Filing a US trademark application

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Note: This page is intended for trademark firms located outside of the United States. If you are not with a trademark firm located outside of the United States, then this article is unlikely to be of interest to you.

What we need from you

For Oppedahl Patent Law Firm LLC to file a US trademark application for your client, we need the information listed below.

ITU or use-based? A US trademark application may be filed based upon:

For a use-based US trademark application, the actual use by the applicant of the mark in the US may be in connection with:

For a use-based US trademark application, prior to filing the US trademark application we will need to receive from you:

We will need to hear from you whether the applicant chooses to file a "use-based" or "intent-to-use" US trademark application. Clearly the simpler of the two filing bases (at the time of filing) is the intent-to-use basis, because it does not require that we provide, at the time of filing, specimens of use and dates of first use.

Filing with an ITU filing basis postpones but does not eliminate the need to provide such specimens and dates of first use, for the following reasons:

Other things we need. We will need:

The absolute minimum requirements are those listed in red above -- the full legal name, a clear drawing of the mark, and a full listing of the goods and/or services. If the minimum requirements are met, we are able to obtain a US filing date. It must be appreciated that an application containing only the minimum requirements is not a "complete" application. An incomplete application may incur additional government filing fees when the missing requirements are later provided, and may incur additional professional fees from Oppedahl Patent Law Firm LLC.

Identifying the goods/services. It is commonplace in many countries outside of the US for a trademark registration to be granted with extremely broad goods/services. For example it is commonplace for a registration to recite all possible goods in a particular international trademark class.

No such broad grants are available in the US. If an applicant files a US trademark application listing a class title (e.g. "clothing") or listing all possible goods in a particular class, it is a certainty that the USPTO will refuse registration until such time as the applicant has narrowed the identification of goods/services substantially.

When the time comes to provide specimens of use in the US (and as mentioned below, there will be such a time), the applicant will be required to sign a statement under penalty of perjury that the mark has been used in commerce in the US with respect to all of the goods/services listed in the signed statement. There are court cases in the US where an applicant who actually had used the mark only for fewer than all of the goods/services listed in the signed statement, the consequence of which was a cancelation of the registration. Stated differently, there are court cases in the US where the signed statement claimed the mark had been used in connection with goods/services for which the mark had not actually been used in US commerce, and the punishment exacted upon the applicant included cancelation of the registration.

It is thus to the applicant's advantage to file the US trademark application only for the goods/services that have been shipped in US commerce or that the applicant intends to ship in US commerce. Listing additional goods/services in a US trademark application only wastes ink and time and money.

US trademark office Examining Attorneys are trained to try to force the applicant to fit its goods/services into definitions appearing in the Trademark Acceptable Identification of Goods & Services Manual, also called "the ID Manual". This force-fit may be postponed but cannot ever be avoided. If at the time of filing the US trademark application, the applicant lists identifications drawn directly from this ID Manual, then this force-fit activity is eliminated. If, on the other hand, the application is filed with an identification of goods or services that cannot be found in the ID manual, it is nearly certain that the Examining Attorney will try to force the applicant into such an identification. The force-fit activity takes time and costs money (professional fees to Oppedahl Patent Law Firm LLC).

It is thus to the applicant's advantage, if possible, to try to find suitable identifications of goods/services in the ID Manual prior to the filing of the US trademark application. Oppedahl Patent Law Firm LLC can assist with this effort.

Paris Convention. If it is intended that the US trademark application will claim priority under the Paris Convention from a previous trademark application filed in a country outside of the US, we will need to receive:

Of course in this event, it is important that we be provided with everything that we need, well in advance of the six-month Paris Convention priority period.

Has the priority application matured into a registration? It will also be extremely helpful to know whether the priority application has matured into a registration. It will be helpful to know how soon it is expected that the priority application may mature into a registration.

(If the priority application matures into a registration, this will provides an opportunity to postpone having to provide specimens of use in the US, because of Article 6quinquies of the Paris Convention and because of Section 44(e) of the Lanham Act (the US trademark law). To pursue this opportunity, we will need a certified copy of the certificate of registration.

The grant of a US trademark registration under Section 44(e) does not eliminate the need to provide specimens of use in the US, but merely postpones that need. To keep a US trademark registration in force, specimens evidencing use of the mark in the US must be filed with the USPTO between the fifth and sixth anniversaries of the US registration date.

