What's in an USPTO Trademark Application?
After you have settled on a business name, logo, and tagline for your business, filing a trademark application with the United States Patent and Trademark Office (USPTO) for each is the best way to protect your innovative branding. There are, however, a few important consideration before applying for registration.
Trademark Search
A business owner must consider whether the USPTO will permit a trademark registration for their the name, phrase, or symbol. If similar registrations already exist, securing the trademark becomes complicated and costly. A business owner should hire a trademark lawyer to conduct a comprehensive trademark search and analysis on the availability of a given mark prior to filing a trademark application. A competant lawyer can conduct a comprehensive trademark search for both marks containing words and images. Failure to conduct a search may lead to expensive administrative proceedings, trademark infringement lawsuits, or trademark cancellations.
While the purpose of this article is to discuss federal trademark application preparation in general, working with a trademark lawyer at this stage is highly recommended. A trademark lawyer will offer you not only a comprehensive search report, but a full analysis of the current marketplace as it pertains to your mark. An analysis of this kind will help you understand what is already in the marketplace and the obstacles you may face at the USPTO and with third parties when attempting to secure a mark.
Trademark Application Preparation
A trademark application may be filed using the USPTO’s online Trademark Electronic Application System (TEAS).
A trademark application has various components. The following information must be included in your USPTO application:
Applicant’s name and address.
Applicant’s legal entity and citizenship. (An applicant must state whether it is filing as an individual, a limited liability company, a corporation, etc.)
The mark. (If the mark contains only words, it is considered a standard character mark. For standard word marks, an applicant will need to type the letters of the word or phrase. If it is an image or symbol, an applicant will be required to include a drawing.)
Description of the mark.
List of all products and services provided utilizing the mark. (Difference products and services are categorized as international classes at the USPTO. These are often not intuitive. It is important to file under all applicable international classes to protect the applicant’s branding.)
Specimen. (If the applicant is filing a mark that is in use in commerce.)
The date of first use of the mark anywhere and the date of first use in commerce. (If the applicant is filing a mark that is in use in commerce.)
A verified statement.
The required application fee. (This will vary depending on the type of application used and the number of international classes applicable. The current USPTO trademark fee information schedule may be accessed here. )
After the USPTO trademark application has filed, it takes between three to six months for the USPTO to assign an examining attorney to the application, meaning that an applicant will not hear back from the USPTO regarding its application during that time. In some instances, it could take a longer. The wait can cause many applicant’s a great deal of anxiety. Consulting with a trademark lawyer during any part of the application process can help bring clarity regarding application status.
Scams and Fraudulent Offers
Do note, after you submit your application, it becomes a public record meaning all your information is visible to the public. Beware of fraudulent emails and/or mail asking for additional USPTO fees. Our offices are often asked about letters, offers, and notices trademark applicants receive from third-party companies regarding their USPTO trademark application. In some instances, trademark applicants have paid fees to private companies thinking they were from the USPTO. Beware that these notices are often misleading and the requested fees are not required by the USPTO.
Considerations
In view of the complexities that are involved in trademark registrations, we recommend you consult a trademark attorney to determine the best way forward with your application. Contact the Antares Law Firm today to schedule a consult.
— Laila Ghauri, Esq., Principal Attorney, Antares Law Firm
