FaQ’s

The Nice Classification (NCL) is a system for classifying goods and services to register trademarks. You can access the complete Nice Classification via the Internet on the WIPO site. In the United States, the latest version of the Nice Classification is used within the trademark ID manual at the USPTO.

The international classification of goods and services is the controlling classification system used by the United States since September 1, 1973. The international classification applies to all trademark applications filed on or after that date. U.S. Classes A, B, and 200, which are classes from the old U.S. classification system not included within the Nice Classification, are still used in the United States to classify certification marks for goods (U.S. Class A), certification marks for services (U.S. Class B), and collective membership marks (U.S. Class 200). These classes are not included in the international classes under the Nice Agreement.

Trademarks require registration in each country where protection is sought. The US is a party to Madrid; therefore, international applications can designate the United States.

Trademarks are filed in English at the USPTO. Any mark that contains non-English words requires translation to be registered.

There are several possible ways to overcome a refusal, depending on the type of refusal you have received. Refer to the USA trademark registration guide for the criteria used by the USPTO when examining trademarks and how to overcome rejections.

A trademark search helps you find whether anyone else has prior rights to your proposed trademark. Searches are usually cheaper and quicker than filings and help you determine if your application will have a chance for success. This step is not required, but highly recommended before any trademark application is filed in the USA at the USPTO.

If the trademark is similar and in the same goods/services, then the direct answer is most likely no. You will not be able to register it. Otherwise, the answer is a maybe, as the response depends on many factors. To get the most benefit out of your trademark, it’s crucial to ensure that the mark is not already in use by any other brand, which may dilute your investments and efforts. We advise you to protect your trademark only when you are confident that the trademark is unique and created by you. In the United States, it is best to conduct a detailed trademark search and get an opinion on the registrability of the trademark before you use or register the trademark.

Unless you plan on using your logo as it is in all your uses and for the indefinite future, you should register the logo and words separately. A name and logo combined are called a design plus word trademark (combined). Trademarks filed as design + word must use that combination with all its goods/services. It’s customary that you file your name and logo separately so you can use the word phrase in any style you choose without losing your rights. If you have a tight budget, start with a combination, but as soon as you have more budget, protect each part separately. For example, McDonald’s owns a trademark on the name “McDonald’s” and the logo of the golden arches, allowing them to use them in any combination.

<p>There are no limitations on the registration of names and family names as trademarks; however, a disclaimer will have to be made on whether: </p><ul><li>The name relates to any living person and confirmation that you have consent</li><li>The name does not relate to any living individual.</li></ul><p>Registration of names as trademarks is very tricky as you will have to seek fame in order to maintain the registration and ensure you can defend against others using the same name or family name.</p>

<p>In general, to register a trademark in the USA; </p><ul><li>It should be unique, not descriptive. </li><li>It should not be a technical word used in commerce It should not contain public symbols (such as flags) </li><li>It should not be a name or title of third parties without their consent. </li><li>It should not be a direct translation of other well-known trademarks, which are also not allowed.</li></ul>

If two people use the same trademark and neither is registered, each party would have common law rights that are limited to their geographical reach. However, if the geographical reach, as well as the field of goods or services, overlap other the party who can establish an earlier date of use of the trademark would generally have “prior rights.” It is important to seek legal advice for your specific issues.

Submitting a federal trademark at the USPTO ensures coverage in 52 states. On the other hand, state-specific trademark applications do NOT cover trademark rights nationwide, so if you are using your trademark online in multiple states, then filing a federal trademark at the USPTO would provide greater trademark protection.

No, there is no application for the US and Canada. A trademark should be filed in each country separately.

Yes, a slogan can be filed and treated as a trademark.