Rhode Island Department of State
Gregg M. Amore

How to Apply:

If I have to provide visual evidence that my mark is already in use, why do I also have to describe the mark on the application?

It is important to remember that it is this description, not the specimens, that legally define your mark. The mark should be described exactly as it appears on the specimens you provide. Be careful to describe your mark in such a way that a reader could clearly visualize it without having seen the specimens.

• If you are only applying for a word or phrase, you need only write the word or phrase on the application.
• If you are applying for a design and words, you need to provide a detailed description of the design elements in such a way that an individual could visualize the mark by reading the description without ever seeing a copy of the design.
• Use the available check boxes on the application to indicate whether you are seeking to register only words, only a logo, or a logo and words together. This will help our office determine if the description you provide matches your intention and the specimens you submitted.
• It is never acceptable to write “see attached” as your description. These applications will be rejected.

Examples:
You operate a business which makes and sells ocean-themed jewelry.

• For a mark that is a word only: “Lobster Claw Creations”

• For a mark that is a logo only: “A cartoon-style drawing of a red lobster claw clutching a thin paint brush dipped in navy blue paint.”

• For a mark that is a logo and words together: “The mark is the words ‘Lobster Claw Creations’ on a single line in red block letters outlined in black. To the left of the words is a cartoon-style drawing of a red lobster claw clutching a thin paint brush dipped in navy blue paint.”

The above example is for illustrative purposes only. The RI Department of State cannot offer you legal advice. If you have questions or are concerned about protecting your mark, we strongly recommend that you consult with an attorney with relevant trademark/service mark experience.

I sometimes use just the name of my business on products and other times I use the name together with a logo. How should I describe my mark?

When applying for a mark, you will need to determine whether you want to register just words, just a logo, or words and a logo together. You must check the appropriate box on the application. Your description should match the three specimens you provide. It is important to remember that it is this description, not the specimens, that legally define your mark. If you sometimes use the name of your business without the logo, you may want to submit two separate applications.

Examples:
You operate a business which makes and sells ocean-themed jewelry.

• If you only want to trademark the name “Lobster Claw Creations,” you should check the “words only” box. By entering the description “Lobster Claw Creations,” even if the words shown in your specimen are all in red block letters outlined in black, you are only registering the words “Lobster Claw Creations.” You are not specifically protecting the design of the words or the colors you are using in the design.
• If you only want to trademark the logo, you should check the “logo only” box. Your description might be, “a cartoon-style drawing of a red lobster claw clutching a thin paint brush dipped in navy blue paint,” and your specimens will show that same logo stamped clearly on the tags attached to the jewelry you make and sell. In this example, you are only registering the logo, not the words “Lobster Claw Creations.”
• If you want to trademark the words “Lobster Claw Creations” and the logo together, you should check the “words and logo” box. You might use the description, “The mark is the words ‘Lobster Claw Creations’ on a single line in red block letters outlined in black. To the left of the words is a cartoon-style drawing of a red lobster claw clutching a thin paint brush dipped in navy blue paint.” Your specimens will show the logo and words you describe on the tags attached to the jewelry you make and sell.

The above example is for illustrative purposes only. The RI Department of State cannot offer you legal advice. If you have questions or are concerned about protecting your mark, we strongly recommend that you consult with an attorney with relevant trademark/service mark experience.

Should I include the color scheme for the mark as part of the description?

It depends. If you want to protect the colors used as part of the mark, you should include those colors – and the location of their use on your design – in your description. The three specimens you submit should show those same colors as described. If you are using more than one color combination and want to protect both, you will need to apply separately for each color combination. If you are only seeking to register a design regardless of color, do not include the color in your description.

What does it mean to “disclaim” rights to certain words?

When you disclaim a word or image, you are indicating that you do not claim exclusive rights to use that word except in connection with your mark as a whole. A disclaimer does not remove the word or image from your mark; it simply allows for other individuals to use that same word in connection with their own unique mark.

Commonly disclaimed words or images are generic, such as the name of a geographic location (“Providence”), a business type designation (“Inc.”), or a well-known symbol (“$”) You cannot disclaim all elements of your mark. An example of a disclaimer might be: “No claim is made to the exclusive right to use of ___________ apart from the mark as shown.”

