Filing a Trademark Application

In order to register a trademark with the PTO, an application must be filed. The application requires basic information, such as the following:

• The owner of the mark, the identity or the owner (e.g., individual or corporation), and contact information for the owner.
• A drawing of the mark, which is basically a depiction of the mark. For marks consisting of standard letters or marks, a standard character drawing is submitted. Basically, to submit a standard character drawing, the mark just needs to be typed out. For marks containing stylization or a design, a special form drawing must be submitted.
• The goods or services that the applicant uses with the mark (for a use-based application) or that the applicant intends to use with the mark (for an intent-to-use application).
  • The goods or services listed in an application must be classified in International Classes. The classification system is simply an internal system used by the U.S. Patent and Trademark Office to organize and keep track of marks. Because an applicant is charged an additional fee per class, applicants often want to know what the classes are and how many classes their goods or services fall into. Currently, there are 45 classes (classes 1-34 pertain to goods and classes 35-45 pertain to services).

1. Chemicals 2. Paints 3. Cosmetics and cleaning preparations 4. Lubricants and fuels 5. Pharmaceuticals 6. Metal goods 7. Machinery 8. Hand tools 9. Electrical and scientific apparatus 10. Medical apparatus 11. Environmental control apparatus 12. Vehicles 13. Firearms 14. Jewelry 15. Musical instruments

16. Paper goods and printed matter 17. Rubber goods 18. Leather goods 19. Non-metallic building materials 20. Furniture and articles not otherwise classified 21. Housewares and glass 22. Cordage and fibers 23. Yarns and threads 24. Fabrics 25. Clothing 26. Fancy goods 27. Floor coverings 28. Toys and sporting goods 29. Meats and processed foods 30. Staple foods

31. Natural agricultural products 32. Light beverages 33. Wines and spirits 34. Smokers’ articles 35. Advertising and business 36. Insurance and financial 37. Building construction and repair 38. Telecommunications 39. Transportation and storage 40. Treatment of materials 41. Education and entertainment 42. Computer, scientific and legal 43. Hotels and restaurants 44. Medical, beauty and agricultural 45. Personal

For more information on the PTO’s classification system, please visit the PTO’s discussion of classes at http://tess2.uspto.gov/tmdb/tmep/1400.htm. In addition, the PTO’s website offers a searchable Acceptable Identification of Goods and Services Manual. The manual provides examples of identifications that the PTO deems acceptable and tells you what class those identifications belong in. The Acceptable Identification of Goods and Services Manual is available at http://tess2.uspto.gov/netahtml/tidm.html.

• The filing basis for each good or service listed in the identification. In other words, whether the applicant is already using the good or service with the mark (a Section 1(a) use-based application); whether the applicant intends to use the good or service with the mark (a Section 1(b) intent-to-use application); whether the applicant has a foreign trademark application for the same mark with the same good or service (a Section 44(d) application); or whether the applicant has a foreign trademark registration for the same mark with the same good or service (a Section 44(e) application).
• A specimen showing the mark as used, the date the mark was first used anywhere, and the date the mark was first used in interstate commerce. This information must be submitted either initially for a use-based application or at the time when the applicant starts using the mark for an intent-to-use application.
• Applicants often have questions about how to determine when their marks were first used anywhere versus when their marks were first used in interstate commerce. The “first use anywhere” is just what it sounds like–when did you first use your mark? The “first use in interstate commerce” is a bit more complicated. Basically, first use in interstate commerce refers to when you first (1) sold or shipped your product in or to more than one U.S. state or foreign country or (2) advertised or provided services in more than one U.S. state or foreign country. Sometimes (perhaps often) the first use anywhere date and the first use in interstate commerce dates are the same.
• A $325 filing fee for each class of goods or services contained in the application. This is a fee charged by the government, not by the Trademark Sentinel service.

We can file a trademark application on your behalf—just fill out the information contained in this form.

After an application is filed, the PTO assigns an Examining Attorney to the application. The Examining Attorney reviews the application and may issue an “office action.” An office action is a document that refuses registration of the mark based on one or more grounds. The refusals can be technical in nature, which generally can be corrected, or substantive in nature, which may be more difficult to overcome. Examples of technical refusals include an indefinite identification of goods or services or a request for a disclaimer. Examples of substantive refusals include a Section 2(d) refusal that registration of the mark would create a likelihood of confusion with an existing registration or a prior pending application or a Section 2(e) refusal that the mark is merely descriptive and therefore lacks the distinctiveness necessary for registration. If you order the complete filing package from the Trademark Sentinel service, we will respond to any issued office actions on your behalf. If you order the basic filing package and the PTO issues an office action, please contact us for a quote for responding to the issued office action.