Trademark Application Step-By-Step Guide
Filling out a trademark application is daunting, but we breakdown how to do it in this step- by-step guide!
Topics covered in this section:
- What is Trademark Registration?
- Do I have to Register a Trademark
- State vs. Federal Trademark Registration
- Filling out Goods and Services
- Trademark Application: Dates of Use
- What is Filing Basis?
- Step-By-Step Guide to the USPTO Trademark Application
Check out other sections of the Ultimate Trademark Guide
What is Trademark Registration?
Applying for a trademark is the process of registering a trademark with a state, national, or international authority.
Do I Have to Register a Trademark?
A common misconception is that in order to use a trademark, or to enjoy any trademark protection at all, one must register a trademark. This isn’t true.
The justification for these protections is reasonable. Trademark registration is an edifice of laws, formalities, fees, and judgment. It would be unreasonable to base trademark protection solely on one’s knowledge and availment to this structure. Many people simply don’t register marks, whether because of the cost, not knowing a lawyer, or some other reason.
Interestingly, common law rights may be in some instances stronger than registration rights!
So why register?
Registering a trademark grants numerous legal benefits to the trademark owner, including notice of ownership, priority of rights, and more.
State vs. Federal Trademark Registration
Trademark registration happens at both the state and federal level. State trademark registration grants limited rights.
Here is a list of state trademark information links provided by the USPTO.
Why would someone pursue a state trademark registration if national registration affords generally stronger protections?
One reason goes to the heart of constitutional law.
A core tenant of our country is the interplay between state and national authority and that the U.S. Congress can only make laws when there is a constitutional basis for doing so. Interestingly, the basis of the Lanham Act (the law that forms the basis of the federal trademark registration system) is Congress’ ability to regulate interstate commerce.
In other words, a trademark that is used in interstate commerce is eligible for federal trademark registration. A trademark that is solely used in one state is not in use in commerce sufficiently to be eligible for federal trademark registration.
So state registration is best for trademark use that’s all within one state.
In today’s age, the Internet makes interstate commerce quite common and many if not most trademark use crosses state lines and is therefore used in commerce and eligible for federal trademark registration.
Where available, federal registration with the USPTO provides the broadest protection because it grants national rights and benefits from the rules and processes set forth by the USPTO.
The remainder of this sections covers preparing a federal trademark application.
Federal Registration and the USPTO
As you might have gathered, a lot goes into a federal trademark application. Before even considering filling out an application for trademark registration, the most successful applicants have already thoroughly researched the USPTO database for confusingly similar marks and has searched for common law uses of a similar mark.
After research and before filling out the USPTO application, the next step is to determine a few key pieces of information you’ll need for your application.
Below is an example USPTO database search entry page used in our example research:
We now revisit some of the entry details so that we can prepare our own trademark application.
Trademark Application: Goods and Services
The first piece of information needed is the goods and/or services used with the trademark. We covered trademark classification before but we dive a bit deeper here.
The example entry above shows class 035. The numerical classifications, based on the Nice Classification, has IC 001 – 034 covering goods and IC 035 – 045 covering services. So based on the 035 in the example entry above, we can quickly tell that this mark is registered for some kind of service, covered by IC 035.
Class 35 covers services generally to “help in the working or management of a commercial undertaking, or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise.” Further, Class 35 covers the “bringing together, for the benefit of others… a variety of goods” and “enabling customers to conveniently view and purchase those goods.”
If we continue to read the example database entry above the classification designation is followed by a description of the goods or services.
This entry’s description reads, “retail store services and on-line retail store services featuring apparel, apparel accessories, footwear, footwear accessories, headwear, eyewear and accessories, sporting goods and equipment, bags, sports bags, sports and fitness products and accessories.”
So this trademark is registered in a particular class of service, namely in providing a retail and online store for customers to view and purchase goods.
But where did this description come from? How was it decided?
Classification Descriptions
The USPTO maintains the Trademark Identification Manual (TMNG) to search for acceptable descriptions of goods or services. The TMNG is a database of existing and proposed descriptions for goods and services.
To demonstrate how to use TMNG, let’s continue with our prior research example, a mark that has a rainbow design over the word “CREATURE” used with mobile applications.
As you’ll recall, we determined that the goods “mobile application” falls under Class 9. Should the description for the goods simply be, “mobile application”?
Let’s see what happens when we search “mobile application” on TMNG.