Example: You are applying for a trademark for your restaurant which is called The Long Pier Restaurant. You could disclaim the exclusive right to use the word “restaurant” as this is a word commonly used in the names of other dining establishments. By disclaiming the word “restaurant,” you can still use the whole trademark “The Long Pier Restaurant;” however, you could not reasonably take legal action (in terms of trademark infringement) against another dining establishment which registers a trademark under the name “Sandy Shores Restaurant” or “The Big Catch Restaurant.”

The above example is for illustrative purposes only. The RI Department of State cannot offer you legal advice. If you have questions or are concerned about protecting your mark, we strongly recommend that you consult with an attorney with relevant trademark/service mark experience.

I have two (or more) different versions of my mark. How should I apply?

You will need to file a separate application for each version of your mark. For example, if you are registering a logo and want to specify two different color schemes for that logo, you would need to submit two applications, each describing the logo and the unique color scheme used.

What is a class number?

When you apply to register your mark, you must note the type of goods or services with which your mark is connected. Each category of goods or services corresponds to a class number. The class number you select on your application will define to what extent your mark is protected. In Rhode Island, we use the Nice Classification system (NCL), an international classification system for use in registration of marks. For a full list of class numbers, click here.

My mark fits into two classes. Do I need to apply for each class separately?

Yes. You will need to file a separate application for each class of goods or services you claim in connection with your mark. For example, if you want to register your mark for use on clothing and on jewelry, you will need to submit two applications, one for each class.

I just started my business and want to use a design on goods, but the goods have not been produced yet. What kind of specimen can I submit?

Until your mark is in use (sold or otherwise provided to members of the public) in Rhode Island, you cannot register your mark with the Department of State. The specimens submitted with your application must demonstrate that your mark is currently being used in commerce in the state.

What are acceptable specimens?

Specimens should be clear photographs or copies of items (showing the mark being applied for) that are actually used by the applicant in commerce. Your three specimens should be submitted one per page on 8 ½ x 11” paper. You may not staple, tape, or glue a physical specimen to a sheet of paper.

Specimens you can submit for a trademark include the following:

• A copy of a label or tag affixed to the goods/products;
• A clear photograph of the mark affixed to the goods or containers for the goods.
• A clear photograph showing the use of the mark on the goods themselves when both the mark and the complete product are visible.
• A catalog where the entire mark, the goods and purchasing information are positioned together and clearly visible on the page.
• A clear photograph of a display on which the goods are positioned and the entire mark is prominently pictured in close proximity to the goods.
• A web page printout where the entire mark, goods/products, point-of-sale information and the applicant’s web address is clearly visible on the page. (Social media is not acceptable)

Specimens you can submit for a service mark include the following:

• Business card (with entire mark displayed).
• Letterhead (with entire mark displayed).
• Newspaper and magazine advertisements depicting the mark (the full-page ad).
• A web page printout where the mark is in use on the applicant’s web page with the entire mark and applicant’s web address visible on the page. (Social media is not acceptable)
• A clear photograph of marketing items such as a mug, ink pen, pencil, or notebook (with entire mark displayed).
• Menus, napkins, matchbooks used in restaurants, clubs and bars (with the entire mark displayed).
• Clear photograph of the entire mark displayed on a sign, billboard, marquis, store, shop, restaurant, medical facility, office building, vehicle, shirt or hat, etc.

These specimens are never acceptable:

• Camera-ready layouts or camera-ready art.
• Drawings.
• Blueprints.
• Voided checks and deposit slips.

Do all three specimens need to be different or can they be identical?

All three specimens should be identical. We will not accept three different specimens as part of one application. Your three specimens should be submitted one per page on 8 ½ x 11” paper. You may not staple, tape, or glue a physical specimen to a sheet of paper.

Why do I have to provide the dates of first use?

Because ownership of a mark is acquired through use in commerce, not through registration, it is important to enter the date you began using the mark on the relevant goods or services for which you are applying. This provides the public with notice of when you first claimed rights to the mark. The date on your application must be before the date the application form was notarized.

What can I do to change the design or words of my existing mark?

Once registered, the wording or design of a mark cannot be changed. If you wish to make changes to an existing mark, a new application will be required since this would be considered a new mark. You may also choose to cancel the current registration of your mark if it is no longer in use.