Being the first to use a trademark not registering it makes you the owner of a trademark. But
registering your trademark with the U.S. Patent and Trademark Office will make it easier for you to
enforce your legal rights as a trademark owner because it makes you the presumed owner of the
trademark. If a dispute over the trademark arises, and a lawsuit is filed, it will be up to the other
party to convince the court that you are not the owner.
In addition, once your mark is registered, every later user is presumed to know about it. Any
infringement by them will be presumed deliberate, making you eligible for triple damages (three
times the amount of money you actually lose as a result of the infringement), profits earned by the
defendant as a result of the infringement, and possibly attorney fees. If you can't sue for these
enhanced damages, you may well have trouble finding an attorney to take your case without a very
large retainer fee. And if you can't find an attorney, you may well have trouble enforcing your rights
as a trademark owner.
This article explains how to file your trademark application online. If you need more help once
your application is filed, check the resources discussed at the end of this article.
Applying for Registration: An Overview
Filling out and filing a trademark application for your domain name with the U.S. Patent and
Trademark Office is a snap. The PTO website offers two online application programs, called e-
TEAS and PrinTEAS. According to the PTO, it shouldn't take you more than 20 minutes to
complete the application.
The filing fee for registering most domain name marks is $325. It can go up if your website will be
offering a number of different types of services.
To complete the registration process, you must actually be using the domain name on a website.
However, you can start the application process on the ground that you intend to use the name in
the near future (called an intent-to-use application). If you go on to actually use it and complete the
registration process, your application date will also be considered the date of first use for the mark,
which will give you a priority claim over later users.
Although it's easy and quick to apply for trademark registration, the processing of your application
can take a year or more. The PTO is overbooked and understaffed these days. In the meantime,
your actual or intended domain name will appear in the PTO's trademark database as a pending
trademark. Anyone doing a trademark search will find your name and know that
you are claiming it as a trademark. This in itself gives you a lot of protection because it will deter
others from pursuing your name as a trademark.
What Domain Names May Be Registered As Trademarks
Not all domain names may be registered as trademarks. The PTO appears to be unwilling to
register generic domain names, such as coffee.com or drugs.com. Similarly, the PTO will look
askance at weak domain names, such as those using a surname or descriptive terms.
Even weak marks, however, can usually make it on to what's called the supplemental register. So if
the PTO rejects your original application because your mark lacks distinctiveness, you can amend
the application and ask that the mark be added to the supplemental register. The supplemental
register doesn't provide the same benefits as the main trademark register (called the Principal
Register), but it does put your mark on the map, so people will find it when they do a trademark
search. At the very least, you will prevent unknowing infringement of your domain name.
Federal rules prohibit certain types of trademarks from being registered at all. There haven't been
any court decisions on how these rules apply to domain names, but existing trademark law
suggests that the following types of domain names are not registrable:
•Domain names that contain "immoral," "deceptive" or "scandalous" matter. Immoral or scandalous,
in this context, means that the mark might cause scandal or be disgraceful, offensive, disreputable,
or excite retribution or elicit condemnation from the average consumer. These rather loose
guidelines are considered in light of the mark itself and with the goods or services to which it is
attached. There aren't any recently decided court cases on this subject, but you can imagine that
some four-letter words with a .com after them are not going to be accepted by the PTO. A
deceptive mark is one that suggests that the product or service came from a source other than its
true source for example, a domain name such as californiacheese.com, which only sells cheese
from Wisconsin. (The PTO uses the sample of your trademark, which you are required to submit
along with your application (called the specimen) to make sure that, among other things, your name
is not deceptive.
•Domain names that disparage or falsely suggest a connection with persons (living or dead),
institutions, beliefs or national symbols. For example, the domain name jackieofashions.com would
not be a registrable trademark for a website that attempts to use Jackie Onassis's image to sell
clothing totally unconnected with the former first lady or her estate.
•Domain names that consist of or contain a name identifying a particular living individual (except
with his or her written consent), or the name of a deceased president of the United States during
the life of his widow, if any, except with the written consent of the widow. For example, you may be
able to register the domain name barbrastreisand.com, but the PTO won't register it as a trademark
for a website that sells Barbra Streisand CDs, photos, dolls, plates and other memorabilia, unless
Barbra Streisand gives you written consent to use her name.
•Domain names containing marks that organizations have the exclusive right, by statute, to use.
Boy Scouts is a good example. Similarly, use of the name Smokey the Bear is reserved to the
Department of the Interior. So boyscouts.com and smokeythebear.com are off-limits as trademarks.