How will the US trademark application be signed? US law requires that the US trademark application be signed by the applicant. At Oppedahl Patent Law Firm LLC it is our preference to try to carry out each of the filing steps, including the signing by the applicant as well as the filing of the patent application with the USPTO, electronically.

For an electronically signed trademark application, we send an email message to you for you to forward by email to your client. Your client receives the email message, clicks on a link in the email message, and a web browser appears to display the trademark application. The applicant is asked to enter a character-based "signature" in a field on the web page, and to click "submit". The electronically signed trademark application then returns to us for e-filing with the USPTO.

Clearly this is a good option only for an applicant who is comfortable receiving email and viewing web pages.

The other option is for the trademark application to be signed with pen and ink on paper (by fax). On this approach, we send you a signature page as a PDF file (email attachment). You then obtain the signature from your client:

The pen-and-ink approach is a lot of extra work for us. Thus we charge a substantial additional professional fee if this approach is used. We urge any applicant to consider trying the e-signature approach.

What things cost. The cost to prepare and file a US trademark application is discussed in our schedule of trademark fees which you may find on our page for foreign associates. As you will see there, the cost includes government fees and our professional fees.

The government fees are based upon the number of trademark classes and based upon the particular type of application being filed:

(As of March 2018 the per-class government fee for a TEAS-Plus application was $225, the per-class government fee for a paper application was $600, and the per-class government fee for an electronic application that was not TEAS-Plus $400. Check our schedule of fees for up-to-date figures.)

At Oppedahl Patent Law Firm LLC it is our preference not to file on paper. Thus, nearly all of the trademark applications that we file are filed electronically. Some of the applications that we file electronically are able to qualify for TEAS-Plus treatment.

To qualify for a TEAS-Plus application, it is required that the application be absolutely complete (no missing parts and no missing information) and it is necessary that the application restrict itself to goods/services drawn directly from the ID Manual mentioned above. Every bit of information mentioned above must be provided at the time of filing to qualify for TEAS-Plus. In our experience it only rarely happens that a foreign applicant is able to provide every bit of information required for TEAS-Plus. Almost always there is at least one crucial bit of information that the applicant is able to provide to us only after the US trademark application has been filed. Thus, the majority of US trademark applications that we file for foreign applicants are filed electronically but are not TEAS-Plus applications.

The further cost after the trademark application is filed. We cannot predict whether something bad will happen (for example someone files opposition or the Examiner mails an Office Action) after the application is filed. There will be additional professional fees, and possible government fees, if something bad happens after the trademark application is filed.

If nothing bad happens then the cost for the filing of the trademark application (plus postage) is likely to be the entire cost.

We hope to get prompt and complete answers from the applicant. The professional fees quoted in our schedule of trademark fees rely upon several assumptions:

In instances where these assumptions are not satisfied the professional fee charged will be greater than the base professional fee listed in the schedule of professional fees.

Payment. Note that for any new client we will generally ask for payment in advance, prior to undertaking the work.

Does the applicant wish to receive an opinion as to whether the proposed mark is free for the applicant's use? The costs quoted and estimated above do not include searching and study to reach an opinion as to whether the mark is free for the applicant's use in the US. There are many factors which can make a difference in the answer to this question, including whether someone else already possesses common-law trademark rights in the US.

A typical first step will be to obtain a US Full Search Report from Clarivate Compumark. You or the applicant might consider obtaining a search report directly from Thomson Compumark and then you could decide whether optionally to ask our firm to study the search report and to reach an opinion as to freedom to use the mark in the US.

The importance of filing promptly. In the United States Patent and Trademark Office, it is better to have an earlier trademark application filing date. If two parties have filed for confusingly similar trademarks, the party with the earlier application filing date will have some advantages over the other party. Thus an applicant may find it preferable to file its US trademark application immediately rather than postponing such a filing until after other things have occurred, such as obtaining an opinion as to whether the mark is free for the applicant's use.

Why OPLF may be a good choice for your trademark work in the US. OPLF has substantial experience with the filing and prosecution of US trademark applications. You can see US trademark registrations handled by OPLF. We use our Feathers software to monitor the status of our client's trademark applications every day and we keep you informed of all salient developments, often within a few hours of when they have happened.