The minimum filing requirements for federal trademark applications are deceptively simple. The U.S. Patent and Trademark Office (USPTO) will grant a filing date to an application that contains all of the following:
- The name of the applicant;
- The name and address for correspondence;
- A clear drawing of the trademark;
- A listing of the goods or services; and
- The filing fee for at least one class of goods or services.
Let’s take a closer look at the first requirement.
1. The name of the trademark applicant
An application to register a trademark must be filed by the owner of the trademark or, in the case of an intent-to-use application, by the person who is entitled to use the trademark in commerce. Normally, the owner of a trademark is the person who applies the trademark to goods that he or she produces, or uses the trademark in the sale of advertising of services that he or she performs.
This seems pretty straightforward in the case of an application based on actual use. Problems can arise, however, when the application is based on an intent-to-use.
Consider the scenario when an individual files an intent-to-use application in his or her individual name prior to forming a corporate entity. In this situation, the individual is not allowed to transfer the application to the later formed entity until after proof of use has been filed with the USPTO. The consequence of a prohibited transfer is cancellation of the resulting registration. A potential solution to this problem is to have the individual applicant license the rights to the trademark to the later formed entity so that the eventual use of the mark by the licensee entity can form the basis for filing proof of use. This will pave the way for assignment of the application to the company at the appropriate time.
2. The name and address of the correspondent
The second requirement – name and address for correspondence – is the easiest part of the application. If you use a trademark lawyer to file the application, then the correspondence address will be the lawyer’s address. Otherwise, this will be the applicant’s address.
Please note that the applicant has a duty to maintain a current and accurate correspondence address. So if the correspondence address changes, the USPTO must be promptly notified in writing. This also applies to email addresses.
3. Drawing of the trademark
The third requirement – a clear drawing of the mark – can be a trap for the unwary. It’s critical to submit the drawing correctly. The drawing you submit with the application is what will appear on your registration certificate once the application process is complete. You cannot add or subtract words and designs to the trademark after the application is filed (except in very rare circumstances).
Let’s first clear up the confusing use of the word “drawing”. The USPTO is not looking for a drawing like with crayons. When it comes to trademark applications, the word “drawing” simply refers to a depiction of the trademark. A trademark may appear as a “Standard Character” mark or as a “Special Form” mark.
Registration of a mark in the standard character format provides broad rights. It grants protection to the wording itself, without claim to any particular font style, size, or color, and absent any design element. This means that you can change how you display the wording over the life of the trademark.
4. Identification of goods and services
Correctly identifying your goods and services is one of the most important aspects of a trademark application. Making a mistake here could prevent you from registering your trademark.
So what does it mean to identify your goods and services? Here’s a good way to think about it: What do customers buy 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, then you’re providing goods. If it’s activities, then you’re providing services.
Let’s take a look at an example that will help clarify this distinction.
What if someone creates a design for t-shirts and you make them for her? You’re providing a service. In this case, she didn’t come to you to buy a t-shirt. Rather, she hired you to perform an activity. You would then identify your services in your trademark application as “custom imprinting of t-shirts.”
When the person who used your custom imprinting services sells her shirts, she’s providing goods. She would identify her goods in her trademark application as “t-shirts.”
Need some help identifying your goods and services? The USPTO’s ID manual is a great place to start. You should check to see if the ID Manual contains an identification that accurately reflects your goods and services. If so, then you should use that ID in your application. This has the added bonus of allowing you to apply with the TEAS Plus application, which as a lower filing fee than a regular application.
One word of warning: you cannot add goods and services to your application after filing. If you discover later on that you want to add goods and services, then you must file a new application to cover those goods and services.
Correctly identifying your goods and services is critical. Hiring a trademark lawyer to prepare and file your trademark application will help you avoid making mistakes that could prevent you from registering your trademark.