This manual lists numerous examples of identifications of goods and services that are acceptable to the USPTO for inclusion in trademark applications and registrations. The manual is not exhaustive and is meant as a guide to aid applicants and their attorneys in formulating acceptable identifications of goods and/or services.

use Acceptable Identification of Goods and Services Manual online

set out the provisions and requirements in relation to the filing and processing of the international (patent) application under the PCT and are established by the Director General of WIPO

a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With the AAU, the owner must submit one specimen showing use of the mark in commerce for each class of goods/services included in the application, and the required fee.

AAUs must be filed before the date the examining attorney approves the mark for publication in the Official Gazette.

You should check the status of the application before filing the AAU to make sure that is timely. An AAU filed after the mark is approved for publication but before a notice of allowance has been issued (during the "blackout period") is untimely and cannot be accepted.

see file an AAU online

An applicant who wants to contest a final refusal from an examining attorney may file an appeal to the Trademark Trial and Appeal Board. An appeal is taken by filing a Notice of Appeal and paying the appeal fee within six months of the mailing date of the action from which the appeal is taken. 15 U.S.C. Section 1070; 37 C.F.R. Section 2.142(a).

see Trademark Trial and Appeal Board Manual of Procedure (TBMP) Section 1202.03.

a document by which a person requests a federal trademark registration. To receive a filing date, an application must include (1) the applicant's name, (2) a name and address for correspondence, (3) a clear drawing of the mark sought to be registered, (4) a list of the goods or services, and (5) the application filing fee.

see File a Trademark Application

a transfer of ownership of a patent application or patent from one entity to another. Record assignments with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.

read more about Patent Assignments

a transfer of ownership of a trademark application or trademark registration from one entity to another. The USPTO recommends recording assignments with the USPTO Assignment Services Division to maintain clear title to pending trademark applications and registrations. For information on how to record an assignment, see Recordation Form Cover Sheet.

see Assign a Trademark Application or Registration

a type of form designation such as Form CD435, meaning a Commerce Department form 

g

any word, name, symbol, device, or any combination, used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

see File Certification Mark

Combined Federal Campaign

an annual government-wide campaign for charitable contributions from Federal employees

Chapter I

Continuation-in-Part

an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional application -- see MPEP 201.08 for more

patents are classified (organized) in the U.S. by a system using a 3 digit class and a subclass to describe every similar grouping of patent art. A single invention may be described by multiple classification codes.

see Manual of Patent Classification

Goods and services are classified by an international system, according to international treaties to which the United States is a signatory. All goods and services included in trademark applications are classified by the Office according to this system.

For a listing of the classes, please see the Trademark Acceptable Identification of Goods and Services Manual.

a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark that indicates membership in a union, an association, or other organization.

see File a Collective Mark

Continued Prosecution Application

a continuation or divisional application filed under 37 CFR 1.53(d) -- see MPEP 201.06(d) for more

Demand

Form PCT/IPEA/401, filed with an International Preliminary Examining Authority, demanding that an international application shall be the subject of an international preliminary examination.

an account that is established in the U.S. Patent and Trademark Office (USPTO), upon payment of a fee for establishing such an account, for the convenience in paying any fees due, in ordering services offered by the USPTO, copies of records, etc. --see MPEP 509.01 for more or view deposit accounts

A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. If a mark is merely descriptive or deceptively misdescriptive of the goods or services to which it relates, the mark will be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).

Examples of descriptive marks include: MEDICAL GUIDE for website services featuring medical guides, DENIM for jeans, and SPICY SAUCE for salsa.

see TMEP §1209 for more info

lists the numerical codes for searching designs in the USPTO’s trademark database (TESS).

see Design Code Search Manual

design patent

may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture -- see also patent

DO

Designated Office

the national Office or intergovernmental organization of or acting for the Contracting State designated by the applicant under Chapter I of the Patent Cooperation Treaty.

Patent drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete but are only required if drawings are necessary for the understanding of the subject matter sought to be patented.

see Drawing Requirements for more info

Electronic Business Center - includes links to Patents EBC and Trademarks EBC

a web page containing hyperlinks to all online systems for conducting electronic commerce with the USPTO

Electronic Filing System (for patent applications)

supports secure electronic filing of Patent application documents via the Internet

electronic Trademark Examination Application System - electronic trademark filing system. It allows the public to complete various trademark filings and transactions on-line. For example, eTEAS allows you to complete trademark applications, preliminary amendments, amendments to allege use/statements of use, responses to Office actions, and post registration filings online, and then submit them directly over the Internet, paying by credit card, electronic funds transfer or an existing USPTO deposit account.

see eTEAS

patent correspondence delivered to the USPTO via the "Express Mail Post Office to Addressee" service of the United States Postal Service (USPS) which is considered filed in the Office on the date of deposit with the USPS, shown by the "date-in" on the "Express Mail" mailing label.

express mail mailing label

File Wrapper Continuing application

a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.62*, which uses the specification, drawings and oath or declaration from a prior nonprovisional application, which is complete as defined by 37 CFR 1.51(a)(1) -- see MPEP 201.06(b) for more
* NOTE: 37 CFR 1.62 was deleted effective December 1, 1997. See 1203 OG 63, October 21, 1997.

terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. Examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.

see TMEP for more info

ITU - refers to the intent-to-use filing basis provided for in Trademark Act Section 1(b), 15 U.S.C. 1051(b). Applicants who have not yet used (in commerce that can be regulated by Congress) the mark they wish to register may file a trademark application under this filing basis. An "intent to use" application must include a sworn statement (usually in the form of a declaration) that applicants have a bona fide intention to use the mark in commerce. A properly worded declaration is included in the trademark application form for registration. The applicant or a person authorized to sign on behalf of the applicant must sign the declaration.