The search returns 31 description records for “mobile application.” Some are quite specific, such as “Downloadable mobile application for booking taxis.” I scrolled through the results to find a description that works for this example and landed on the description:
“Downloadable computer application software for mobile phones, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}”
Specifying Classification Descriptions
Descriptions listed in TMNG commonly include brackets, a part of the description for further specificity to be entered.
Let’s say in our example the downloadable app is for taking photos of animals and uploading the photos in the application.
The bracketed language might be replaced with something like:
“Downloadable computer application software for mobile phones, namely, software for taking photos of animals and uploading photos of animals.”
But what happens if in a few months I want to change the app so it also covers taking photos of houses and uploading those photos? Let’s try a broader description:
“Downloadable computer application software for mobile phones, namely, software for taking photos and uploading photos.”
By taking out “animals” the description is now broader. This is good because it allows the trademark registration to cover broader functionality of the mobile application. However, it increases the risk that the USPTO would reject the description as too broad or vague.
There is no magic formula for arriving at a sufficiently broad but not overly broad description. The best advice is to search for other similar trademarks or businesses offering similar goods or services.
Finally, for any portion of the trademark application that requires a judgment call like this, the value of working with a trademark lawyer is at its highest.
Trademark Application: Dates of Use
On a federal trademark application, the date of first use is the first date that the goods and services were provided under the mark, anywhere.
On a federal trademark application, the date of first use in commerce is the first date that the goods and services were provided under the mark across state lines, or in more than one U.S. state or territory in commerce.
Trademark Application: Filing Basis
The USPTO accepts four filing bases for a trademark application:
- 1(a) for use of a mark in commerce for the applied-for goods and/or services,
- 1(b) for the bona fide intention to use a mark in commerce for the applied-for goods and/or services,
- 44(e) for applicants of the same mark for the same goods and/or services as registered in another country, and
- 44(d) for applicants who have applied for registration for the same mark and the same goods and/or services in another country.
So there are four ways to be eligible to apply for USPTO trademark registration. Either one is using, or has a bona fide intention to use, a mark in commerce with goods and/or services or an applicant already has, or has applied for, a foreign registration of the same mark used with the same goods and/or services.
What is a Bona Fide Intention to Use a Mark?
Applicants who have a true and good faith intention to use a mark in commerce have a bona fide intention to use a mark and may file an application on that basis. This allows for an earlier filing date than if the applicant waited until actual use.
In addition to filing basis, there are two registration bases for a trademark application.
The two registration bases are:
- 1(a) for marks currently used in commerce with goods and/or services, and
- 44(e) for marks currently registered for the same mark with the same goods and/or services in a foreign country.
The bottom line is registration requires use.
So while an applicant can file with a bona fide intention to use a mark in commerce with goods and/or services, registration requires a showing use of a mark with goods and/or services.
How to Fill out a USPTO Trademark Application
We’ve finally arrived at the application itself!
What should be clear at this point is that preparing the application is in some ways one of the last things an applicant should do. After solid research, deciding upon goods and/or services and the description of those goods and/or services, and deciding on the filing and registration basis for the application, the application almost writes itself.
How to Find the Application
Let’s start with the USPTO homepage:
The USPTO website has a great depth of information but we are going straight to the trademark application.
There are two ways to get to the trademark application.
The first is to click through to Trademarks on the USPTO homepage and then click Apply for a Trademark on the following page. You will land on a page of USPTO trademark forms, including the initial application form.
The second way is to apply through MyUSPTO. MyUSPTO is a new system to apply for an track trademark applications and registrations.
To get to MyUSPTO, click the link at the top of the USPTO homepage above the search bar.
You’ll be taken to a login screen – an account is required to access MyUSPTO.
After logging in or creating account, you’ll be taken to the home screen of MyUSPTO. There are a lot of great features but we will go straight to applying for a new trademark.
At the top of MyUSPTO you should see a Trademarks dropdown menu.
Select “File Trademark Forms.”
This will bring you to a page where you can select Initial Application Forms:
You can then Start Your Application in TEAS.
You can also access the application by accessing the TEAS Application link if you set up the Trademark Form Finder menu on the homepage of MyUSPTO.
What is TEAS Plus?
At this point it’s worth noting that there are two different filing options when using TEAS or the Trademark Electronic Application System. TEAS Plus and TEAS Standard.
