Back to Top
What is a trademark?
A trademark is any word, phrase, symbol, design, or any combination thereof used to distinguish the source of goods of one party from that of another.
Back to Top
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 any party other than the applicant. The general terms "mark" or "trademark" may be used to describe both trademarks and service marks.
Back to Top
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 strictly federal registrations. For more information go to www.uspto.gov.
Back to Top
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.
Back to Top
What is an assumed name?
An assumed name is a "dba" and is used when an entity does business under a name other than its "real" name.
Back to Top
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.
Back to Top
How are trademark rights acquired?
Trademark rights are not acquired through the registration process. Common-law rights are acquired through actual use of the mark in commerce.
Back to Top
What is the advantage of registration?
Registration does not establish rights. There are two main benefits of registration. Primarily, registration provides constructive notice throughout the state regarding your claim to ownership of the mark. This benefits both the owner seeking exclusive use of a mark, as well as 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 this matter, you should consult legal counsel.
Back to Top
Does the Secretary of State enforce trademark rights?
No. This office is responsible only for registration and maintenance of records regarding the marks registered in this state. If you have questions regarding rights, protection, or infringement, you should consult legal counsel.
Back to Top
Does the Secretary of State register patents and copyrights?
No. These are federal registrations. For more information regarding patents and copyrights, contact the US Patent and Trademark Office at www.uspto.gov or 1-800-786-9199.
Back to Top
Does registration in your office protect my mark in other states?
No. Registration of a mark in this office applies only to Kentucky. We do not cross reference marks registered in other states or marks registered at the federal level.
Back to Top
Can I register my mark federally?
For more information on federal trademark registrations contact the US Patent and Trademark Office at 222.uspto.gov or 1-800-786-9199, or by mail at Commission of Patent and Trademarks, Washington, DC, 20023
Back to Top
Can I use the symbols "tm" or "sm" once I obtain a state registration?
These symbols (representing 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 of the "R" within a circle ® can only be applied to federally registered marks.
Back to Top
How can I transfer ownership of a registered mark?
Transfer of ownership of a registered mark is called assignment. You can obtain an assignment form from this web site or by contacting the office.
Back to Top
Who can apply for a trademark?
Any entity that uses or controls use of a mark can apply. This can be an individual, corporation, partnership, or other legal entity. The application may be signed by an authorized agent of the entity listed as the applicant. We require original, notarized signatures.
Back to Top
Can the office refuse to register a mark?
Yes. The office will refuse to register matter if it does not function as a trademark. Not all words, names, symbols, or devices function as trademarks. 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 under KRS. 365.567.
Back to Top
How do I apply for registration?
The trademark/service mark application can be downloaded from this website, or you can contact the Office of the Secretary of State at (502) 564-2848 to have an application mailed. You must fill out the application completely and correctly, provide three specimens showing actual use of the mark, a drawing of all elements of the mark and provide a fee of $10 per mark per class. The application must be signed in the witness of a notary public and returned to the following address:
Secretary of State
Trademark Section
Suite 152, State Capitol
Frankfort, KY 40601
Back to Top
What does "in use in this state" really mean?
1. A mark used in association with tangible goods is considered in use in Kentucky when a) the mark is used on or affixed to the product and b) the product is sold or transported in commerce in Kentucky.
2. A mark used in association with services is considered in use in Kentucky when a) the mark is used in association with the sale or advertising of the services and b) the services are rendered in Kentucky
Back to Top
Can I check for availability of my mark before I apply?
Yes. Registered marks may be searched online or by contacting the Office of the Secretary of State at (502) 564-2848 x442.
Back to Top
Will your office check federal availability?
No, we do not cross reference federal registrations. You may do so at www.uspto.gov.
Back to Top
What are "specimens"?
A specimen is an actual example of the use of the mark in trade. It is the means by which the public would view your mark and be aware of the goods or services offered.
1. For a trademark, the 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.
2. For a service mark, the specimen can be a sample of how the services are being advertised. Advertisements, brochures, and flyers, or business cards may be acceptable specimens for 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. The specimen should be something that could be handed to any average member of the public and that person would immediately know what services are being provided by the entity using the mark.
Back to Top
What can I send as specimens if the mark has not yet been used?
The mark must be in use prior to registration.
Back to Top
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.
Back to Top
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 Kentucky in the normal course of commerce. The drawing of the mark serves to indicate only those elements of the mark claimed by the applicant. The drawing should show the mark as a whole exactly as described on the application.
Back to Top
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/services would be disclaimed.
The purpose of a disclaimer is to permit registration of a mark that is able to be registered as a whole but contains matter that would not be able 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, in so far 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 that the particular registration represents only such rights as flow from the use of the composite mark.
Back to Top
No, a single application may contain information for one mark only, with no variations.
Back to Top
How do I determine the correct classification for my mark?
The classification refers to the goods sold or the services provided. There is a brief list on page 2 of the trademark application. You may also click here to view the list. For more detailed listings, you may access the USPTO Acceptable Identification of Goods and Services Manual at www.uspto.gov. If you need assistance, you may contact the Office of the Secretary of State by calling (502) 564-2848 x442.
Back to Top
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 application for trademarks and service marks. In the case of multiple classes, the fee is $10 per class. Three specimens of use specific to each class must be submitted.
Back to Top
Can I fax my application?
No. Faxed or photocopied signatures are not acceptable. You should mail you application to the following address:
Secretary of State
Trademark Section
Suite 152, State Capitol
Frankfort, KY 40601
Back to Top
Can I deliver the application in person?
Yes. You can deliver your application to the trademark examining officer in the Capitol. However, your filling will still have to go through the review process and you will receive an answer in the mail.
Back to Top
Can I expedite the filing of my application?
No. Applications are processed in the order in which they are received in this office.
Back to Top
How long does it take to obtain a state registration?
The application is filed the date it is received. It then goes through the examination process. An average of 5 to 10 business days can be expected.
Back to Top
How long is the registration period?
Five years. The mark may be renewed no sooner than six months prior to expiration. We will mail a renewal notice to the last known address of the applicant approximately six months prior to the expiration date.
Back to Top
What is required for renewal of my registration?
The renewal application is available from this website. The fee for renewal is $5 per class, and the applicant must provide one specimen showing continued use of the mark in each class for which renewal is sought.