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 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 six different trademark application forms on its website. Two of them are used to apply to register a trademark on the Principal Register (referred to as the “TEAS Standard” and “TEAS Plus” forms). Because most people who want to federally register a trademark would use one of these two forms, I’m going to focus this article solely on these two forms.
Having said that, you should be aware that the USPTO 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?
Regardless of whether you chose TEAS Standard or TEAS Plus, the first section of the USPTO trademark application form requires you to provide the full legal name, 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). A trademark application is considered null and void if anyone other than the proper applicant is named.
You can also provide a phone number, fax number, and some other basic information regarding the applicant. However, all of this is optional and, in my opinion, there’s no compelling reason to provide it.
What is the Trademark?
Again, regardless of whether you selected TEAS Standard or TEAS Plus, the second section of the USPTO trademark application form requires that you enter the 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.
- Sound mark – 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).
This section also gives you the opportunity to enter a variety of additional statements into the application form that may be relevant to your trademark. This is where the difference between selecting TEAS Standard and TEAS Plus first comes into play.
If you chose TEAS Standard, then you’re not required to enter any of these additional statements prior to filing your application (although the examining attorney may require you to do so after reviewing your application).
In contrast, if you chose TEAS Plus, then you’re required to provide certain additional statements if they happen to apply to your application. If you fail to provide them and the examining attorney later determines that you should have, then you’ll have to pay a deficiency fee before your application will be approved.
What are the Products/Services?
The third section of the USPTO trademark application form requires that you identify the products and/or services for which you want your trademark registered. How you do this depends on whether you selected the TEAS Standard or TEAS Plus form.
On the other hand, if you chose TEAS Standard, then you can either (1) select your products/services from the ID Manual, or (2) write your own custom description of products/services (which may later require revision so as to comply with the USPTO’s rules). You’re also only required to pay for one class of products/services at the time you file the application. If the examining attorney later determines that your products/services fall into multiple classes, you’ll either have to pay additional fees, or limit your application to products or services that fall into a single class.
What is the Filing Basis?
The USPTO trademark application form provides four 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)
Each filing basis has its own distinct requirements. In most cases, applicants based in the United States will select either Section 1(a) or Section 1(b).
If you chose TEAS Standard, you’re not required to select any filing basis prior to filing the trademark application (although the examining attorney will later require you to select a proper filing basis and to meet all requirements for the filing basis). Nevertheless, I would still strongly recommend selecting a proper filing basis and providing all of the required information and materials for the filing basis before submitting the application. This will help avoid unnecessary delays in the processing of your application.
If you chose TEAS Plus, you must (1) select at least one proper filing basis for each product/service recited in your application, and (2) meet all requirements for each filing basis prior to submitting the trademark application.
Finalizing and Filing the USPTO Trademark Application Form
In the final section of the USPTO trademark application form, you must supply the contact information of the person with whom the USPTO should correspond regarding the application. The applicant (or its authorized representative or attorney) must then electronically sign the application and file it along with the appropriate government fee. Once submitted, you’ll receive an email confirmation containing a copy of the trademark application and its assigned serial number.
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 the delay or denial of your application, severely limit the scope of your trademark protection, or even result in the 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 (firstname.lastname@example.org). I look forward to hearing from you soon.