September 28, 2010
<<name>>
<<address>>
Re:
Obtaining a Trademark
Dear Mr. Williams:
I hope this letter finds you well. On September 17, 2010 I met with you, and you informed me that you
intend to open a sports bar. You indicated that in the future you would like to register your trademark.
The Small Business Clinic accepted your case and agreed to consult you on obtaining a trademark. This
letter will provide basic information on trademarks and the process of registering a trademark.
Trademarks include any word, name, symbol, or device, or any combination, used, or intended to be
used in commerce to identify and distinguish the goods of one manufacturer or seller from goods
manufactured or sold by others, and to indicate the source of the goods. Service marks include any
word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify
and distinguish the services of one provider from services provided by others, and to indicate the source
of the services.
Trademarks which are used in interstate, national, or foreign commerce may be registered with the
United States Patent and Trademark Office (USPTO). If the trademark is only used within Florida, it can be
registered only with the Florida Department of State, Division of Corporations. I enclose a copy of the
Florida Trademark Registration Guidelines, along with an Application form. Electronic version of it can be
found here: http://form.sunbiz.org/pdf/cr2e014.pdf
To qualify the mark must be currently be “used in commerce”. Proof in the form of "specimens" (digital
photos or images) must be included with the application proving that the mark is currently being used in
commerce. If the mark is NOT yet used in commerce but will be in the future the application can be filed
only under an "intent to use" basis (which is good for only 6 months at which time the specimens must
be submitted).
Technically you do not have to register your mark with USPTO, but there are benefits to registration such
as: notice to the public of the registrant's claim of ownership of the mark, a legal presumption of
ownership nationwide, the exclusive right to use the mark on or in connection with the goods or services
set forth in the registration, and the ability to bring infringement law suit in a federal court.
Before filing your application you should first determine whether anyone is already claiming trademark
rights in a particular mark. Then you will need to draft a description of goods and/or services which must
be specific enough to identify the nature of the goods and/or services.
Another consideration is the depiction of your mark. Every application must include a clear
representation of the mark you want to register. There are two possible mark formats: (1) standard
character format; or (2) stylized or design format. The standard character format should be used to
register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font
style, size, or color, and absent any design element. Registration of a mark in the standard character
format will provide broad rights, namely use in any manner of presentation. The stylized or design
format, on the other hand, is appropriate if you wish to register a mark with a design element and/or
word(s) and/or letter(s) having a particular stylized appearance that you wish to protect.
The USPTO prefers that applicants file applications through the Trademark Electronic Application System
(“TEAS”), available at http://www.uspto.gov , or on the USPTO’s pre-printed scannable form. This form
can be obtained by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.
The application must contain:
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the name of the applicant
a name and address for correspondence
a clear drawing of the mark
a listing of the goods or services
the filing fee for at least one class of goods or services (non-refundable)
If you file an application online through TEAS, you will receive a summary of the filing by e-mail and your
application will be assigned an immediate serial number. Otherwise, if you file a paper application by
regular mail, you should receive a filing receipt for your application within 2-3 weeks. The filing receipt
will include the serial number of the application.
All future correspondence with the USPTO must include this serial number. You should receive a
response to your application from the USPTO within four (4) 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
After the USPTO determines that you have met the minimum filing requirements, an application is
forwarded to an examining attorney who reviews the application to determine whether it complies with
all applicable rules and statutes, and includes all required fees. The examining attorney can refuse or
approve the application. If approved, the mark is published in the Official Gazette, a weekly publication
of the USPTO. The USPTO will send a notice of publication to the applicant stating the date of
publication. After the mark is published any party who believes it may be damaged by registration of the
mark has thirty (30) days from the publication date to file an opposition.
If the mark is published based upon the actual use of the mark in commerce, and no party files an
opposition, the USPTO will normally register the mark and issue a registration certificate about twelve
(12) weeks after the date the mark was published. After the mark registers, the owner of the mark must
file specific maintenance documents to keep the registration live.
You can get more detailed information about trademarks and registration, including Trademark Manual
of Examining Procedure, Frequently Asked Questions and Forms here:
www.uspto.gov/trademarks/process/index.jsp
I hope this letter provided you with sufficient information on the issue of obtaining a trademark, both
federal and state registration. Should you have any questions, please, do not hesitate to contact me.
Respectfully,
Approved:
<<name>>
Legal Intern
Community Development clinic
<<name>>
Attorney at Law
Community Development Clinic