Different Ways to Register, Online and Off
The PTO now offers a quick and easy way to file a trademark registration application online. There
are actually two systems available on the PTO website: e-TEAS and PrinTEAS. This article takes
you through e-TEAS, which is a fully electronic system, allowing you to both fill in and file your
application to the PTO online. PrinTEAS allows you to fill in the application online, but you must
print out your filled-in application and send it to the PTO through the regular mail. If you decide to
use PrinTEAS, you can easily adapt our instructions to fill in the application, and we provide
instructions for mailing the application to the PTO.
Which program should you choose? It's faster and cheaper to use e-TEAS, because you don't have
to pay for postage. One possible barrier to using e-TEAS, however, is the "specimen" requirement.
If you are filing on the basis that you are already using the domain name (called an "actual use"
application), you will have to submit a electronic file showing your domain name in actual use. This entails capturing your image
in jpeg or gif format using a graphics program like Adobe Illustrator or Photoshop, ImageStyler,
AppleWorks, SimpleImage or Microsoft ImageReady. If you don't have this type of software, or you
are graphics-software challenged, you can always use PrinTEAS and accompany your application
with a hard copy of your chosen specimen. There's one more wrinkle. If you are using a Macintosh
computer, you will need Netscape Navigator to fully operate e-TEAS. Microsoft's Internet Explorer
for Macintosh will not allow a proper image attachment. If you are filing on an "intent to use" basis,
you won't have to worry about sending a jpeg or gif file.
TipIf you want to fill out the application form on paper, you can download it from the PTO's website.
If you prefer this method, you may want to use the instructions in The Trademark Registration Kit by
Patricia Gima and Stephen Elias (Nolo).
How to Use e-TEAS to Register Online
Using e-TEAS can be fun. It sure beats trying to file the paper form. Just follow along with our stepby-
step instructions below. If you need additional help, the PTO provides help links.
Step 1: Go to the PTO's website.
Your first step is to go to the PTO's website at uspto.gov. On the home page, click
"Trademark."
The name, entity, address, email address, fax number and phone number blanks all come with
excellent help should you need it.
Mark Information: Click the first circle above the words "Typed Format." Because you are
registering a domain name, your trademark consists solely of words and numbers and will be
displayed in what's called "typed drawing format." In the box just below the words "Enter the mark
here," enter your domain name in capital letters. You can enter the complete domain name,
including the .com, or just the unique part of your name. For instance, Nolo might choose to register
its domain name as NOLO.COM or just NOLO. Because domain names are such a new species of
trademark, there are no firm rules.
Additional Statement: This blank is optional, and you can safely skip it. About the only statement
that might be relevant is what's called the disclaimer. This means that if you are using common,
generic or descriptive words as part of your domain name, the PTO will want you to disclaim (give
up) trademark rights in those specific words, even though you have a trademark in the name as a
whole. For example, suppose you manufacture a highly successful line of perfume called Candor,
and you wish to register the domain name candorperfume.com. The PTO will likely ask you to
disclaim the word "perfume" because it is generic. The word "candor," however, is still registrable
as a trademark for a line of perfume. That's OK since those generic words can't be registered or
protected anyway. The trademark examiner will tell you somewhere in the process what words you
should disclaim, so there is no point in doing it on the application.
Basis for Filing and Goods and/or Services Information: The information required in this part of
the application will vary, depending on whether you are already using your domain name in
commerce or are filing on an "intent to use" basis.
Your specimen must be a file in jpeg or gif format. If you are registering your entire domain name, it
should be a copy of your Web page showing your domain name. Or, if you are just registering the
unique part of your domain name (without the .com), your specimen may be an advertisement of
your services. Either way, make sure your specimen shows your name exactly as you described it
in the "mark" box above.
Your specimen must show two things:
1) You are using your domain name as a trademark. A specimen that shows your website and the
domain name typed into the address line of your browser is not sufficient. Your domain name
should be a prominent part of the design of your home page. Ideally, it should be at the very top of
the page, easy to spot and easy to read, and it should dominate the quadrant of the page in which it
is located.
2) The services being offered on your website match the description of the services in your
application. If you are providing financial information as your service, for example, make sure your
specimen shows that you are doing so.
The next part of the specimen box asks you to describe what the specimen submitted consists of
for example, a digitally captured image of the home page where the goods or services are offered,
or the front page of an advertisement offering the goods or services for sale.
International Class: Enter the number of the classification you selected for the goods or services
offered on your website. (See the instructions for Question 1, above, for more on trademark
classifications.) Or, if you prefer, you can send in your application without specifying a class and let
the trademark examiner help you. If you want to register under more than one class, click "Form
Wizard." This takes you back to the question where you are asked under how many classes you
want to register. Once you enter a number other than "one" in that space and click the next button,
you will be given a different application template that accommodates multiple classes.
Listing of Goods and/or Services: Here is where you describe the goods or services to which
your domain name is attached. The good news is that you are only expected to make your best
guess. A trademark examiner who doesn't approve of your description, or is confused by it, will let
you know and work with you to come up with an appropriate description. If you don't feel like
guessing, consult the "Trademark Acceptable Identification of Goods and Services Manual," a long
list of goods and services that will help you come up with a proper description of the ones you plan
to offer on your website.
