1. Owner Name and Address
An owner can be an individual, corporation, LLC, trust, partnership, joint venture, or estate. This should be the person or entity that controls the trademark, by actually selling the product or services associated with the mark or by licensing it to others while retaining control through a licensing agreement. Ensuring that the proper owner is listed is extremely important because the registration could be cancelled in the future if an opponent can prove that it was not owned by the correct entity. If a corporation will own the trademark, make certain that the corporate entity is active with state government. In addition, be sure to include the exact name of the company or LLC, without abbreviations or shortened names.
2. Exact Trademark to be Registered
Each trademark application is meant for a singular item, whether it is a business name, product name, logo, or slogan. If all your marks were registered under the same application, they would only be protected when they were all featured together. For instance, your business name would always have to appear with your logo and slogan if all three were on the same application. Separating them allows for better enforcement of each mark, and it also protects against future brand changes. When you update a logo or slogan in the future, you will only have to submit trademark applications for those marks, not the business or product name.
3. Description of Goods and Services
Determining which goods and services to include on your application can be challenging, but it’s extremely important. That’s because you will only have protection for the trademark when it is associated with these goods or services. You may be tempted to include many items you don’t currently offer but might in the distant future. However, this could lead to the cancellation of your trademark application. Be sure to only include the goods or services you offer now or plan to offer within the next three years. The USPTO has language requirements when selecting your goods and services. Our team is experienced in describing your products accurately to get the broadest protections possible.
4. Filing Basis
The Filing Basis describes if and when you plan to offer the goods or services associated with the mark. The USPTO has four options:
- Actual Use 1(a)—With this filing, you must be offering the goods and services in the marketplace at the time the application is submitted. You must demonstrate that these sales are legitimate, not just to family and friends, and that you’ve had customers from more than one state. Do not claim this Use in Commerce unless you meet all the requirements.
- Intent to Use 1(b)—When you are just starting out, you may not have any sales on the books, but you’d like to reserve rights to your trademark while you work to get up and running. With this filing, you can submit your application and receive a priority date, which prohibits others from filing a similar mark later on. You will then have three years to show actual use in commerce.
- Foreign Application 44(d)—This filing states that you have submitted an application for this same trademark in another country. If the U.S. application is submitted within six months of the foreign application, you can use the earlier priority date on your U.S. trademark application.
- Foreign Registration 44(e)—This means that your trademark has actually been registered in another country. This could be ground for approval by the USPTO, even if you have not yet offered the goods or services in the U.S. marketplace.
5. Signature of Application
The decision about who should sign the trademark application isn’t always obvious. If the trademark will be owned by a corporation or LLC, the signatory must be a corporate officer with the authority to bind. They must also have knowledge of the facts of the trademark, as the application includes a sworn statement that the person signing it knows that the company sells, or has the intent to sell, goods or services.
If you are an individual seeking trademark ownership, do not let anyone else sign the application on your behalf. Though it is possible to use Power of Attorney to have someone else sign for you, it’s often not necessary and could cause legal issues down the road. In addition, do not have your attorney sign the trademark application.