question.jpgIn Trademarks

What are the parts of a trademark application?

There are eight basic parts to a federal trademark application:

(1) The applicant’s name (the name of the owner of the mark).

(2) The name and address to be used by the United States Patent and Trademark Office (commonly referred to as the PTO) for correspondence. This is generally the applicant or the applicant’s attorney.

(3) A depiction of the mark, known as the drawing - very trademark application must include a clear drawing of the mark. This drawing is used by the PTO in its search database and for publication in the Official Gazette if the application is granted and for a registration certificate if the mark is registered.

(4) An identification of the relevant goods and services. This is a statement, in clear terms using common commercial names and language, which identifies what goods and/or services the applicant uses (or intends to use) the mark with. This description can be clarified or limited later in the application process, but it cannot be expanded or broadened once an application is filed (i.e., a new second application would have to be filed to cover those additional goods and services).

(5) The application filing fee, which is determined based upon the goods and services identified in the application (and the more goods and services, the higher the fee).

(6) The basis for filing the application. An application for federal trademark registration must be based upon one of two things - either actual use in commerce or an intent to use the mark in commerce (there is a third basis for filing an application, rarely used, which is based on a foreign application or registration for the same mark). ”Use in commerce” means that the mark is being used commercially in the United States. For goods, such use would include putting the mark on the goods’ container or a display associated with the goods, whereas for services, use in commerce would include displaying the mark in the sale and advertising of the services.

(7) When the application is based on actual use in commerce, the application must include a specimen of the trademark, which is a sample of how the applicant uses the mark. Examples of appropriate specimen includes a sample product packaging showing the mark being used on the packaging, or a photograph of the goods showing the use of the mark on the goods (the actual goods should not be sent to the PTO). When the application is based on an intent to use, the specimen is not filed with the application (since the mark is not being used yet) but is later filed along with the statement of use.

(8) The applicant’s signature.