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Filing a Trademark Application

This is the first post in an ongoing series on filing a trademark application. This series of posts will expand over time to cover the steps involved in filing a new trademark app. This series of posts should be especially useful if you feel ready to file for trademark registration by learning the process for yourself.

As a caveat with respect to the information provided in this series, I must point out what the Patent and Trademark Office  says about whether you should hire an attorney to help you file a trademark application.

Do I have to hire an attorney?

No. You are not required to hire an attorney, but if you decide to prepare and submit your own application, you must comply with all requirements of the trademark statutes and rules and may be required to respond to legal issues raised by the USPTO. Because the application process can be complex, many applicants choose to appoint an attorney to represent them. If you choose to appoint an attorney, we will only communicate with your attorney. The USPTO cannot help you select an attorney. However, the American Bar Association website includes information on how to find local attorneys who practice trademark law. (From USPTO brochure Basic Facts about Trademarks, 2010)

Despite this advice of the USPTO, it is 100% legal for you to file a trademark application pro se as the owner of the mark. If you are going to go it alone, you should be as informed as possible about the process, which is a primary purpose of this website. However, keep in mind our terms and conditions and our disclaimer that nothing on this website substitutes for getting legal advice and the counsel of your own attorney.

Start at WWW.USPTO.GOV

Ready to file, then head on over to Arlington, VA and the U.S. Patent and Trademark Office. No, not really! You can do just about everything you need to with the Trademark Office over the internet.  So, to file your trademark application electronically over in the internet, first, go to www.uspto.gov.

If you are ready to file your trademark application,

Click on Item #3 File Forms Online

USPTO Home Page - Filing a New Trademark Application

On the next page,

Click on Initial Application Form

Select initial trademark application form

Select the Principle Register

Select filing of the initial trademark application form for registration on the Principle Register. Hopefully, you have chosen a good trademark that is eligible for registration on the principle register. Only descriptive marks that are not eligible for registration without first proving recognition as mark by the consumer should usually be considered for the secondary register. The secondary trademark register does not confer the same legal protection as the principle register.

Trademark Application on the Principle Register

Decide Between TEAS Plus Form and TEAS Form

Now, you are almost ready to start filling in your information for the application. But first, you must decide what trademark application form you are going to use. The selection depends on whether you plan to select the listing of goods and/or services for your application directly from the USPTO’s Acceptable Identification of Goods and Services Manual.

I prefer the TEAS Plus form in most cases because the filing fees are $50 less. Plus, by selecting my goods and services from the USPTO’s manual, I am reassured that the USPTO is going to accept my identification of goods, which avoid future time and disagreement with the PTO attorney.

Trademark filing selection of the trademark application type

Once you select your form preference, you are ready to start filling in the application.

In this example, I have chosen the TEAS Plus form. The main difference is that if you choose the regular TEAS form, you will have to fill in a custom description of your goods and services. The USPTO will require the description of goods and services to be limited to one class of goods or services, or will require an additional fee during prosecution of the application if you choose more than one class.

This is a good place to stop and think about your primary business. What exactly do you sell and what products or services will you use your trademark with. Narrow this down before your proceed so that you are prepared to define your product within the application. Because of the expense of filing in more than one class, you may want to focus on your most important product or service for now.

After selecting your preferred form, read the instructions provided by the USPTO on the application screen to get an overview of the process and to avoid mistakes.

Go to the next post in this series on filing a trademark application: Specimens of Use for a Service Mark. Or, proceed to step two of this series, a lesson on getting prepared to file a new trademark application.

 

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