What is a trademark?
A trademark is any word, phrase, symbol, design or combination thereof used to distinguish the source of goods of one party from that of another.
What is a service mark?
A service mark is the same as a trademark, except it identifies and distinguishes the source of a service rather than a product. The services must be offered or provided to a party other than the applicant. The general terms "mark" and "trademark" may be used to describe both trademarks and service marks.
What is the difference between a patent, copyright and trademark?
Patents protect inventions and improvements to inventions. Copyrights cover literary, artistic and musical works. Trademarks are brand names and/or designs that are applied to products or used in connection with services. Patents and copyrights are governed only by federal laws. For more information on patents and copyrights, visit www.uspto.gov.
What is the difference between a "trade name" and a "trademark"?
A trade name is a name that an owner uses to identify his or her business. A trademark is used to identify goods or services a business provides and to set those goods or services apart from others. Trade names are not registered at the state level in Kentucky.
What is an assumed name?
An assumed name is a "d/b/a" and is used when an entity does business under a name other than its "real" name.
Can I reserve a trademark?
No. The mark must be in use in the normal course of commerce in the Commonwealth of Kentucky prior to registration. The Secretary of State's office requires proof that the mark is in use. There is no minimum time period of use.
How are trademark rights acquired?
Trademark rights are not acquired through the registration process; common-law rights are acquired through actual use in commerce of the mark.
What is the advantage of registration?
Registration does not establish rights. There are two main benefits of registration: Primarily, registration provides conclusive notice throughout the state regarding your claim to ownership of the mark. This benefits both the owner seeking exclusive use of a mark and a trademark user who seeks to ensure that his or her mark does not conflict with a mark already in use. Secondly, registration may provide the trademark owner with procedural advantages should it become necessary to judicially enforce trademark rights. For more information regarding enforcement of trademark rights, you should consult legal counsel.
Does the Secretary of State enforce trademark rights?
No. The Secretary of State's office is responsible only for registration and maintenance of records regarding marks registered in this state. If you have questions regarding rights, protection or infringement, you should consult legal counsel.
Does the Secretary of State register patents and copyrights?
No. Patents and copyrights are registered federally. For more information regarding patents and copyrights, please contact the United States Patent and Trademark Office, www.uspto.gov or (800) 786-9199.
Does registration with the Kentucky Secretary of State protect my mark in other states?
No. Registration of a mark in this office applies only to Kentucky. This office does not cross-reference marks registered in other states or marks registered at the federal level.
Can I register my mark federally?
For information regarding federal trademark registrations, contact the United States Patent and Trademark Office at www.uspto.gov or (800) 786-9199, or by mail at Commission of Patents and Trademarks, Washington, DC, 20023.
Can I use the symbols "tm" or "sm" once I obtain a state registration?
These symbols, which represent "trademark" and "service mark," respectively, are not used to indicate state registrations; use of these symbols indicates a claim to rights to the mark associated with the use of the symbol. There is no symbol that denotes a state registration. The symbol (R) can be applied only to federally registered marks.
How can I transfer ownership of a registered mark?
Transfer of ownership of a registered mark is called assignment. You can download an assignment form or contact this office at (502) 564-3490 to have one mailed to you.
Who can apply for a trademark?
Any entity (individual, corporation, partnership or other legal entity) can apply to register a trademark. The application may be signed by an authorized agent of the entity listed as the applicant. Original, notarized signatures must be submitted to this office.
Can the Secretary of State's office refuse to register a mark?
Yes. Not all words, names, symbols or devices function as trademarks, and this office will refuse to register matter if it does not. For example, matter that is merely the generic name of the goods on which it is used or is merely descriptive of services in connection with which it is used cannot be registered. Other common grounds for refusal are set forth in KRS 365.567.
How do I apply for registration?
You can download a Trademark/Service Mark application, or contact this office at (502) 564-3490 to request one by mail. You must completely and correctly fill out the application, provide three specimens showing actual use of the mark, submit a drawing of all elements of the mark and pay a fee of $10.00 per mark per class. The application must be signed in the witness of a notary public and returned to:
Secretary of State
700 Capital Ave., Ste. 152
Frankfort, KY 40601
What does "in use in this state" mean?
