TRADEMARK GUIDE & QUESTIONNAIRE
Thank you for contacting the Trademark Licensing Office about a new name or logo for your
Program. This name or logo will function as a “trademark” or a “service-mark,” helping to
identify and distinguish your Program (or your department) and the University as the source of
the product or service that you are offering or are planning to offer. This trademark or service-
mark (“your proposed mark”) will be owned by the University.
This
Trademark Guide & Questionnaire
is designed to help you understand the trademark
clearance and registration process, and make a decision on whether you should continue or
begin using your proposed mark, and should pursue its registration with the U.S. Patent
and Trademark Office. It also addresses two other related and important points: (1) ensuring
that your proposed mark will not infringe on the rights of any third party; and (2) determining
whether your proposed mark can be protected from misuse by other parties.
Please read the entire
Questionnaire
carefully: it includes sections that must be completed by
you (Part I,
Your Proposed Mark
; Part II,
Your Program and Use of Your Proposed Mark
; and Part
V,
Acknowledgement
), and a discussion on the costs and conditions related to trademark
clearance and registration (Part III,
Costs
; and Part IV,
General Conditions
). After you complete
this
Questionnaire
and gather all requested materials (Part I, Section 1; and Part II, Section 4),
please return them to Maggie Harris, via e-mail to maggie.harris@vanderbilt.edu, with all
physical copies to follow by mail or hand-delivery to:
Maggie Harris
Director, Trademark Licensing
Vanderbilt University
Lowes Vanderbilt Plaza Hotel Office Complex
2100 West End Avenue, Suite 1100
Nashville, TN 37203
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TRADEMARK GUIDE &QUESTIONNAIRE
PART I. YOUR PROPOSED MARK
1. What is your proposed new name or logo? For a logo, please enclose a high-resolution digital
image, in .jpg format, no smaller than 250 pixels in any direction, in (a) black-and-white (not a grayscale), and (b)
in color, if applicable. Please also include a detailed description of all logo elements, both the graphics and, if
your logo is in color, the specific colors.
2. How did you choose this mark? If the mark includes any design (logo) elements, who
created them? Please describe as completely as possible.
3. Do you know of any other institution of higher education, of any healthcare provider, or
of any other party that has a similar name or logo? If yes, please describe in detail and provide all
corresponding references to any materials available online.
4. Have you completed a search online for your proposed mark? If yes, please state
results.
Please note that results of an online search can help you identify obvious direct conflicts with the use of your
proposed mark, such as use of an identical name for a program in the same field, or for a product in the same
merchandise category. However, to know whether a mark is available for registration with the U.S. Patent and
Trademark Office (“USPTO”), and whether you may continue to use the mark, or engage in its proposed use, a
trademark availability search by a trademark attorney must be completed. Please refer to Part III, Section 1,
on page 6.
5. Is the mark used or proposed to be used in conjunction with either the name
“Vanderbilt” or any other trademark of the University? If so, please attach an example of such use
or proposed use and explain the reasons for obtaining a separate protection for this mark.
6. Please include any questions that you have about Sections 1-5 above, provide any other
information about your proposed mark that you believe to be relevant, and then
complete Part II.
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TRADEMARK GUIDE &QUESTIONNAIRE
PART II. YOUR PROGRAM AND USE OF YOUR PROPOSED MARK
1. What is the principal activity of the Program completing this
Questionnaire
?
2. Is the Program’s mark related to a technology that is being handled by the Center for
Technology Transfer & Commercialization?
3. How does the Program use or expect to use the mark?
Please describe, as completely as possible, all current and currently planned uses of the mark.
Please specify (1) whether the mark is used (planned to be used) for internal purposes only, (2) whether your
Program produces or sells (or expects to produce or sell) merchandise with the mark, and (3) how long you
expect to use the mark.
Your description should also identify the
type
of any product or merchandise
e.g.
, “t-shirts,” “toys,”
“beverageware,” “software program for [
include
(1)
the purpose and
(2)
function of the program, and indicate
whether the program is downloadable or non-downloadable
]” – and the
nature
of any service, described in
plain terms
e.g.
, community events in the nature of [
describe the type or the purpose of the events
e.g.
,
outreach, education
],” “athletic competitions and exhibitions,” “scientific research in field of [
describe all
applicable fields
],” “educational services, including [
describe
(1)
the type
i.e.
, college courses, post-graduate
courses, classes, conferences, meetings, training programs, workshops – of the Program, and
(2)
the applicable
field(s)
– i.e.
, arts, business, technology
]”;
Please include as much detail as possible and as you believe to be relevant about your current and any
potential new products or services.
