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
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
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 Brand Engagement & Governance, via e-mail
to, with all physical copies to follow by mail or hand-delivery to:
Brand Engagement & Governance
Vanderbilt University
Lowes Office Tower
2100 West End Avenue, Suite 1100
Nashville, TN 37203
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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? Please state results using the Preliminary
Trademark Search document and submit along with this form (Appendix A). 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, Section1,
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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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.
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.
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For products and merchandise, please attach a high-resolution photograph of the product(s) and merchandise, in .jpg
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.
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.
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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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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
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.
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;
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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.
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.
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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
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.
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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
i) USPTO filing fees for the Declaration of Continued Use and Incontestability: $325 per Class, in each
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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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
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.
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.
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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
next to your mark if your mark identifies a product
(including any merchandise), and the symbol
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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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
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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Appendix A. Preliminary Trademark Search
Preliminary Search Title
Example: Anchor Down Preliminary Search
1. Please write a summary of your project.
a. Example: Anchor Down is used by Vanderbilt University as the Athletics war cry and
commonly used phrase to show support.
2. Please list all names, phrases, acronyms, etc. that were researched. It is important to search a
variety of names closely related, misspelled words, and different variations.
a. Example: Anchor(s) Down, Anchor’s Down, Down Anchor, Ancher Downs, Ancher Don, etc.
3. Start the Search
Step 1: Google Search Results
a. Provide links to the searches used. This is a link to what you typed in for your search.
i. Example: Anchor Down
ii. Example: Anchor’s Down
b. You will need to research beyond the first page of Google. Please provide links to
information that is both, related and unrelated, using the name of your proposed
i. Example: Unrelated Google Results
ii. Related Google Results
c. If you are researching an image, design or graphic you can drag the image into the Google
search bar. For this particular search be sure to research the Google tabs “Images” and
“All” separately.
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Step 2: Social Media Results
d. All social media platforms should be searched. Please search all name variations as you
will do in the Google search. Also, add a hashtag (#) in front of the name variations. When
searching hashtags your verbiage/phrase should be one word. Lastly, please provide
researched links under each social media platform.
i. Example: Facebook, Instagram, Twitter, Pinterest, etc.
#anchordown, #anchorsdown, #downanchor, #ancherdown, etc.
Step 3: Tennessee Secretary of State Office (TNSOS) Trademark Search
e. As you did before, you will need to search all variations. On the trademark search page, of
the TNSOS website, you will type each of the variations separately, into the “Mark Name”
f. Home page:
g. Trademark home page:
h. Trademark search database:
Step 4: United States Patent and Trademark Office (USPTO)
i. You will need to search all variations. When doing so, place verbiage/phrase in
quotations. For example: “Anchor Down”. In addition, you will search “Live” and “Dead”
registrations. On the trademark search page, of the USPTO website, you will select “Basic
Word Mark Search” and type each of the variations separately, into the “Search Term”
field. If you are searching for a design, please search “Word and/or Design Mark Search”.
j. Home page:
k. Trademark home page:
l. Trademark search database (TESS):
As a reminder, this is a preliminary search. To complete a comprehensive search, a trademark attorney
will need to be consulted.