A mark used in association with tangible goods is considered "in use in Kentucky" when the mark is used on or affixed to the product and the product is sold or transported in commerce in Kentucky. A mark used in association with services is considered "in use in Kentucky" when the mark is used in association with the sale or advertising of the services and the services are rendered in Kentucky.
Can I check for availability of my mark before I apply?
Yes. You can search registered marks online or contact this office at (502) 564-3490.
Will the Secretary of State's office check federal availability of a mark?
No. This office does not cross reference federal registrations. You may check federal availability of a mark at www.uspto.gov.
What are "specimens"?
A specimen is an actual example of the use in trade of the mark; it is the means by which the public would view your mark and be aware of the goods or services offered.
For a trademark, a specimen can be a label on the product sold or a photograph of the mark on the product itself, if the specimen is too big or bulky to be sent in the mail.
For a service mark, the specimen can be a sample of how the services are being advertised. Advertisements, brochures and flyers may be acceptable specimens of a service mark; business cards and letterhead may be acceptable if they show the mark and refer to the services. The specimen for a service mark must demonstrate the nature of the services rendered. It should be something that, if handed to an average member of the public, would immediately notify the person what services are being provided by the entity using the mark.
What can I send as a specimen if the mark has not yet been used?
The mark must be in use prior to registration.
Do I have to send three separate specimens?
No. Three samples of the same specimen are acceptable. At least one original should be submitted, but photocopies can be provided to make a total of three.
What is the difference between a specimen of use and a drawing of the mark?
A specimen of use must show the mark on or in association with the sale or advertising of the goods or services. The specimen of use serves as evidence that the mark is in use in the normal course of commerce in Kentucky. The drawing of the mark serves only to indicate those elements of the mark claimed by the applicant. The drawing should show the mark as a whole exactly as described on the application.
What is a disclaimer?
A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of a mark. Generally, elements that are descriptive or generic when used on or in connection with the goods or services would be disclaimed.
The purpose of a disclaimer is to permit registration of a mark that is eligible to be registered as a whole but contains matter that would not be eligible to be registered standing alone. As used in trademark registrations, a disclaimer of a descriptive component of a composite mark amounts to a statement that, insofar as the particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite, and the particular registration represents only such rights as flow from use of the composite mark.
Can I apply to register multiple marks on one application?
No. A single application may be used to register only one mark, with no variations.
How do I determine the correct classification for my mark?
The classification refers to the goods sold or services provided. There is a brief list on page 2 of the Trademark/Service Mark Application; for more detailed listings, please consult the United States Patent and Trademark Office's Acceptable Identification of Goods and Services Manual. If you need further assistance, please contact this office at (502) 564-3490.
Can I apply for more than one classification?
Yes. A mark is sometimes eligible for registration in multiple classes. One application can be used for multiple classes as long as all of the classes fall under either trademark or service mark. You must use separate applications for trademarks and service marks. In the case of multiple classes, the filing fee is $10.00 per class, and three specimens of use specific to each class must be submitted.
Can I fax my application?
No. Faxed or photocopied signatures are not acceptable. You should mail or hand deliver your application to:
Secretary of State
700 Capital Ave., Ste. 152
Frankfort, KY 40601
If you choose to hand deliver your application to the trademark examining officer, your filing will still have to go through the review process, and you will receive an answer by mail.
Can I expedite the processing of my application?
No. Applications are processed in the order in which they are received in this office.
How long does it take to obtain a state registration?
Applications are filed on the date they are received; the examination process takes an average of five to 10 business days.
How long is the registration period?
Registrations are valid for five years an can be renewed no sooner than six months prior to expiration. This office will mail a renewal notice to the last known address of the applicant approximately six months prior to the expiration date.
What is required for renewal of a registration?
To renew you registration, submit a renewal application along with the renewal fee of $5.00 per class and one specimen showing continued use of the mark in each class for which renewal is sought.