Registering Trademarks

The Trademark and Licensing Administration at the University of Massachusetts, as a matter of policy, is the designated clearing house for all university-related trademarks. All university derived marks are the property of the University Of Massachusetts Board Of Trustees and will be registered as such in the US Patent and Trademark Office (USPTO).

 

Registration of University Trademarks by Departments

Our role in the registration process is solely to be the clearing house of all registration requests in order to ensure proper steps are taken for you as a client. No additional fees will be assessed for our services beyond the required filing fees as stated by the USPTO and/or outside counsel.

To begin the registration process, we will need your department head to complete the Trademark Questionnaire and attach all additional materials requested in the form. Be sure to schedule a follow up call with the Director for the initial review of your answers so our staff can better assign the appropriate USPTO classification that represents your trademark’s products or services.

The filing fees are listed below in the FEE SCHEDULE. Please note that each of these steps are completed at different periods throughout the ten-year lifespan of the TM registration and will be handled by our office at your convenience. Fees are listed and assessed on a “per mark/per class” basis. The Fee will be charge at the start of the registration process by invoice, be sure to include your department’s business office contact information for a successful journal entry transfer. Additional charges may be required throughout the life of the trademark registration; this information will be communicated to the initiator for approval and are subject to change if the USPTO fees update.

 

What is a Trademark or Service Mark?

A trademark or service mark may be a word, name, symbol, or any combination thereof that is used by its owner to identify or distinguish goods or services from those of others. Rights in trademarks and service marks arise as a result of use of the mark in commerce to identify the source or origin of goods and services. In addition, a trademark remains the property of the owner (UMass Board of Trustees) so long as the owner continues to use it properly as a trademark.

 

Trademark Registration Process

  1. Complete the UMass Trademark Questionnaire (hyperlink to questionnaire/attached)
  2. Attach the artwork of the Logo or Wordmark to Register
  3. Supply the Date of First Use in Commerce
  4. Include Exhibits of Use in Commerce
  5. Double check that all portions of UMass Trademark Questionnaire are filled in
  6. Email materials and Questionnaire to Trademarks & Licensing Director Evelin Simmons at [email protected]
  7. Call and schedule a follow-up appointment or phone call with the Director at (413) 577-8125

USPTO Filing Fee Schedule (subject to change)

  • Standard Trademark Application Fee, per class: $225.00
  • Possible Additional Fees:
    • Request for extension of time to file specimen: $125.00
    • Use in Commerce Specimen (if not initially submitted): $100.00
  • After Mark Registers Successfully/ Maintenance:
    • Affidavit Filing of Use after 5 years: $125.00 per class
    • Affidavit Filing of Use and Application Renewal after 10 years: $425.00 per class

Benefits of Federal Trademark Registration

While longer and more expensive than state registration, federal trademark registration offers more benefits and much greater protection as well as the public registration with the United States Patent and Trademark Office (USPTO).

  • Registration creates a legal presumption that you own the trademark and have the right to use it nationwide for the class of goods or services identified in your registration. Please note that University Trademarks are registered under the University Of Massachusetts Board Of Trustees.
  • Federal registration is superior to state registration. If a federally registered trademark was in use before a state registered trademark, the federal registrant can stop the state trademark owner from using the mark. If the state mark was in use first, the mark’s use may be restricted to the state where it was registered.
  • You can notify others of your trademark rights by using the ® symbol.
  • You can file a trademark infringement lawsuit in federal court.

  • You can use your USPTO trademark registration as a basis for obtaining foreign trademark registrations through WIPO, also available through UMass Trademark and Licensing Administration.

     

Benefits of State Trademark Registration

You typically cannot apply for a state trademark until you are actually using the mark in commerce and even then you are limited to protection against infringement only within state lines.

  • By using your mark in commerce, you already have some Common Law Trademark Rights. State registration creates a record of the date that you began using your mark, and that record can be important if you are accused of trademark infringement or if you want to stop someone else from using a mark too similar to yours.
  • State trademark registration only protects your trademark in the state where you register it.
  • Registering a trademark with the state is less expensive than registering with the USPTO. You will typically spend approximately $50.00-$100.00 for each successful registration.
  • A state trademark registration can usually be processed and approved faster than a federal one.
  • State trademark registration does not give you the right to use the symbol ®. You may use either TM for a trademark or SM for a service mark.
  • If you are unsure which is best, please fill out the Trademark Questionnaire and our staff can advise you on the best option to safe keep your intellectual property.


 

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