Trademark Acceptable Identification of Goods and Services Manual
Try to make your description as precise as possible. If your description is too broad, it may describe
services in more than one class. And remember, each extra class added to your application will
cost another $325. The examiner will probably contact you before adding more classes, so it won't
be a surprise. But it may delay the processing of your application.
Date of First Use of Mark Anywhere:The next two sections relating to dates of first use are for
use applicants only. ("Intent to use" applicants should skip down to "Final Instructions for All
Applicants," below.) Here you are asked to provide the date you first started using the unique part
of your domain name the part to the left of the dot. If you have been using it in an existing
business, enter the date you first used that name as part of a commercial transaction. If its first use
was as a domain name, then your date of first use is the date your website went live to sell goods
or services.
Date of First Use of the Mark in Commerce: Enter the date when you first used the unique part of
your domain name in commerce across state, territorial or international borders. If you have an
existing business, this date may be different than the date of first use that you just entered. For
example, you may have first used the name to market your local business and later gone national
or international. The first date would be your use anywhere, and the second date would be the date
the scope of your business expanded. If the unique part of your domain name is being used for the
first time as your domain name, enter the date of first use.
If you've been using a mark for years and don't remember the exact date of its first use anywhere or
across state lines, make your best estimate. Use dated documents that you have gathered over the
years, such as old advertisements or business licenses, to help jog your memory. If necessary, use
imprecise dates, such as "before March 25, 1998," "on or about January 16, 1975," "in 1966" or "in
February 1984." Use the earliest possible date that you can reasonably assert as correct.
Final Instructions for All Applicants
Amount: If you are registering in just one class, as most people do, enter $325. The fee will be
$325 more for each additional class.
Payment: Again, check the credit card box if it isn't already checked from your earlier entry.
Declaration: Read it carefully. If there are statements in the declaration that raise serious doubts or
questions in your mind, see a trademark lawyer.
Signature: The information box right above the signature section provides the surprising
information that your "signature," when you file online and don't actually sign any paper, can be
whatever you choose. You can enter any combination of letters, numbers or other characters as
your "signature." Each signature must begin and end with a forward slash (/). For example, /pat
smith/; /ps/; and /268-3421/ are all acceptable signatures. There's no trick here. Unless you've
developed some special internal system for tracking electronic signatures in your office, entering
your own name is the simplest option. Click the signature link just below the information box for the
PTO's own words on this subject.
Validate: This process checks your application and alerts you if you forgot to include any
information that is mandatory. You will then have a chance to go back and fill in the missing
information. A warning message will also appear for non-mandatory missing information, but you
are not required to go back and include that information. Once the validation is done, click
"Pay/Submit" at the bottom of the Validation screen. Since you are using a credit card for payment,
you will next be asked to enter payment information. If your transaction is successful, you will
receive a confirmation screen.
Later, you will receive an email acknowledging the submission of your application. Hold on to that
email, because it is the only proof you'll have that the PTO has your application. It is also proof of
your filing date and contains the serial number assigned to your application.
What Happens Next
If you filed a "use" application, you will likely receive some communication from the PTO within
three to six months. If there is a problem with your application, you will receive what's called an
"action letter." This is simply a letter from your examiner explaining what the problems are. Most
problems can be resolved with a phone call to the examiner.
When the examiner approves your application for publication, you will receive a Notice of
Publication in the mail. Your mark will then be published in the Official Gazette (a PTO journal) for
30 days. During that time, anyone may oppose your registration. Only 3% of all published marks
are opposed, so it is very unlikely you will run into trouble.
Once your mark has made it through the 30-day publication period, you will receive a Certificate of
Registration. The PTO has lately had a difficult time moving applications through this long process.
As a result, it may take a year or more to process your application.
If you filed on an "intent to use" basis, you will need to file an additional document with the PTO
when you start using your domain name. This document is called "Statement of Use/Amendment to
Allege Use for Intent-to-Use Application." It tells the PTO the date you started using the domain
name and completes the registration process. You must also provide a specimen at that time,
showing how you are using the domain name.
Down the road, you will need to do a few things to keep your registration in force. For example,
between five and six years after the mark is first registered, you'll need to file a document stating
that you are still using the mark. And your registration must be renewed every ten years; otherwise
it will be automatically cancelled.
TipThe Trademark Registration Kit, by Patricia Gima and Stephen Elias (Nolo), is helpful if you
encounter any questions or problems with the trademark examiner during the processing of your
trademark application. It also explains how to fill out and file the follow-up document if you file your
application on an "intent to use" basis. It also shows you how to maintain your trademark and keep
it registered through the years. |
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