other mark was used nationally in commerce. An example of national use in commerce is internet sales. Furthermore, the trademark registration will not protect the trademark owner from an infringement suit if the first user can establish a likelihood of confusion, which is the standard for trademark infringement. However, if the other user only used the trademark locally, the trademark owner will likely be entitled to use the trademark in all regions of the country where the other user had not established a presence.

What is a “drawing”?

The “drawing” is an image of the mark that the applicant/owner seeks to register. The United States Patent and Trademark Office uses the drawing to upload the mark into their search database and to print the mark in the Official Gazette and on the registration certificate. There are two types of drawings: “standard character” and “special form.” A “standard character” drawing is in the form of plain text letters (e.g. the standard character drawing of the Legal Sherpa trademark is LEGAL SHERPA). A ”special form” drawing is in the form of stylized design or logo (e.g. the Legal Sherpa trademark as displayed on our homepage).

What is a “Specimen of Use”?

The “drawing” is an image of the mark that the applicant/owner seeks to register. The United States Patent and Trademark Office uses the drawing to upload the mark into their search database and to print the mark in the Official Gazette and on the registration certificate. There are two types of drawings: “standard character” and “special form.” A “standard character” drawing is in the form of plain text letters (e.g. the standard character drawing of the Legal Sherpa trademark is LEGAL SHERPA). A ”special form” drawing is in the form of stylized design or logo (e.g. the Legal Sherpa trademark as displayed on our homepage).



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)

How do I submit my Specimen of Use?

One you purchase our trademark application preparation service you will receive detailed instruction in an e-mail on how to submit your “Specimen of Use”. If you are registering a logo and a name together, the mark displayed in the specimen must match the mark displayed on the drawing you have submitted. Furthermore, “Specimens of Use” are not filed with Intent-to-Use trademark applications. Only marks that are In-Use require a “Specimen of Use”. If you file an Intent-to-Use application, it will be necessary to file the “Specimen of Use” when filing the Allegation of Use once you have used your mark in commerce.

Can you register a domain name as a trademark?

Yes, but provided that the domain name is being used to market goods or services on the Internet. If the domain name is not used to sell goods or services, registration will be denied (e.g. website is used as a domain parking site).

How long does a trademark registration last?

A trademark registration lasts as long as the trademark is being used in commerce, timely renewed and defended against infringement.

What is a Copyright?

Under U.S. law, a copyright provides the author of an “original work of authorship” the right to control how the work is used. “Original works of authorship” include literary works, audiovisual works, computer software, graphic works, musical arrangements, and sound recordings. In short, any type of expression is eligible for copyright protection if it can be fixed in a tangible medium of expression, is original, and has at least some creativity. It is also important to know that copyright law only protects the expression itself, and not underlying facts, ideas or concepts.

How is a Copyright created and protected?

Oftentimes, an author of an “original work of authorship” mistakenly assumes that registration with the copyright office is a prerequisite to copyright protection. However, a copyright is automatically secured the moment the author creates the work. A work is created when it is “fixed in a tangible medium of expression.” Under the Copyright Act of 1976, a work is considered “fixed in a tangible medium of expression” when “its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” For example, when a song is recorded, an object is photographed, a movie filmed, a book written, a computer program written on paper or a disk, or when a work consisting of sound, images, or both is transmitted live. All of these are considered fixed in a “tangible medium of expression” and protected by copyright law.

What are the rights of a Copyright holder?

Federal copyright law grants authors exclusive rights over their copyrighted work. These rights consist of:

• 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

What is Copyright registration?

When people speak of copyrighting their work, they usually mean registering it with the U.S. Copyright Office. Copyright registration occurs when a copyright owner makes public, basic information about their copyrighted work in the U.S. Copyright Office. This basic information includes information such as who owns the copyright, the title of the work, and when and who wrote the work. To register with the U.S. Copyright Office, you must complete the appropriate application, pay an application fee, and submit copies of the copyrighted work to the Copyright Office.

Why register?

There are several reasons why you should register your creative work with the U.S. Copyright Office. Some advantages of copyright registration are:
• 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.

Who can obtain a copyright registration?

Once copyright protection is established it immediately becomes property of the person who created the work. These people are called “authors.” The following people may register a work with the U.S. Copyright Office:
• 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

What does a copyright protect?

A copyright protects “original works of authorship” that are fixed in a tangible form of expression. Copyrightable works include the following broad categories:
• 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

What are the limitations of copyright protection?

The following are categories of works that are generally not eligible for federal copyright protection:
• 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)

How long does copyright protection last?

Copyright protection for works created after 1977 usually lasts for the life of the author plus 70 years. Copyrighted works created by employees for their employers lasts for 95 years from the date of publication, or 120 years from the date of creation, whichever occurs first.
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.

Can I divide or transfer ownership of my copyright?

A copyright encompasses a bundle of exclusive rights that give the copyright owner the right to transfer ownership of rights in a copyright. The transfer of an exclusive right is not valid unless it is in writing and signed by the owner or the owner’s authorized agent. These exclusive rights include the right to:
• Reproduce the work
• Display or perform the work
• Distribute the work, and
• Prepare applications of the work (derivative works)

What is copyright infringement?

Copyright infringement is defined as any unauthorized use of a copyrighted work that violates the exclusive rights of a copyright owner. Common examples of copyright infringement are:
• 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

What is a work made for hire?

The work made for hire rule is an exception to the general rule that the person who creates the work is the author of the work. A work made for hire is defined as a work created by an employee within the scope of employment, or certain works specified in the Copyright Act created by an independent author under a written contract specifying that the project is a work made for hire. Therefore, when a work is a work made for hire, the author of the work is the employer or commissioning party.

Welcome to the Legal Sherpa School, where you will find answers to some of the most commonly asked questions regarding Trademarks, Copyrights, and the application process.  If you don’t find what you are looking for, please contact customer support through our customer support center.

LegalSherpa is a document filing service, not a law firm, and is not a substitute for an attorney or law firm. If you require legal advice, please contact a competent attorney.