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Entering Your Mark in a Trademark Application

After you have entered your trademark application’s “Owner Information” as discussed in Part 3 on filing your electronic trademark application, now it’s time to specify your actual TRADEMARK or SERVICE MARK in your trademark app to the USPTO.

Upon clicking Continue in the prior screen of the electronic application, the following screen will appear in the USPTO form if all of the required fields have been filled in the previous Owner Section of the application.

trademark application filing screen 08

Register Your Trademark the Same As It Will Be Used

Now you will get to tell the US Trademark Office exactly what mark you want to register. First, you will designate exactly how you will present your mark to the public.

IMPORTANT:  It really matters a lot how you enter your mark. I cannot emphasize this enough. Many people proceed to filing a trademark application without giving due consideration to exactly how their mark should be presented to the public, or exactly what is a trademark. If you are filing a stylized mark, the image of your mark must be exactly the same as the way that you will use the mark. I often see client’s move words of the mark around into different positions within a stylized mark, and this can cause problems when it is time to file a specimen of use.

Video – Submitting a Drawing of Your Trademark

– produced by the U.S. Government

The mark in your specimen of use must be exactly the same as the mark in your trademark application. This is one of the grounds that the U.S. Patent and Trademark Office might use to refuse to register your mark as mentioned in this warning shown in the above screen shot:

Warning

After searching the USPTO database, even if you think the results are “O.K.,” do not assume that your mark can be registered. After you file an application, the USPTO will perform it’s own search and other review, and might refuse to register your mark.

I repeat this warning above now because it is a point that is often confusing to new trademark applicants. No trademark search that you will do or even an attorney opinion guarantees that a trademark registration will happen after you file your application. The actual approval for registration is determined by an attorney at the Trademark Office, an appeal board, or a court of law depending on how things go with your application.

In this regard, the trademark application process is a process call prosecution that involves advocacy for your mark’s application before the trademark office, and possibly the Trademark Trial and Appeal Board or even an appellate court. Therefore, the ultimate cost for a trademark prosecution cannot be predicted and is only controlled by how long the prosecution lasts and how hard you fight if you application is refused.

Mark Types – Standard or Special

Returning now to the subject of entering your mark into the application, you do not want to add additional words such as the, Co, Inc, or LLC that will not actually be a part of your trademark. This is not only bad for your trademark, but usually bad for your marketing and PR department because it dilutes the attractiveness of your brand. There are exceptions when words like “Co” form an important part of your brand and mark.

 

trademark application mark type selection

Select either Standard Characters (i.e. Arabic letters and words), or Special Form, which will cover any mark that includes both a design and words or just a design. These are also referred to as stylized marks. So, if you have a graphic, color or unique word design as part of your mark, you will need to select “special form” as the mark type. In my example the mark consists only of words, so I have selected standard characters.

Enter Your Trademark or Upload Your Image

Now, you enter the word portion of your mark in the box title “Enter the mark here.”

enter your mark trademark application

If you have selected “Special Form” in the field above the box, then you will need to click on the button to the right of the mark box to upload an image of your mark. Unless you are claiming color as a feature of your mark, you should try to upload a black and white JPEG file. The image must be sized to meet the requirements. Once you have entered your mark word(s) and uploaded your image, you can preview the mark to make sure that it has the appearance that you would expect.

Additional Statements

Sometimes, you will know in advance that the US Patent and Trademark Office will require some additional information to accept your mark. Or, you may want to disclaim some portion of the mark because of your negotiation and agreement with a competitor. The check box below let’s you enter those type of statements in advance. I rarely use this box, but it can be useful in unique circumstances. Unless you understand what you are doing, I recommend consulting attorney before attempting to use this box. Otherwise, just leave it blank for now and click on the Continue button to go to the next screen.

trademark application filing screen 09

If you choose to file a Special Form Trademark, you will need to upload a JPG image of the right size. As a tip for resizing your trademark image, I recommend using a free program called IrfanView, which is also suggested by the USPTO.

Return to read more about the electronic filing of a trademark application in Part 5 of this series about entering a description of goods or services using the Acceptable Identification of Goods and Services Manual.

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