U.S. Trademark & Service Mark Application Instructions for non-U.S. Applicants

01.01.2000

If mark has been used in U.S. commerce
If country of origin application filed within 6 months
If intent-to-use is sole basis for U.S.application

• State the correct legal name of the owner of the mark. If it is a corporation or other legal entity, also state the jurisdiction (country) in which it was organized and the name and title of the person who will sign the application on its behalf.
• State the address of the owner's principal place of business.
• Specify whether a design or stylized lettering is to be covered by the registration (and provide a clear copy of the mark) or whether plain block lettering covering all forms display will suffice.
• State the manner in which the mark is used or intended to be used in U.S. commerce, e.g., on tags or labels, on containers, impressed in the goods themselves, on point-of-sale displays (or for services only, in advertising or promotional materials).
• State whether or not there are any existing wholly owned subsidiaries or other licensees with the right to sell goods or services under the mark in the U.S. If so, please provide us with a photocopy of all written license agreements (with an English translation if in another language).
• State whether the U.S. application is to be based on (A) use in U.S. commerce, (B) a country of original application filed within previous 6 months (with use or intent-to-use in U.S. commerce) or a country of origin registration (with intent-to-use in U.S. commerce), or (C) solely intent-to-use in U.S. commerce.

A. If mark has been used in U.S. commerce:

• List the specific products (or services) previously shipped (or rendered) in U.S. commerce under the mark.
• State the date of the first commercial shipment into the U.S. or across state lines of products bearing the mark (or the date the services were first rendered under the mark to U.S. residents).
• If there was an earlier commercial use within a single U.S. state or in another country, state that date.
• Please provide four (4) specimen labels or photographs of the article, its container or a point-of-sale display showing the mark as actually used for the products (or for services only, specimens of the mark as used in advertising, promotion or rendering the services).

B. If country of origin application filed within 6 months or country of origin registration:

• If the U.S. application is to be based on the applicant's country of origin application filed within the previous 6 months, specify the country, number, date and the products (or services) covered by the non-U.S. application or registration. [A certified copy of the registration (with an English translation if in another language) will be required before the U.S. registration will be issued.]
• If the U.S. application is to be based on applicant's pre-existing country of origin registration, please provide a certificate of the trademark office in the applicant's country of origin showing that the mark has been registered, and that the registration is in full force and effect, and showing the goods or services covered (with an English translation of the certificate if in another language).
• If the mark has not been used on the specified products (or services) in U.S. commerce, list the specific products (or services) for which there is a bona fide intention to use the mark in U.S. commerce (within approximately 36 months) in the ordinary course of trade and not merely to reserve a right in the mark. [An entire class heading is not acceptable].

C. If intent-to-use is sole basis for U.S. application:

• If the U.S. application is not to be based either on use in U.S. commerce or on a country of origin application or registration, list the specific products (or services) for which there is a bona fide intention to use the mark in U.S. commerce (within approximately 36 months) in the ordinary course of trade and not merely to reserve a right in the mark. [An entire class heading is not acceptable].

In order for Cowan, Liebowitz & Latman to be able to prepare the application, and to advise you as to the projected cost of obtaining the U.S. registration, as well as the procedures to be followed and any anticipated problems, please send us the following:

(1) the foregoing information;

(2) a clean copy of the mark (if a design or stylized lettering is to be covered);

(3) four specimens (which may be identical) showing the mark as used in U.S. commerce (if there has been such use); and

(4) an Officially certified copy of the country of origin registration with a certified English translation (if the U.S. application is to be based on it).