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TRADEMARK GUIDE &QUESTIONNAIRE
4. If the Program is already using the mark, please attach examples of this use.
Please include at least 3 to 5 examples of how you are using or expect to use the mark.
All examples of use must clearly show the mark being used to identify the Program’s product(s) or service(s).
If the mark you described in Part I includes any design elements (a logo), it must be an exact match of the mark
appearing on your example(s) of use.
For academic programs, athletic events, community outreach, and research, please include informational or
promotional materials, such as brochures, flyers or webpages.
For products and merchandise, please attach a high-resolution photograph of the product(s) and
merchandise, in .jpg format.
Please describe how your product or service will be promoted and include examples of advertisements
e.g.
, copies of brochures or print ads, pictures of billboards, or links to web pages.
Please note that all advertisements, and informational and promotional materials must be shown as
displayed and made accessible to the public
e.g.
, placed in a print publication, displayed publicly, or
posted on-line. It is not enough to send final copies of the creative materials prepared and/or approved
by the Program for future use, or circulated internally only. However, if you are completing this
Questionnaire
before the proposed mark has been used publicly, please send all materials that are already
available.
5. If your proposed mark includes both a literal element
(word(s), letter(s), number(s), punctuation
mark(s), or other typed symbols)
and a graphic element
(logo(s), design(s), color(s))
, please explain
whether you anticipate using these elements together at all times, or if they are or may
be used separately.
Please include examples of use or proposed use of all elements of the mark, as they are used or are
proposed to be used – together and separately.
If any part of the mark is in color, please explain whether the color(s) itself has any “branding” significance
and is an element that you wish to protect.
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TRADEMARK GUIDE &QUESTIONNAIRE
6. If you are already using the mark, what is the date
(day, month, year)
on which the mark was
used for the very first time, as you described in Section 3 and as shown on the examples
of use that you submitted under Section 4, above? Please include all relevant dates. If you
have not yet used your proposed mark, what is the date on which you expect to begin its
use?
Please note that registration with the USPTO requires actual use of a mark “in commerce.” The most
important element of “use in commerce” is
bona fide
use in the ordinary course of offering a product or a
service to the public. This use also may not be strictly for internal purposes, although some programs will
qualify as “use in commerce” even if they are available only to Vanderbilt students or employees. If the mark
is not in use but is expected to be used within the next approximately three to four years, an “intent-to-use”
application may be filed, but additional USPTO fees and attorney fees will be incurred, as explained in Part IV,
Paragraph 2, below.
7. If your Program is funded by a third party, are expenditures relating to trademark
registration and protection consistent with the terms of your funding obligations?
8. Who is the Program’s team member responsible for receiving invoices related to the
trademark clearance and/or registration expenditures? Please include the name, a telephone
number and an e-mail address.
9. Please include any questions that you have about Part II, provide any other information
that you believe to be relevant, and then carefully review Parts III and IV.
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TRADEMARK GUIDE &QUESTIONNAIRE
PART III. COSTS
Your Program will be responsible for all costs of trademark clearance, registration, and
registration maintenance. Please read the entire Part III carefully, and please also note the
conditions set out in Part IV.
1. Trademark Clearance
.
To know whether you may continue to use your mark, or may begin use of a
proposed mark, a trademark availability review (“trademark clearance”) must be completed. Because one of the
goals of trademark clearance is to ensure that your proposed mark will not infringe on someone else’s
rights, the Office of the General Counsel may require that a clearance review be completed even if you do
not wish to pursue trademark registration. If your proposed mark includes both a literal element
(word(s),
letter(s), number(s), punctuation mark(s), or other typed symbols)
and a design element
(logo(s), design(s),
color(s))
, separate trademark clearance must be completed for each of these elements. All trademark clearance is
completed on a five-business-day turnaround, and with reference to a specific Class(es) and specific products or
services. For a discussion of the meaning of “Class,” please refer to Part IV. The advisable format and scope of
the trademark availability review will depend on the specifics of the mark and will be established in
consultation with the Trademark Licensing Office, the University’s outside trademark attorney, and, if
applicable, the search firm supplying the clearance research. Further, in lieu of, or in addition to, trademark
clearance, it may be necessary to engage outside counsel before and/or after trademark availability review is
completed for consultation and research on the best approach for protecting your proposed mark. Please
carefully review the discussion both in the subsection (1)(a) directly below, and in Section 2, on the next
page.
a. Trademark protection consultation and research: a consultation with the University’s outside
trademark attorney may be required before a clearance search is completed, or in place of a
search: $475, up to one hour of attorney time; subsequently, at hourly rate of $475.
