What we need to file your trademark application

What information do you need to provide for us to file your trademark application?

Since we get these questions all the time, we thought it would be helpful to provide a simple guide on what we need to file your trademark application. Certain parts of the trademark application will require strategic considerations, so give careful thoughts to those particular issues before filing.

Word mark, logo or both?

At the outset, we need to determine if you want to protect the wording without regard to any design. If so, we should apply for the word mark in standard character format where we simply type the letters and any acceptable symbols (e.g., ! @ # $ % & * + =).

If you wish to apply for a logo that may contain any design elements along with wording in a particular font or stylized, then we should apply for a design mark. We will require a JPG file of the mark either in color or black-and-white. We generally recommend filing design marks in black-and-white without a color claim, which enables you to use any colors when you actually use the mark in connection selling your goods or services.

Of course, you have the option of filing for both the word mark and the design mark by filing two separate applications.

What are the goods and/or services?

You will want to send a list of all desired goods and services you wish to cover in the application for your particular mark. Keep in mind that you cannot broaden the scope of goods or services after the initial filing of the application. You can only delete or clarify the items in your original identification of goods/services. So, it’s best to start off broad and then subsequently narrow the list if necessary.

Filing basis: use-in-commerce or intent-to-use

You are required to indicate whether the mark has been used on your specified goods and services, or if you intend to use the mark in the near future. If the mark is already in use, then we will need:

If the mark has not yet been used, we can file an Intent-to-Use (ITU) application without having to submit dates of use or any specimens upfront. We will eventually have to provide such dates and specimens after you begin using the mark.

Who is the applicant?

It seems straightforward, but the identity of the trademark owner can be a bit tricky. Most likely, the applicant will be the person or company that is, or will be, selling the goods or services. If a trademark is being licensed to others who are selling the goods or services, then the question of “Who owns the trademark?” will depend upon the person or company that is in charge of quality control.

If the applicant is a company, you will need to identify:

If the applicant is an individual person, you will need to identify:

  • name of individual
  • residence

If you’re about to incorporate, should you file a trademark application before or after entity formation?

We generally recommend waiting until after your entity is incorporated before filing a trademark application, especially if you are planning on filing an Intent-to-Use application. ITU applications cannot be easily transferred from one owner to another prior to filing evidence of use.

For example, supposed you initially file an ITU application on behalf of yourself as an individual and then wish to transfer the ITU application to your newly formed company. The USPTO generally prohibits such transfers of ownership of ITU applications until after usage has been made by the original applicant. The exception is when the entire business is being acquired by or merged into a successor.

To avoid this quandary, wait until after incorporation and then file the trademark application identifying your new company as the applicant. Then you will not have to deal with transferring the trademark application to a new entity.

Ready to file a trademark application?

Reach out to patent and trademark attorney Vic Lin by email or call (949) 223-9623 to see how we can help you remove the obstacles blocking you from registering your trademark.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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