Trademark FAQs
	How long does the process take? Can I use my "mark" before I get final approval? Do I have to pay upfront in full before you run a search, or can I just pay for a search fee? What if my name is already taken? Will I get my money back? What if my application is denied at the USPTO - do I get my money back then? What is a comprehensive search and what does it include? Isn't this part of the regular search? I need to check the status of my order - how do I do this? What is "Intent To Use" versus "Already Used In Commerce?" What is “Text Only” versus "Stylized Design?" What are the normal reasons for refusal? Do I need to register my trademark? What are the benefits of federal trademark registration? Do I have to be a U.S. citizen to obtain a federal registration? Is a federal registration valid outside of the United States? What are common law rights? Who may file an application? How long does it take for a mark to be registered? How long does a trademark registration last? How do I contest someone else using a trademark similar to mine? Can the ownership of a trademark be sold or transferred? How long does the process take? LegalZoom files your trademark application paperwork within 7 business days. The trademark process with the United States Patent and Trademark Office (USPTO) can take up to 7 months to be completed. Can I use my "mark" before I get final approval? It is required that you use your mark in interstate commerce before you can receive final approval from the USPTO. Therefore, using the mark in this way assists you in receiving a ® mark. Do I have to pay upfront in full before you run a search, or can I just pay for a search fee? You do not have to pay for the application upfront with the LegalZoom Comprehensive Search Service. What if my name is already taken? Will I get my money back? If you receive a potential conflict email from LegalZoom, you have one of three choices: Proceed with the order. Give us one (1) more name that we will search for you, free of charge. Cancel and we will refund the federal application fee. (We cannot refund a search fee once the search has been completed.) What if my application is denied at the USPTO - do I get my money back then? There are two times during our process that you may request a refund. One is if you receive the conflict email and do not want to proceed. The second case is before you sign the e-signature file. If your application is denied by the USPTO, it is separate from LegalZoom’s service and NOT a valid qualification for a refund for the preparation and filing service LegalZoom performed for you. What is a comprehensive search and what does it include? Isn't this part of the regular search? A regular search only includes searching the federal trademark database for direct conflicts. A comprehensive search includes Federal and State Trademark Databases, Canadian and European Trademarks, Corporate names from all 50 states, Fictitious Business Name filings, Business Finder Database and Yellow Page Listings, a Cyber Common Law™ search of over 3 billion web pages and 4,500 news sources, and Internet domain names. I need to check the status of my order - how do I do this? If the order is still with Legalzoom, you can check status by signing into your LegalZoom account on our site. If we have already sent your filing to the USPTO, you will need to use the serial number you have been given to check status at the USPTO website. What is "Intent To Use" versus "Already Used In Commerce?" Intent To Use means that you are not yet using your "trademark" in interstate business. "Already Used In Commerce" means that you are using the "trademark" right now in interstate business. What is “Text Only” versus "Stylized Design?" Text Only means you want to submit your trademark application with normal standard text. In other words, nothing fancy, just the words as they are submitted on the application. "Stylized Design" is when you have an actual logo, or a specific styling of your text or name. What are the normal reasons for refusal? The grounds for refusal may be summarized as: The proposed mark consists of or is comprised of immoral, deceptive or scandalous matter. The proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute. The proposed mark consists of or is comprised so the flag or coat of arms, or other insignia of the United States, or of any state or municipality, or of any foreign nation. The proposed mark consists of or is comprised of a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow. The proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception. The proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services. The proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services. The proposed mark is primarily merely a surname. Matter that, as a whole, is functional. Do I need to register my trademark? No. However, federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. What are the benefits of federal trademark registration? Constructive notice nationwide of the trademark owner's claim Evidence of ownership of the trademark Jurisdiction of federal courts may be invoked Registration can be used as a basis for obtaining registration in foreign countries Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods. Do I have to be a U.S. citizen to obtain a federal registration? No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the Certificate of Registration. Is a federal registration valid outside of the United States? Federal registration is not valid outside of the United States. Certain countries, however, do recognize a United States registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. The laws of each country regarding registration must be consulted. What are common law rights? Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an “Intent To Use” application with the Patent and Trademark Office has the ultimate right to use and registration. However, there are many benefits of federal trademark registration. Who may file an application? Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark. How long does it take for a mark to be registered? It is difficult to predict how long it will take for an application to mature into a registration because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt about six months after filing. You should receive a response from the USPTO within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues which may arise in the examination of the application. Current status information on trademark applications and registrations may be obtained by dialing: (703) 305-8747, or by accessing Trademark Applications and Registrations Retrieval database on the Office's website at http://www.uspto.gov/go/tarr/. How long does a trademark registration last? For a trademark registration to remain valid, 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. Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. Trademarks can be renewed for an additional 10-year term. How do I contest someone else using a trademark similar to mine? There are several ways to dispute use of your trademark by a third party. Depending on the factual situation, the Trademark Office may or may not be the proper forum. You should consider contacting an attorney, preferably one specializing in trademark law. Can the ownership of a trademark be sold or transferred? Yes. A registered mark, or a mark for which an application to register has been filed, can be transferred or sold. Written assignments may be recorded in the U.S. Patent and Trademark Office for a fee. Specific inquiries should be referred to the Assignment Division at (703) 308-9723. Point of origin credit for this file is given to LegalZoom.com, Inc., a registered and bonded legal document assistant, #0104, Los Angeles County. LegalZoom.com is not a law firm and is not a substitute for the advice of an attorney.