Applicants who file based on "intent to use" must begin actual use of the mark in commerce and file an Allegation of Use before the USPTO will register the mark. See definitions of "Amendment to Allege Use" and "Statement of Use". There is an additional filing fee for the Allegation of Use.

The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

The "Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks" (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application.”

-- see Exam Guide 2-03 for more

The degree of descriptiveness can be determined only by considering it in relation to the specific goods or services. At one extreme are marks that are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks.

Notices of allowance are only issued for applications that have been filed based on "intent to use". The notice of allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a statement of use. After receiving the Notice of Allowance, the applicant must file a statement of use or a request for an extension of time to file a statement of use within 6 months from the issue date of the notice. If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use, the application will be abandoned.

a written statement from the USPTO notifying an applicant that its mark will be published in the Official Gazette. If the examining attorney assigned to an application raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication. The notice of publication provides the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use or on a foreign registration under §44, or a Notice of Allowance will issue for intent-to-use applications.

a proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to prevent the issuance of a registration of a mark. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal.

Any person who believes that he or she will be damaged by the registration of a mark may file an opposition, but the opposition may only be filed in response to the publication of the mark in the Official Gazette.

Patent Application Information Retrieval -- see Patent EBC for more

provides secure access for customers who want to view current patent application status electronically via the Internet

a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

-- see also design patent, nonprovisional patent application, plant patent, provisional patent application, reexamination proceedings, reissue application, utility patent

Patent Cooperation Treaty (more)

provides a mechanism by which an applicant can file a single application that, when certain requirements have been fulfilled, is equivalent to a regular national filing in each designated Contracting State. There are currently over 112 PCT Contracting States. 

1. Constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. Section 1072);
2. A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration (15 U.S.C. Sections 1057(b) and 1115(a);
3. A date of constructive use of the mark as of the filing date of the application (15 U.S.C. Section 1057(c); TMEP Section 201.02);
4. The ability to bring an action concerning the mark in federal court (15 U.S.C. Section 1121);
5. The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods (15 U.S.C. Section 1124);
6. The registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become “incontestable,” subject to certain statutory defenses (15 U.S.C. Sections 1065 and 1115(b)); and
7. The use of the U.S. registration as a basis to obtain registration in foreign countries.

a former feature of the USPTO's electronic filing system that allowed applicants to complete a trademark application on-line, and then print it out for mailing to the USPTO.

PrinTEAS was removed from production on 2 November 2003.

To file a trademark online see eTEAS

The applicant must respond to a priority action within 6 months from the date the priority action is mailed. If the applicant fails to do so, the application will be abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an Office action.

The benefit of a priority action is that, if the applicant responds within 2 months, the application will be given priority in processing the response.

Patent and Trademark Office, former designation for USPTO

also a type of form designation for forms generated by the USPTO (as in PTO-892)

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette.

The USPTO will send a Notice of Publication to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or on a foreign registration under §44, or a Notice of Allowance will issue for intent-to-use applications.

Request for Continued Examination

a request filed in an application in which prosecution is closed (e.g., the application is under final rejection or a notice of allowance) that is filed to reopen prosecution and continue examination of the application; requires the filing of a submission and payment of a fee -- see 37 CFR 1.114

USPTO form that trademark owners use to record trademark assignments (changes in ownership of marks for applications and registrations) and a trademark owner’s change of entity name. The form is PTO-TM-1594. It may be submitted in hard copy to the following address:

Mail Stop Assignment Recordation Services
Director of the US Patent and Trademark Office
PO Box 1450
Alexandria, VA 22313-1450

locate the current fee schedule at How to Pay Fees to determine the current fee for assignment recordation (Trademark Services Fee Code 8521)

Federal registration of trademarks involves the establishment of rights in a mark based on legitimate use of the mark. Although federal registration of trademarks is not required to use a trademark, owning a federal trademark 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, the exclusive right to use the mark on or in connection with the goods or services set forth in the registration, the ability to bring an action concerning the mark in federal court, the use of the U.S. registration as a basis to obtain registration in foreign countries, and the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

see International Intellectual Property for links to enforcement assistance

If an application is abandoned due to a USPTO Office error, an applicant may file a request to reinstate the application, instead of a petition to revive. There is no fee for a request for reinstatement. You must file a request for reinstatement within two months of the issue date of the notice of abandonment. You must include a true copy of the document that was timely submitted, and a copy of an acceptable form of proof of receipt in the USPTO. For a list of evidence that may be considered in support of a request for reinstatement see TMEP §1712.01.

