How to Correctly File a Trademark Registration

traverselegal - March 19, 2012 - Conducting a Trademark Availability Search, Trademark Law

An experienced trademark registration attorney can streamline the trademark registration process and make sure your trademark application gets filed correctly the r first time. But sometimes, you don’t have the funds to pay a trademark attorney to protect your name, brand or slogan.  In certain situations, you may decide to file your own trademark application. while we are not recommending self-help, this post will help you understand the process so you can decide whether to hire a trademark lawyer or try to navigate the USPTO registration process yourself.  You should contact a law firm the specializes in trademark law to understand the costs involved. It is much less expensive to hire an attorney to file your mark than you might think. Traverse legal manages over 800 trademark registrations globally for clients just like your, protecting brands just like yours.

Refusals. Delays. Loss of time and money. Usually leading to the death of a trademark application. That’s the report we’re getting from the Trademark Office at this hour. If you fail to search for conflicting marks before filing, improperly fill out the application, or fail to submit the proper supporting documents, you may create major deficiencies in your application. Take a look.

Yeah, I didn’t really know what I was doing. But, I’m in a band with some friends and we wanted to protect our band name. So, I got on-line after a show one night and filled out the application. Um, but doing it in a rush like that was a mistake because I wasted a year and 325 dollars. Did you know that fee was non-refundable?

So, if you are a first-time filer, wish to avoid delays, or want to avoid an application that is void from the start, stay tuned for some important tips just released by the Trademark Office.

First, use the electronic resources provided to you by the Office.  For example, before you even start the application, use the Trademark Electronic Search System, or TESS, to search for marks that are confusingly similar to yours.  If there’s a live mark in the system that is similar to yours and used with related goods and services, your application may be refused.

It’s a good thing I checked, actually.  Turns out some guy in Alaska had already filed for the mark I wanted in a related business.  So, I just picked a new mark.  Saved me a bunch of money…

Second, use the Trademark Electronic Application System, or TEAS, to file your application.  Once you start to fill out the application form, remember that the Owner of the Mark is not necessarily the name of the person filling out the form.

If the owner of the trademark is a corporation, partnership, LLC, or other legally formed business, use the name of the business as the Applicant Name.  And don’t forget to include the state in which the business is incorporated or organized.

If you alone own the trademark, you may indicate this by filling in your personal name, your country of citizenship, and that you are an Individual.  Pay careful attention to this matter or you could end up with a void application.

I screwed up big time!  I put down my name, plus my mom’s name, ‘cause she kinda gave me the idea.  And also that I was an LLC ‘cause I wanted to file papers for that and I thought, well, if I put it down, I’d file for it, but then I didn’t.  It was a mess.  I guess I’ll read the form next time!

I’ve just been informed that we have breaking news from the Trademark Office.

Karen, can we go live? OK.

Ladies and gentlemen, we’re taking you live to the USPTO campus.  Standing outside the atrium is our own Sandhya Mahajan.  Sandhya, what’s the story?

Well, Mark, I’ve just been informed that the number one mistake that first time filers make is not understanding that a drawing of the mark is not the same thing as a specimen.  Ever.

A drawing of the mark is merely a depiction of the mark by itself, without anything else around it.  As you can see from the screen, it could be a Standard Character Mark, meaning you don’t claim rights to any particular style, font, or color.  Or, it could be a stylized or Special Form mark.

A specimen, on the other hand, shows how you actually use the mark in commerce in connection with your goods and services.  For example, if you use the mark on goods, you’d submit a picture of the mark on a label or hang tag that is attached to the goods.  For services, on the other hand, advertising and marketing materials are acceptable, so long as they show the mark being used in the advertising or providing of the services.

Don’t confuse the two and remember: a drawing shows what the mark is; a specimen shows how the mark is used.

That’s all from here, Mark.  I’ll let you know if anything else develops.

Thanks, Sandhya; keep us posted.

Now, uh, I guess this is now number four?  Make sure to correctly identify your goods or services.

My goodsy what?

Choose carefully, because an incorrect identification of goods and services could prevent registration down the road.  And the Office does not issue refunds.

