We recently wrote about whether you need an attorney to file a trademark application and we said that, while there are many reasons to use an attorney, some businesses decide to go it alone. This week we want to offer a streamlined walkthrough of how to file your own application. We will cover the most important parts of an application here, but note that there are many more options that you might consider when filing out the application.
*And like in our other post, we want to emphasize that is is almost always a good practice to use an attorney to file your trademark application. You shouldn’t rely on this post as a replacement for an attorney!
Before even starting the application, you should conduct a trademark search to make sure you have the proper rights to obtain a registration in the first place. For this, we recommend our post “How to Perform a Trademark Search.”
You will also need to find in which International Class your goods or services will belong and also one or more suitable descriptions of your goods or services. The IC list is available here and the previously approved descriptions are available here. While you are not required to use a previously approved description, doing so can reduce the cost of your application and also increase the likelihood of an approval in the first attempt.
How to File
When you arrive at uspto.gov, navigate to the application labeled “Trademark/Servicemark Application, Principal Register.”
TEAS or TEAS Plus
If you are ok with digital communications, paying the fee up front, and using a pre-approved description, then you can save $50 by using the TEAS Plus application. If not, you must select the regular TEAS application. We will assume you choose the Plus application since that is most commonly used.
The next substantial information you will enter is information on the owner of the mark. Note that if you have a business entity, odds are the entity should be the listed owner, not you as an individual. Also keep in mind that this information will be publicly available after you submit the application, which may impact the information you provide.
The Mark & Goods/Services
Next up is information about the mark itself and the goods/services you provide. You can insert an image if you are applying for a design mark, or you can just type in the mark if you are applying for a word mark. You can search for a pre-approved description at this step and once found, insert it into the application. If you choose a description with a fill-in-the-blank option, you need to complete the description at this step also.
Filing Basis & Specimens
If you are already using the mark in commerce, then you can now select Section 1(a) as your filing basis. If not, you can choose Section 1(b) to indicate that you intend to use the mark within 6 months of the application’s approval. Assuming you selected 1(a), you must now submit a specimen of use. If you need help finding the right specimen of use, see our post “How to Find a Good Trademark Specimen.” You will also need to describe the specimen and provide information on when the mark was first used “anywhere” and when it was first used “in commerce.”
Signature & Submission
After assigning the filing basis and clicking continue, you can then pay the fee and sign your application. Follow the signature instructions exactly, or it won’t let you proceed.
The Waiting Game
Next up is the waiting game. You will likely have to wait about three months before getting a response from the USPTO. In the meantime, you may receive some official communications from the USPTO further describing your mark or asking for clarifications. You will also likely receive unofficial communications from third parties seeking to help you along in the process. Remember to pay attention to the sender of these communications. If they are from the USPTO, then they are official. Anyone else, and they are likely advertisements from third parties.
If your application is denied, be sure to check out our post “What You Should Do If Your Trademark Application Is Denied.”
While some people prefer to file on their own, many more seek the advice and assistance of a licensed attorney to help them through the process. If you would like assistance, check out our application package which only costs $495 at mightymarks.com.
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.