After a trademark application is filed, the USPTO will conduct a search of USPTO records for conflicting marks as part of the official examination process. The official search is not done for the applicant but rather to determine whether the mark applied for can be registered. The USPTO advises applicants and/or their representatives to search the records before filing the application. A search may be conducted through TESS, or by visiting the Trademark Public Search Library, between 8:00 a.m. and 5:30 p.m. at 2900 Crystal Drive, 2nd Floor, Arlington, Virginia 22202. Use of the Public Search Library is free to the public. Also, certain information may be searched at a Patent and Trademark Depository Library. These libraries have CD-ROMS containing the database of registered and pending marks, and Internet access to the Trademark Electronic Search System (TESS). (However, the CD-ROMS do not contain images of the design marks.)

locate your nearest PTDL

a sworn statement, filed by the owner of a registration that the mark is in use in commerce. Section 8 of the Trademark Act, 15 U.S.C. §1058. It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 1) At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed the benefits of the Act of 1946),
AND
2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration.

see File a §8 Declaration

a sworn statement, filed by the owner of a registration, that the mark is not in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Section 8 of the Trademark Act, 15 U.S.C. 1058. It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 1) At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed the benefits of the Act of 1946), AND 2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration.

Once the USPTO accepts the Section 8 Declaration of Excusable Nonuse, the owner of the registration is not required to file another Section 8 Declaration until the next statutory filing period.

see File a §8 Declaration

see File a §8 & §9 Combined Declaration

a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming “incontestable” rights in the mark for the goods/services specified. An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). 15 U.S.C. §1065.

Filing a Section 15 Declaration is optional. However, there are certain rules governing when one may be filed. A §15 Affidavit may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). The §15 Affidavit must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15.

see File a §15 Declaration

An applicant may submit a standard character drawing if (1) All letters and words in the mark are depicted in Latin characters; (2) all numerals in the mark are depicted in Roman or Arabic numerals; (3) the mark includes only common punctuation or diacritical marks; and (4) the mark does not include a design element.

-- see Exam Guide 1-03 Section IA for more

SOU - a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With a statement of use, the owner must submit: (1) a filing fee of $100 per class of goods/services; and (2) one specimen showing use of the mark in commerce for each class of goods/services.

Statements of use must be filed within 6 months from the date the USPTO issues a notice of allowance. Failure to submit the statement of use in a timely manner results in abandonment of the application.

The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed.

see File an SOU

A request by the holder of an international trademark registration for an extension of protection of the registration to additional Contracting Parties.

-- see Exam Guide 2-03 Section IIH for more

There are several substantive reasons for refusing registration of a mark. These include: likelihood of confusion; primarily merely descriptive or deceptively misdescriptive of the goods/services; primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services; primarily merely a surname; or mere ornamentation. This is not a complete list of all possible grounds of refusal.

see TMEP Chapter 1200 for a complete discussion of the grounds for refusal of registration of a mark.

Trademark Application and Registration Retrieval system -- see TARR

USPTO’s online database for monitoring federal trademark applications and registrations. Using TARR, applicants, trademark owners and the public may check the status of pending trademark applications and registrations. To access information about a specific mark, users must provide the associated serial number or registration number of the record they seek.

Trademark Electronic Application System -- see TEAS

USPTO's electronic filing system. It may be used to file a variety of documents with the USPTO, including new trademark applications, amendments to allege use, statements of use, responses to Office actions, and changes of address, just to name a few.

Trademark Electronic Search System -- see TESS

TMEP - a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. It contains guidelines for USPTO examining attorneys, trademark applicants and owners, and attorneys and representatives for trademark applicants and owners. The TMEP contains information about the trademark examination process, and outlines the procedures which examining attorneys are required or authorized to follow in the examination of trademark applications.

use the TMEP online

Trademark Trial and Appeal Board -- an administrative tribunal at the USPTO. It has jurisdiction over appeals from decisions of the Trademark Office, as well as opposition proceedings and cancellation proceedings

see BISX for decisions of the TTAB

To base the application on the applicant’s use of the mark in commerce, the applicant must submit the following four items: (1) A statement that the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date; (2) The date of the applicant’s first use of the mark anywhere on or in connection with the goods or services; (3) The date of the applicant’s first use of the mark in commerce as a trademark or service mark; and (4) One specimen for each class showing how the applicant actually uses the mark in commerce. If the specimen is not filed with the initial application, applicant must submit a statement that the specimen was in use in commerce at least as early as the application filing date. These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. If you have already started using the mark in commerce, you may file based on that use.

A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.

World Intellectual Property Organization

an intergovernmental organization of the United Nations system. WIPO is responsible for the promotion of the protection of intellectual property throughout the world and for the administration of various multilateral treaties dealing with the legal and administrative aspects of intellectual property. - see MORE INFO about International Intellectual Property protection