How to Prepare a Trademark Application
The U.S. Patent and Trademark Office has made preparing and filing a trademark application easy and efficient. An online form for electronic filing is available on the USPTO’s website and allows you to file an application without the need to submit hardcopy forms by mail. However, the simplicity of the form can be deceptive and we recommend that you retain a trademark attorney to prepare and file your application to maximize your prospect of obtaining a solid and enforceable trademark registration. The USPTO discusses the question of whether or not you need a trademark attorney on its website, which you can read here.
What you will need to prepare your Trademark Application
To begin your U.S. trademark application, you will need to choose between a TEAS Plus Form and a regular TEAS Form on the USPTO website. The filing fee for applications filed with a TEAS Plus form are $50 less than the regular form. However, you will need to meet certain requirements to qualify for the lower fee. If you improperly file with a TEAS Plus form, you will be charged an additional $50 later on. To qualify for the lower fee, you must meet the requirements:
1. Provide an e-mail address and authorization for the USPTO to send application-related e-mail correspondence;
2. Subsequent application-related submissions, such as responses to Office actions must be filed through the TEAS system;
3. The description of goods or services must be selected from the USPTO Trademark ID Manual;
4. The filing fee for all classes listed in the application must be paid upfront; and
5. Certain statements regarding the trademark, such as translation statement, claim of ownership, color claim and description of mark, if applicable, must be included with application as the time of filing.
Description of Goods
Where most inexperienced applicants run into trouble is the description of goods. A false sense of security may be created by the fact that the USPTO Trademark ID Manual provides official pre-set descriptions. The Manual, however, does not provide advice on a number of important issues, including whether or not the description accurately reflects how a mark is used or whether or not a the description creates other problems, such as triggering a conflict with another mark or suggesting to the examining attorney that the mark is descriptive. The TEAS Plus Form does not allow the flexibility of modifying your description to address these issues.
Selecting an appropriate description may seem intuitive, but it is often counterintuitive for the inexperienced. For example, an applicant selling particular goods may naturally look for a description identifying the goods. However, if the applicant does not sell its own goods with the mark affixed, such a description may not be appropriate and could result in a specimen rejection late on. The proper description may actually be for on-line retail store services featuring the goods being sold.
Filling out the Trademark Application Form
After you determine which trademark application form to use, the next step is to complete the form. First you will need to fill in information about the applicant. Then you will be asked what type of mark you are seeking to register. You can choose between a Standard Character (Word) mark, a Special Form (Stylized and/or Design), or a Sound mark. In most cases the choice will be between a standard Word mark and a Design mark. Here an applicant can easily choose a form that is not best for them, weakens their registration, or limits its durability. For example, an applicant having a mark comprising both design and word features may be inclined to select Special Form in order to protect both the design and word features of the mark. However, brand designs typically change more frequently. If applicant continues to use the word mark but changes the design features, then the applicant’s registration may no longer apply to its mark as used and applicant may not be able to submit a proper specimen showing continued use when the time comes to renew the registration. Thus, if the design feature is not a primary feature expected to last long term, it may be better to file it as a word mark or file two applications, one for the word and one for the design. If you are filing for a design mark, you will need to decide whether or not it is better to claim color as a feature of the mark. We recommend you discuss this with your trademark attorney because of the various legal implications. You will also need to submit a proper description of the mark in addition to the description of goods or service.
On the form page where you input the mark, you may check a box to include additional statements. There is a list of additional statements that can be made. You will want to discuss these with your counsel. After you have completed inputting your mark and any required additional statements, you will be asked to add a description of goods or services, including the proper International Class. As previously explained, this is a step where the assistance of experienced trademark attorney can be very valuable. You will also be required at this stage to choose whether you file your application as an in-use application under Section 1(a) of the Trademark Act or as an intent-to-use application under Section 1(b) of the Trademark Act. This decision will be determined on whether or not you have been using your mark in commerce. The determination of when you first use the mark in commerce is a factual question determined by legal standards of what use in commerce actually means. Any use of the mark is not sufficient, so professional legal advice is recommended. If you obtain a registration based on use not meeting the standard of use in commerce, your registration may later be rendered invalid.
At the end of the application you will be required to sign it and then submit it with an online payment.