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:
- the date of first use in commerce for each product or service; and
- a specimen of use for each product or service.
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:
- type of entity (e.g., corporation, limited liability company, etc.)
- state of incorporation
- business address
- name and title of person authorized to sign the trademark application
If the applicant is an individual person, you will need to identify:
- name of individual
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.