Learned that the hard way…

If you’re asking what an “identification” is or what is meant by “goods and services,” think about it this way.  What do customers purchase from you?  An actual physical product that bears your trademark?  Or do they hire you to perform an activity for them?  If it’s products, you’ve got goods.  If it’s activities, you’ve got services.  Although the determination of whether you’ve got goods or services can be confusing, it’s critical that you make the correct identification.

To help you along, let’s look at an example that applicants often find confusing: “T-shirts” and the silk screening of t-shirts.  Let’s say you designed a bunch of t-shirts and you want to sell them.  If a customer purchases one, you’re providing goods: t-shirts.  Note that the customer didn’t pay you to perform an activity.  He paid you for a “thing.”  You, then, are a goods provider and you’d want to identify your goods as “t-shirts.”

On the other hand, let’s say a customer has created a new design that she wants you to print on a t-shirt.  If you do as she asks, you’re providing a service: a silk screen printing service.  Although the customer does end up with a t-shirt, she didn’t come to you to purchase a “thing.”  She hired you to perform an activity.  You, then, are a service provider and you’d want to identify your services as “Imprinting messages on t-shirts” or “Silk screen printing.”

But “Wait!” you might be asking.  “Don’t I need to put down that I’m selling my t-shirts?”  The quick answer is “No.”  The selling of your own goods is never a service, but the providing of a convenient place to purchase goods is.

So, if you have a website or a retail store where you provide a place for people to purchase goods, such as t-shirts, then you’d want to identify “retail store services.”  For our example here, your services would be “Retail store and online retail store services featuring t-shirts.”

See the difference between them?  It can be confusing, but just remember: goods are things that bear your trademark; services are activities that you perform for others.

The Office has a listing of acceptable goods and services in the Trademark Manual of Acceptable Identifications of Goods and Services, also known as the ID Manual.  For guidance, spend a few minutes with the ID Manual and see if the Manual contains an identification that accurately reflects your goods and services.  If so, use that ID in your application.  If not, explain the goods and services in your own words.  It’s important to list the correct ID, because you can’t add additional goods and services later and you can’t switch back and forth between goods and services if you get it wrong.

The Office has also indicated that the goods or services you identify should only be those with which you are actually using the mark or have a bona fide intent to use with the mark.  Theoretical usage doesn’t count.

Uh, yes, I do.  Don’t try to list everything within a class of goods or services.  It’s a complete waste of time.  There’s no way you’re going to use your mark on everything.  Instead, just put down those items on which you’re actually going to use your mark.

Fifth, as you figure out your goods and services, figure out your correct filing basis.  If you are already using the mark in interstate commerce, you should file under the Section 1(a) Use-in-Commerce basis.  If you are not yet using the mark in interstate commerce, but have a bona fide intent to do so within the next 3 to 4 years, you should file under the Section 1(b) Intent-to-Use basis.  For more details on the examination chronology, check out the Application Timeline found on the USPTO website.

Finally, always remember that registration is not instantaneous or guaranteed.  Each application must be reviewed for legal requirements and this takes time.  Although your application usually will begin to be examined within 3 months, final disposition may be months or years down the road. You may need to respond to refusals by the examining attorney, submit additional paper work, and pay additional fees.  This is especially true if you are filing under the Intent to Use basis.  You will be required to submit additional forms and you will be required to pay additional fees.

While some applicants complete the application process without assistance from a lawyer, other applicants hire attorneys who specialize in trademark law to help them through the proceedings.  The choice is yours; do what is right for you.

Well, I didn’t realize this before I filed my first application, but there are lawyers out there who specialize in trademark law.  Which is fantastic, ’cause not only do they do the search to let you know if your mark is eligible for registration, but they also file the application for you and then they’ll handle any problems that might arise through the whole process.  I mean, maybe not everybody needs the help, but I figure it’s a legal proceeding.  Why not let the lawyer handle it?  Know what I mean?

A transcript of this report, a list of these critical application issues, and a printable Application Timeline are all available on the USPTO.GOV website.  Remember, these are all general guidelines and may not be directly applicable to your case.

For more breaking coverage on ways to save time and money at the Trademark Office, keep it right here.  Additional news segments cover topics in the filing form, as well as what you need to know after you’ve submitted your application.  Watch them now and replay them as often as you like.  No need to wait for news at 11…

I’m Mark Trademan, Trademark Information Network.  We now return you to your regularly scheduled trademark application filing.

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This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.