Does a USPTO trademark application require any documents?
Back in the old days, trademark applications were filed by mailing paper documents to the USPTO. Nowadays, trademark filings are filed electronically with the uspto.gov website. So do you really need to submit any documents to file your trademark application? Yes and no. You do not need to mail any paper to the USPTO like the olden days. However, you may need to submit electronic copies of certain documents and materials.
Want to file a successful trademark application that will save you time and money? Contact US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can get your trademark registered successfully.
What documents are necessary for filing a successful trademark application with the USPTO?
The question of documents all hinges on whether your trademark application is based on use in commerce, intent-to-use or a foreign trademark filing.
Assuming your trademark application is not based on a foreign filing, you will eventually need to submit evidence of use of your mark on your identified goods or services. No evidence is required upfront in an ITU application, of course, since you have not yet used the mark. In a use-based application, you must include such use evidence by submitting proper specimens of use.
If your trademark application is based on a foreign application or registration, you might be able to skip filing any specimens. Instead, you can bypass specimen requirements by submitting a copy of your foreign registration for the same trademark.
What information can be provided in a trademark application without supporting documentation?
In a USPTO trademark application, certain information that you will provide will simply be assumed. For example, the USPTO will not require documentation for the following:
- company name
- entity type
- state of incorporation
- title in the company
- date of first use in commerce.
Are you required to show trademark use on all goods or services?
No, you do not need to submit a specimen of use for every product or service identified in your trademark application. You must, however, provide at least one acceptable specimen for each class of goods and services. That means that if you have identified multiple goods in a single class, for example, at least one acceptable specimen must be submitted for that class.
At our firm, we prefer to file multiple specimens for each class to give our clients a better chance of having at least one specimen accepted by the USPTO.
Recognize that if you allege to have used your mark on several goods or services, that declaration should be true even if you choose not to submit specimens for every item. In other words, do not include a product or service you haven’t yet sold in a use-based application.
Do you have to inform the USPTO about your knowledge of other trademarks?
Trademark applications differ from patent applications in that there is no duty of disclosure. An applicant does not need to inform the USPTO of any other similar trademarks. However, every trademark applicant must sign a certain declaration about their right to use the trademark in the US.
In essence, each trademark filer must declare that, to the best of their knowledge, no one else has the right to use the mark that is being applied for. In a new USPTO trademark application, here is the declaration that each trademark applicant must sign:
To the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive.
If a trademark search was performed for your mark, the question is whether you can sign such a declaration truthfully. This is one of the reasons why it might make more sense to search only the USPTO trademark database, and not for any unregistered common law trademarks.