b. Trademark clearance for a literal element word(s), letter(s), number(s), punctuation
mark(s), or other typed symbols:
i) a preliminary trademark availability search: review of the records of the USPTO and of
the trademark registries of the fifty U.S. states, for identical and highly-similar marks, in
connection with identical products or services: $475;
ii) a comprehensive trademark availability search: review of the records of the USPTO, of
the State trademark registration records, business registration/corporate filings records of
the fifty states, unregistered business name records of the fifty states, U.S. news articles,
on-line citations, and domain name registrations, for identical, highly-similar, and
potentially confusingly-similar marks, in connection with one to two sets of related
products or services: $2,250;
iii) a brand expansion search: similar to a comprehensive trademark availability search but
encompassing a broad variety of potential products and/or services, in connection with
three or more sets of unrelated goods or services: $3,250.
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TRADEMARK GUIDE &QUESTIONNAIRE
c. Trademark clearance for a design (logo) element:
i) a preliminary review of the USPTO records: review of the records of the USPTO, for
identical and highly-similar logos, in connection with identical products and services, in
one Class: $475;
ii) an expanded review of the USPTO records: review of the records of the USPTO, for
identical, highly-similar, and potentially confusingly-similar logos, in connection with
products and services in one Class: $2,250;
iii) a screening search of on-line records: review of the digital records available on-line, for
identical and highly-similar designs: $1,650;
iii) a comprehensive search of on-line records: an extensive review of the digital records
available on-line, for identical, highly-similar, and potentially confusingly-similar marks;
requires at least ten business days: pricing and availability depends on rates set by, and
services available from, a third-party search firm and must be confirmed prior to ordering
the search.
Ownership of a trademark is conferred by its use and not by its registration. However, a preliminary search
provides some assurance that we are not likely to receive a refusal to register the mark from the USPTO
because of a directly-conflicting application(s) or registration(s). A comprehensive search provides a more
complete possible picture as to potential competing trademark rights and as to the scope of the trademark
rights that we may be able to establish and protect. An expanded brand search considers potential conflicts
across a broad range of products and services.
Trademark clearance is completed by a trademark attorney retained by the University’s Office of the General
Counsel, in consultation with the Trademark Licensing Office.
Because ownership of a trademark is conferred by its use and not by its registration, there is always a
possibility that a prior but unregistered user of a similar mark exists, and such user may not be discovered
even with a comprehensive search. Also, with all searching, records subject to review are not available in
“real-time”: there may be two weeks’ or greater delay between the actual records and the records available for
searching and viewing. The relevant records change constantly, and may change by the date of filing the
application with the USPTO. In addition, the filing priority is determined by the date of filing, and, during
examination, the USPTO does not make a determination on priority of ownership. For these reasons, if the
results of the availability review do not disclose a conflict, it is advisable to avoid delay between the date of
these results and the date of application filing.
2. Consultation about Trademark Clearance Results, and Possible Additional Trademark
Availability Review. If the results of the trademark clearance completed for your proposed mark indicate
that the mark is available, the next step may be to proceed with the preparation and filing of a trademark
application. However, if the trademark clearance review reveals a conflict or other grounds on which your
proposed mark may not be available for use or eligible for registration, additional work will likely be
required. This work may include consultation with the outside trademark attorney about possible revisions to the
mark, or about adopting a potential alternative mark, and may also include new trademark clearance review.
a. Consultation with outside counsel regarding search results: $475, up to one hour of attorney
time; subsequently, at hourly rate of $475.
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TRADEMARK GUIDE &QUESTIONNAIRE
b. Follow-up trademark clearance: if it is advisable to complete additional trademark clearance,
this work will be subject to the same costs as set out in Section 1 above.
3. Preparation and Filing of the Application. To prepare and file an application to register your proposed
mark with the USPTO, we will need the Program’s examples of use of the mark and the date(s) of its first use,
as described in Part II above. The costs during this stage of the registration process will be as follows:
a. USPTO filing fees: $225-$275; and
b. Attorney fees: $850.
The final decision on the format in which the mark should be registered will depend on the results of the
trademark clearance review and will be made by the Office of the General Counsel, in consultation with the
requesting Program, the Trademark Licensing Office and with the University’s outside trademark counsel.
After an application is filed, it will undergo several stages of examination at the USPTO. As a result, the time
for completion of a registration, from the time of the application filing and through the receipt of the
Certificate of Registration, varies. This time period may be as short as seven months in an application where
no substantive issues are raised, to as long as 18 months, or longer, in an application where either the USPTO,
or a third-party raises objections to registration.
