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 do so). 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 Should I Do Before Preparing the USPTO Trademark Application Form?
Before even applying to federally register your trademark, there are two very important steps you should take to avoid wasting time and money:
- Ensure that your trademark doesn’t fall into one of the many categories of trademarks that are ineligible for registration under any circumstances. You may need to consult with a trademark attorney to determine whether your mark does or not.
- Conduct a comprehensive federal trademark search to determine whether there’s a likelihood of confusion between your mark and another mark that’s already registered or pending registration.
If your trademark isn’t eligible for registration, or a likelihood of confusion exists with another mark, the USPTO will reject your trademark application and you’ll lose the filing fee you paid when you submitted it.
Which USPTO Trademark Application Form Do I Use?
The USPTO actually provides five different trademark application forms through its Trademark Center. One of them is used to apply to register a trademark on the Principal Register. Because most people who want to federally register a trademark would use this form, I’m going to focus this article solely on this form.
Having said that, you should be aware that Trademark Center provides a separate application form to seek registration of a trademark on the Supplemental Register (which is hardly every used and should probably just be deleted). The other three USPTO trademark application forms are used to register certification marks, collective membership marks, and collective trademarks.
If you have any doubt about which form to use, you should speak with an experienced trademark attorney so that you don’t flush money down the drain by filing the wrong form.
Who is the Applicant?
The first section of the USPTO trademark application form requires you to provide the full legal name, mailing address, domicile address, and email address of the applicant of the trademark application. The applicant could be an individual or a legal entity. If the applicant is an individual, you must provide the individual’s country of citizenship. If the applicant is an entity, then you must indicate the precise type of entity (e.g. corporation, limited liability company, limited partnership, general partnership, non-profit corporation, etc.) and the state in which the entity is formed (if a U.S. entity) or the country in which the entity is formed (if a foreign entity). You can also provide a phone number and/or a website associated with the applicant, but doing so is optional.
A trademark application is considered null and void if anyone other than the proper applicant is named.
Who is the Correspondent?
In the second section of the USPTO trademark application form, you must supply the contact information for the person with whom the USPTO should correspond regarding the application. This is the person who is solely responsible for receiving emails from the USPTO regarding the application.
What is the Trademark?
The next section of the USPTO trademark application form requires that you (1) select the type of trademark you want to register, and (2) enter the exact trademark you want to register. The form provides three options:
- Standard Characters – You should choose this option if you want to register words, numbers, punctuation, or any other characters in the USPTO standard character set without claiming any particular font style, size, color, or logo.
- Special Form (Stylized and/or Design) – You should choose this option if you want to register anything that is not in the USPTO standard character set. This typically includes logos, words presented in a particular font style or color, or a combination of words and images. You’ll need to upload a copy of the exact trademark you want to register that complies with the USPTO’s guidelines.
- Non-Traditional Marks – You should choose this option if you want to register a mark that consists of a particular sound (e.g. the NBC chimes or the MGM lion roar), 3D product design or packaging, motion, or color (among other uncommon marks).
Once you have made your selection, the form will guide you through a series of questions pertaining to the nature of your trademark and that request specific information about your trademark. It is extremely important to provide accurate and complete responses to these questions in order to avoid delays, rejections, and additional filing fees.
What is the Filing Basis?
The next section of the USPTO trademark application form requires that you select the appropriate filing basis. The form provides five different filing bases from which to choose:
- Section 1(a) (Use in Commerce)
- Section 1(b) (Intent to Use)
- Section 44(d) (U.S. application based on a foreign application)
- Section 44(e) (U.S. application based on a foreign registration)
- A combination of two or more of the above filing bases (this is fairly uncommon)
In most cases, applicants based in the United States will select either Section 1(a) or Section 1(b).
Each filing basis has its own distinct requirements and the form will request the relevant information/materials you must provide. If you fail to provide all required information/materials, additional filing fees will apply (not to mention a rejection of your trademark application once an examining attorney at the USPTO reviews it).
What are the Products/Services?
The next section of the USPTO trademark application form requires that you identify the products and/or services for which you want your trademark registered. You have the option of (1) selecting your products/services from the Trademark ID Manual, or (2) writing your own custom description of products/services (called the “free-form entry”). Please note that if you choose the free-form entry, additional filing fees will apply.
The form then asks for additional information that may or may not be relevant to your trademark application. You should review these requests for additional information very carefully and determine whether any apply to your particular situation.
Finalizing the USPTO Trademark Application Form
Finally, you must review, verify, sign, pay for, and file the trademark application. If you submit an unsigned application (which I don’t recommend doing), additional filing fees will apply and the examining attorney will refuse registration of your trademark. Immediately after submission, you’ll receive a filing receipt and the serial number assigned to your trademark application.
Congratulations! You’ve just completed the first step in the US trademark application process.
Need Assistance with the USPTO Trademark Application Form?
Correctly preparing the USPTO trademark application form is often trickier than it might initially seem. Providing incomplete or inaccurate information can lead to (1) delays or denial of your application, (2) having to pay additional filing fees, (3) severe limitations on the scope of your trademark protection, and/or (4) potential cancellation of any resulting trademark registration. Needless to say, if you’re unsure of how to properly complete the application form, I recommended that you seek the advice of an experienced trademark attorney to increase the likelihood of successful registration.
I’m US trademark attorney Morris Turek. If you have any questions about the USPTO trademark application form itself, or are seeking the assistance of a trademark attorney to help prepare and file your trademark application, please contact me at (314) 749-4059 for your free consultation. Or, simply send me a brief message through my contact form (below) or through email (morris@yourtrademarkattorney.com). I look forward to hearing from you soon.