Trademark Blog

What are the USPTO Trademark Application Form Requirements?

uspto trademark application form

The USPTO trademark application form is a legal document filed with United States Patent and Trademark Office for the purpose of seeking federal registration and protection of a trademark throughout the United States. If you’re domiciled in the U.S., you’re not required to hire an attorney to prepare and file your trademark application (although there are certainly many reasons why you may choose to). On the other hand, if you’re a “foreign-domiciled” individual or entity, you must retain a U.S.-licensed attorney to prepare the USPTO trademark application form and submit it on your behalf.

What is a Trademark Appeal? How Do I File One with the TTAB?

trademark appeal

You have the option of filing a trademark appeal with the Trademark Trial and Appeal Board (TTAB) when the examining attorney issues a final refusal to federally register your mark. For example, let’s say you file a trademark application and the examining attorney sends you a trademark office action refusing registration of your trademark on the basis that there’s a likelihood of confusion with another mark that’s already registered. In order to attempt to overcome the rejection, you research, prepare, and submit arguments and evidence to the examining attorney pointing out all of the differences between the two marks and detailing why your trademark application should be approved. A few weeks later, you receive a final office action from the examining attorney indicating that he did not find your arguments persuasive and that he’s now making his refusal to register your trademark final.

Should I File a Request for Reconsideration With the Trademark Office?

request for reconsideration

A Request for Reconsideration comes into play when the examining attorney in charge of reviewing your trademark application issues a trademark office action indicating that the refusal to register your mark has now been made final. A Request for Reconsideration is generally used for three different purposes:

What is a Trademark Office Action and How Do I Respond to One?

trademark office action

During the US trademark application process, the United States Patent and Trademark Office (USPTO) may send you a trademark office action. A trademark office action is a communication from an examining attorney indicating why your trademark application cannot be approved. A non-final office action is typically issued after the examining attorney (1) reviews your trademark application, (2) reviews the Statement of Use, and/or (3) reviews an Amendment to Allege Use. In general, if your trademark application was filed directly with the USPTO, then you must respond to the trademark office action within three months of it being sent (or six months if you timely filed a Request for an Extension of Time to File a Response). On the other hand, if you’re seeking an extension of protection of your trademark in the United States through WIPO and the Madrid Protocol, then you must respond to the trademark office action within six months of it being sent.

If you don’t file a response by the deadline, your trademark application will go abandoned and you’ll be forced to begin the trademark registration process all over again (unless you’re eligible to file a Petition to Revive).

Is LegalZoom Good for Performing My Trademark Search?

Over the years, many people have asked me the question, “Is LegalZoom good for performing a trademark search?” You may already be familiar with LegalZoom, the do-it-yourself trademark service that markets itself as providing “self-help services at your specific direction.” Contrary to what many people believe, LegalZoom is not a law firm and it can’t provide any legal advice or guidance. This is precisely the reason why you should think twice about using LegalZoom to perform your US trademark search.

There’s no question that LegalZoom offers trademark search services at prices that are cheaper than what most trademark attorneys would charge. But, that doesn’t mean LegalZoom is a good value. The following is a true story that vividly illustrates what you’re actually getting when you make the unfortunate decision to purchase trademark search services from LegalZoom.