4. Application Examination. Following the filing of the application, it will go through several stages of
examination and other procedures at the USPTO, before registration may be issued. Although the costs during
this stage of the registration process may be as low as $470, the total costs depend on the actions taken by the
USPTO, and the Program’s corresponding response.
a. Initial review by the USPTO Trademark Examining Attorney and subsequent USPTO review:
Approximately three to four months after the application is filed, it will be reviewed by an USPTO
Trademark Examining Attorney. If the Examining Attorney determines that the mark is eligible for
registration and that the application does not require any amendments, the USPTO will approve the mark
for publication. However, if the Examiner determines that the mark cannot be registered and/or that an
amendment(s) to the application must be entered, s/he will telephone and/or send correspondence to the
University’s outside trademark counsel explaining the reasons for refusals and/or stating other
requirements. The USPTO’s written communications may be in the form of a Notice of Suspension,” a
“Priority Action,” an “Office Action” or an “Examiner’s Amendment.” The USPTO may issue more than one
letter of action – of the same or a different type (raising new, or restating previous, issues and/or
requirements) in a single application. The USPTO may issue letters of action at various stages of the
registration process, including following the initial review, before or after publication, or during the final
examination immediately preceding the issuance of the Certificate of Registration.
i) Attorney fees for analyzing each USPTO telephone inquiry or written letter of
action, and preparing a blueprint for how to respond to the USPTO: $475;
ii) Submitting each Response to a USPTO inquiry or letter of action, if the Program
decides to respond following receipt and review of the blueprint for Response:
1. Response complying with USPTO technical requirements: $850; examples of
technical requirements include requests for entry of a disclaimer, submission of a
substitute specimen of use, submission of a new mark image, and revisions to the
classification or the description of the products or services, or to the description of a logo;
and/or
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TRADEMARK GUIDE &QUESTIONNAIRE
2. Response arguing against USPTO’s refusal of registration: $2,500; the USPTO
may refuse registration on “statutory grounds” – as when the USPTO finds the mark to be
similar to a mark in the USPTO records or to be merely descriptive, but the USPTO may
also refuse registration for non-compliance with technical requirements.
b. Petition to Revive. The USPTO allows six months to respond to most of its communications. In the
event that a Response cannot be timely submitted to the USPTO, the application will become abandoned.
In certain circumstances, a petition to “revive” the application may be filed with the USPTO, within 60 days
of the Notice of Abandonment; this petition must be accompanied by a substantive response to the
USPTO’s requirements:
i) USPTO filing fees for a Petition to Revive: $100; and
ii) Attorney fees for preparing and filing a Petition to Revive (apart from and in addition
to the fees related to the preparation of the Response): $275.
5. Publication. If the mark is approved for registration, it will be published in the
Official Gazette
, for a period of
30 days, to allow any third parties who believe they may be damaged by this registration, to oppose it; attorney
fees for reviewing, confirming and reporting a Notice of Publication: $235.
6. Certificate of Registration. If no opposition is filed during the publication period, the USPTO will issue a
Certificate of Registration for the mark, within approximately six to ten weeks following the expiration of the
publication period; attorney fees for reviewing, verifying and reporting a Certificate of Registration: $235.
7. Registration Maintenance. The USPTO requires certain periodic filings in order to keep a registration in
force.
a. A Declaration of Continued Use and Incontestability must be filed within the year following a
registration’s fifth anniversary. An Application for Renewal must be filed in the year following
a registration’s ninth anniversary and, subsequently, every ten years. These filings must be
accompanied by proof that the registered mark continues to be in use. If you are not able to
submit such proof, the registration will become inactive.
i) USPTO filing fees for the Declaration of Continued Use and Incontestability: $325
per Class, in each registration;
ii) USPTO filing fees for the Application for Renewal: $425, per Class, in each registration.
b. The USPTO may issue a letter(s) of action with respect to the Declaration of Continued Use and/or
the Application for Renewal, requiring the preparation and filing of a Response(s), similarly to the
letters of action and Responses during the application examination and processing (as described
in Section (4) above).
8. Please include any questions that you have about either the process or the costs for a
trademark registration and registration maintenance, and then carefully review the
conditions set out in Part IV.
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TRADEMARK GUIDE &QUESTIONNAIRE
PART IV. GENERAL CONDITIONS
The following statements address the most common issues and questions related to
trademark registration and enforcement. Other issues may be relevant in the clearance,
registration and enforcement of the proposed mark and addressing such issues may result in
additional expenses to the Program. The appropriate action will be determined in each instance
by the Office of the General Counsel, in consultation with the Program and the Trademark
Licensing Office.
