How to File a Trademark Application. Episode 70

(This episode first aired in 2019. There have been significant changes in how trademark applications are filed, and the costs of trademark applications since 2019.)

Why Cover Trademarks?

As I mentioned in my last two episodes, this podcast primarily focuses on patents rather than other areas of intellectual property like trademarks. However, trademarks are important, and you should at least be aware of them. I decided to do a few episodes on trademarks, but I want to emphasize that trademarks could easily be the subject of an entire podcast series, just like patents. I don’t want to diminish their significance; they’re just not my primary focus.

In the first trademark episode, I discussed how to choose a name that isn’t merely descriptive and is at least suggestive of your product or business. In the last episode, I covered how to conduct a basic search to determine whether someone else already holds a trademark for your desired name or something similar. As I mentioned, a basic search on the USPTO trademark website is a good starting point, but it is not as exhaustive as the searches conducted by specialized trademark search companies or attorneys who can provide an opinion.

Now, let’s say you have done your research and want to file a trademark application. What do you do next? How do you actually file a trademark application?

Filing a Trademark Application

In theory, filing a trademark application is straightforward. It is not nearly as complex as drafting and filing a patent application. However, there are many potential pitfalls, so if you want to avoid mistakes, you might want to hire an attorney. That said, many people file trademark applications on their own, and far more people file trademarks independently than patents.

You can access the online application by searching "trademark apply online United States" in Google. One of the first links should direct you to a USPTO.gov website about applying online. Clicking that link will take you to a page where it says "Apply Online," with a link for first-time filers that says "Get Basic Information Before Filing." I recommend clicking that link and reviewing all the information available. The USPTO provides many instructional videos about the process.

If you want to proceed with filing, you should find a link on that page to begin your application. The current website is www.uspto.gov/trademarks/teas/index.jsp, though this may change over time. You should always find the latest links directly from the USPTO website.

Understanding Filing Fees

You will see that there are three different filing options with different fees: TEAS Plus, TEAS Reduced Fee, and TEAS Regular. Currently, the costs are $225, $275, and $400, respectively.

Most applicants should be able to file under TEAS Plus or TEAS Reduced Fee if they are completing everything online. The primary difference between the $225 and $275 options is how you select your goods and services.

For example, if you want a trademark for hats and shirts, the USPTO already has a predefined manual with codes and descriptions for these items. If you agree to use only the goods and services descriptions from this manual, you can file under TEAS Plus for $225. However, if you need to describe your goods or services in a way that isn't covered in the manual, you must pay $275 under TEAS Reduced Fee.

Some applicants prefer the $275 option to be safe, while others choose to save $50 by using only predefined descriptions. For simplicity, I will walk through the TEAS Plus application.

Starting Your Application

Click the option under "Initial Application Form" for the TEAS Plus application. The interface may change in future years, but the general process should remain similar.

The first question asks whether an attorney is filing the application. Click "No."

The next question asks whether you have a saved file. If you are starting from scratch, do not select a file, and then click "Continue."

Providing Applicant Information

You must enter the owner of the mark. If you are filing as an individual, enter your name. If a company owns the mark, select the appropriate business type, such as a corporation or LLC. I will select "Individual" for simplicity. A dropdown menu will appear for selecting your country of citizenship. I will choose "United States."

Next, fill in your address, phone number, fax number (if applicable), email, and website. Required fields are marked with a red asterisk. The form includes links to instructional videos if you need help.

Click "Continue" to proceed.

Providing Trademark Information

On the next page, you must specify your mark type. The three options are "Standard Characters," "Special Form," and "Sound Mark."

• "Standard Characters" applies when the name itself is trademarked, regardless of font, size, or style.

• "Special Form" applies when you want to trademark a specific logo or stylized version of the mark.

• "Sound Mark" applies if you are registering a sound (like the NBC chime).

For simplicity, I will select "Standard Characters." Enter your desired trademark, such as "BlingMe," and click "Continue."

You will see a section for additional statements, but this generally does not apply to TEAS Plus applications. However, some marks require special statements, such as those containing foreign translations, names of living individuals, or geographical indicators.

Click "Continue."

Selecting Goods and Services

Click "Add Goods/Services," and a search bar will appear. Enter "shirts." A list of shirt-related descriptions will appear, with most marked as "International Class 25." Select the descriptions that match your intended use.

Repeat this process for other items, such as "hats," "pants," and "sweatshirts." As long as all items fall under the same class (e.g., Class 25), you will pay a single fee. If you select goods from multiple classes, additional fees will apply.

Once you have selected all applicable goods and services, click "Insert Checked Entries."

Choosing a Filing Basis

Now, select the appropriate filing basis:

• Section 1(a): If you are already using the mark in commerce, select this option.

• Section 1(b): If you intend to use the mark in the future but have not yet used it in commerce, select this option.

If filing under Section 1(a), you must attach a specimen (evidence of the mark in use). Click "Attach or Remove Specimen" to upload an image (e.g., a JPEG of your mark on a clothing tag). Then, enter a brief description, such as "Tag on the collar of a shirt showing the mark."

You must also provide two dates:

1. First use anywhere: The earliest date you used the mark.

2. First use in commerce: The first date the mark was used in interstate commerce.

   
   

Click "Assign Filing Basis" and proceed.

Final Steps and Submission

Enter correspondence information. Read the declaration, check the necessary boxes, and sign electronically by entering your name between forward slashes (e.g., "/John Doe/").

Click "Validate," enter your email, and select "Pay/Submit." Choose a payment method (credit card is easiest), then submit your application.

I’m Adam Diament, and until next time, keep on inventing!