FILING A TRADEMARK APPLICATION

You may file an application for a trademark registration with the United States Patent and Trademark Office (“USPTO”) if you are not a lawyer. However, the process may be a little daunting because of the learning curve.

One may file a trademark application based on an “intent to use” the mark in commerce (for the sale of goods and/or services), or after the mark has already been used in commerce. For a federal trademark registration, the mark must also be used in commerce across state lines (known as interstate commerce). You will be asked to designate the date the mark was first used in commerce, and the date the mark was first used in interstate commerce. It is possible that the date will be the same for both activities, but it need not be. You will not be asked for evidence of your use of the mark in commerce, but it would be wise to have such evidence in a file in case the trademark application is ever challenged by someone who claims that they used the same mark in commerce and interstate commerce before you.

The same kind of evidence needed to prove that you have used your mark in commerce is the kind of evidence asked for when submitting a specimen (photograph) in your application as part of your statement of use:

Acceptable evidence showing the use of a mark for goods includes: (1) the actual goods bearing the mark; or (2) the actual container, packaging, tag, or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.

Acceptable evidence showing the use of a mark for services includes: (1) copies of advertising and marketing material; or (2) a photograph of business signage or billboards; or (3) materials showing the mark in the sale, rendering, or advertisement of the services.

A list of information you need when filing a federal trademark application is as follows:

1. The kind of mark (a word mark or a design mark, or both);
2. A description of goods and/or services for which you will use the mark (see discussion below);
3. The Classification of Goods and/or Services under which you will make application of your mark. You must use the mark in at least one class, but there may be multiple classes depending on how the mark is going to be used (see discussion below);
4. The owner of the mark and his/her/its address (this may be an individual or an entity; this information will be public);
5. The date the mark was first used in commerce;
6. The date the mark was first used in interstate commerce; and
7. If the mark is being used in commerce, a specimen (photograph) showing how the mark is being used in commerce (see the discussion above)

A list of the International Classification of Goods and Services followed by the USPTO may be found at the following link: https://www.uspto.gov/trademark/trademark-updates-and-announcements/nice-agreement-current-edition-version-general-remarks. You will want to look through the classifications of goods and services and determine which class, or classes, describe the goods or service for which you will use your mark. For instance, if the mark is going to be used for a paint or varnish, you will want to file the application under Class 002; if it will be used for clothing, it will be under Class 25; if it will be used for advertising services, it will be under Class 35; if it will be used for construction services, it will be under Class 037. Your use of the mark determines which class or classes under which to file an application.

Once you have an idea which class or classes you want your mark to be in, you should conduct a search for descriptions of goods and services that have been accepted by the USPTO under the Trademark ID Manual, see https://idm-tmng.uspto.gov/id-master-list-public.html. Some people begin their search for the classification of goods and services by using this ID Manual. Just type in the goods or service you want to use the mark for and see what descriptions and classes come up. For instance, if you type in “dog leash” a description for “dog leashes” in Class 018 will appear, showing that it has been an accepted description of goods with the USPTO since 1991.

Once you have the information identified above, you are ready to file an electronic application for a trademark at the following URL: https://teas.uspto.gov/forms/bas. The standard filing fee is $350.00 per class of goods/services. The TEAS PLUS option is only $250.00 per class of goods/services, but it has more stringent requirements for information (like using the Trademark ID Manual discussed above for your goods and services). If you have gathered all of the information discussed above, you should be able to file a TEAS PLUS application. In completing the application, follow the prompts in the application. As a reminder, everything placed in the application including names, addresses, and contact information will be public information available to anyone who searches for the mark. At the end of the application process, you will have to pay the filing fee by credit card.

After the application is filed, it takes about four-to-six months before an examiner with the USPTO reviews the application. The examiner will investigate whether there are any conflicting marks or other problems with your trademark application. If the examiner has concerns, s/he will issue an Office Action to you identifying the issues and what is required to move the application forward toward registration. You will have six months to respond to the Office Action. This may be the time to involve a trademark attorney, if you have not done so already, to address the legal issues raised in the Office Action. After all issues are resolved, the mark will be published for opposition in the Official Gazette. A thirty-day publication provides notice to the world about your trademark application and gives a party an opportunity to object to the application if they believe it will infringe on that party’s trademark. If no opposition is filed, the mark will then proceed to registration. If you filed an “intent to use” application, you will be required to file a Statement of Use before the mark will can proceed to registration. Without any significant obstacles, a trademark application usually moves from application to registration in about eighteen months. A list of all USPTO fees may be found at https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule.

As I said at the beginning of this article, there is a learning curve to filing a trademark application with the USPTO. If I can be of help with the process, please let me know.