1. The above USPTO filing fees and attorney fees are estimates for each “actual use” or “use-based” trademark
application in one International Class.
2. An application may be filed even before use of a mark in interstate commerce begins, if your Program has
intent to use the mark in the future. However an “intent-to-use” application requires preparation and filing
of additional documents, accompanied by filing fees, and additional attorney fees. These expenses depend
on the length of time between the date of application and the date on which the Program can demonstrate
that the mark has been used in interstate commerce.
3. Each application can include only a single mark. A single mark may consist of a name or a phrase (words,
numbers, letters, punctuation marks, and/or other typed symbols) and a logo (design), and even additional
elements, if this combination is consistently used as a single mark. If the name is at times used without the
logo or without the additional elements, then the name, the logo, and each additional element should be
registered under separate applications.
4. Each application covers a single International Class (
i.e.,
Class 16 for stickers or other paper products, Class
25 for clothing, Class 41 for athletic events or academic programs).
5. The number of “Classes” for trademark registration or trademark clearance is determined through reference
to the international classification system of all products and services, as adopted by the USPTO.
6. If an agreement with a third party is necessary for a Response to a USPTO inquiry or letter of action, if
trademark registration and/or clearance requires additional factual investigation(s) and/or action against a
third party, if a voluntary amendment(s) to a filed application is required, if there are changes to the original
filing instructions from the Program, if we file an appeal to the Trademark Trial and Appeal Board, if an
opposition or an extension of time to oppose is filed against registration of your proposed mark, if we
encounter USPTO error, or in the event of other extraordinary circumstances, all resulting necessary
actions, and the related charges, will be in addition to the fees and expenditures discussed in Part III,
subject to prior approval by the Office of the General Counsel and by the Program. Additional fees will
also result from delayed or inadequate instructions, or incomplete responses to the information and
materials requested in this
Questionnaire
, from changes to the received responses and materials, and/or
introduction of new documents or information. All additional fees will be billed on an hourly basis and
calculated at the outside counsel’s then-current billable rates.
7. Please note that all official filing fees are set by the USPTO and are subject to change by the USPTO at any
time and without notice, and that attorney hourly rates are subject to change by the University’s outside
counsel.
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TRADEMARK GUIDE &QUESTIONNAIRE
8. Please keep the Trademark Licensing Office up-to-date on any changes to the use of the mark by the
Program. We have a duty to ensure that the registration record accurately reflects actual use of the mark, at
all times. Further, the current registration process covers use of the mark only with the specific products
and/or services that are identified during the current registration process. To the extent that new use of the
mark is not encompassed in the original description of the products and/or services, a new registration may
be necessary to ensure that the mark is protected adequately.
9. In an event of misuse (infringement) of the mark by another party, legal action to enforce the University’s
rights in the mark may be necessary. Such action must be first approved by the Office of the General
Counsel and may result in additional expenses to the Program.
10. Please note that you will need to comply with all instructions by the Trademark Licensing Office and the
Office of the General Counsel on the proper format for your mark, including the applicable branding
standards and trademark rights and registration symbols. In general, you may use the symbol
TM
next to
your mark if your mark identifies a product (including any merchandise), and the symbol
SM
if your mark
identifies a service. These symbols may be used while your application with the USPTO is pending and even
if an application has not (or has not yet) been filed. You may use the symbol ® next to your mark
regardless of whether the Program offers a product or a service after we receive the Certificate of
Registration from the USPTO. If you believe that it will not be feasible to use any of these symbols with the
Program’s mark, please include a detailed explanation in the questions section below.
Please include any questions that you have about Part IV and then complete Part V.
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TRADEMARK GUIDE &QUESTIONNAIRE
PART V. ACKNOWLEDGMENT
The undersigned have reviewed the above responses, considered the estimated expenses,
and desire to communicate with the Trademark Licensing Office and a trademark attorney
retained by the Office of the General Counsel, in consultation with the Trademark Licensing
Office, about the continued or proposed use, the clearance, and/or the registration with the
U.S. Patent and Trademark Office of the trademark or service-mark described in Part I, for
____________________________________________________
(Program name)
.
Trademark Guide & Questionnaire Trademark Guide & Questionnaire
submitted by: reviewed and approved by:
_________________________________________________ __________________________________________________
Signature Signature
_________________________________________________ ___________________________________________________
Name, Title (Program Director/Department Chair) Name, Title (Vice-Chancellor or Designee)
________________________________________________ ___________________________________________________
Date Date
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