Here is a video on the difference between the two but essentially TEAS Plus has a few more application requirements and has a lower cost to apply ($225 per goods/services as opposed to $275 per goods/services).
Since most applications are filed online using TEAS Plus we will proceed by covering that form of application.
The USPTO has made available a pdf of the entire TEAS Plus application here. The pdf doesn’t always show the most updated version of the application but it’s quick if you want to follow along without creating a MyUSPTO account.
Let’s continue to a step-by-step guide of a USPTO trademark application.
Anatomy of a USPTO Trademark Application
The first page has three sections, the first is for selecting the type of application, the second is for when the application is being filed by an attorney, and the third is for uploading a saved application (more on this later).
For this guide we will select TEAS Plus, no to question two, and press continue.
We are now in the trademark application.
The second page is for entering owner information.
If the trademark owner is an entity (e.g., Corporation or LLC) you will have to enter the entity type and the state of incorporation.
Since this page asks for address and email address, it’s a good time to remember that this application will be public record and available for anyone to view.
On the third page, you enter the word mark itself (this guide assumes a word mark application and not with a design).
Note that additional statements may be required, most commonly if the mark has a meaning in another language or for word marks featuring multiple words and the application is for the words together and not any one individually.
These additional statements are complicated and it is strongly recommended to seek the advice of a trademark attorney before including such statements in your application.
Use In Commerce and Specimens
Before we continue let’s discuss use in commerce and specimens.
At this point in the application, the trademark classification, the filing basis, and dates of use all come together. If the application filing basis is 1(b) (intent to use), then no showing of use in commerce, dates of use, or specimen is needed. Assuming this application is filed on a 1(a) (in use) basis then we will need a specimen.
A specimen is evidence of use in commerce. It usually comes in the form of a screenshot or photo of products. For example, a photograph of sports shoes with a swoosh on it applied-for Class 25 footwear or a screenshot of a consulting website for Class 35 business consulting services.
The sufficiency of a specimen can become quite complicated and it’s another area of trademark application where the advice of a trademark attorney is strongly recommended.
Assigning Goods/Services
The next page of the application assigns goods and/or services. Click “Add Goods/Services” for each class of goods/services. Remember that the trademark application fees are based on the number of different classes added to the application, $225 for each class.
Using the search bar on the “Add Goods/Services” page, we will be entering words to search for a description of goods and/or services. So let’s try searching for our research example description, downloadable mobile:
This search yields 23 previously accepted goods and/or services, much like the TMNG search:
The search surfaced the words “downloadable mobile” for multiple classes and with various descriptions of the goods and/or services but let’s select the description we found during our research example:
As you’ll recall this selection has brackets for further description specificity. Let’s press “Insert Checked Entries” at the bottom of the page and see what happens.
The page prompts us to enter the additional description. Let’s add the description we came up with above, “software for taking photos of animals and uploading photos of animals.”
Now pressing “Insert Checked Entries” will return you to the goods/services asiggnment page. If your application has several classes you would continue to search for and add classes/descriptions first.
Assigning Filing Basis
This is where filing basis comes into play. The application now requests that we assign a filing basis to the goods that we added. Let’s select 1(a) as an example of an application for a mark currently in use in commerce with the goods.
In order to file under 1(a) an applicant must submit a specimen and include the dates of use. As discussed above, the specimen choice and description is very important so it’s strongly recommended to work with a a trademark attorney on this portion of the application.
Signing and Saving an Application
Finally you’ll arrive at the signature page. Be sure to read and agree to items carefully, willful false statements on a trademark application are punishable by fine or imprisonment!
In the signature text field be sure to enter signatures in the format “/Your Name/” between two slashes. Then press Validate.
You can submit and pay for the application (the application is not submitted until paid!) or save the application.
You can save the application in two ways:
The first way is to press Input and save the input as a pdf.
The second way is to press Save Form at the bottom of the page. This will save your application as a .obj file, which, if you’ll recall from earlier, you can upload on the first page of the TEAS Plus application under number 3:
Preparing a trademark application should be the final step after a good amount of research and the collection of various application details. While we hope this step-by-step guide is used as a tool in preparing trademark applications there are several parts of the application that benefit from the advice of a trademark lawyer.
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The Ultimate Trademark Guide Sections:
Trademark Search Step-By-Step Guide
How to Fill Out a Trademark Application