Preparing an Application for Broad Trademark Protection

What happens when you see a swoosh on a pair of shoes or a blue bird on a website? You recognize the companies behind the images and you know the quality of the products that they represent. This is what makes a trademark priceless and worth protecting for any serious business. Registering your mark with the United States Patent and Trademark Office (USPTO) can give you the ability to enforce your trademark rights nationally. However, while registration may seem as simple as filing a trademark application, the scope of protection afforded by a trademark application depends greatly on to the content of the application, and the way in which it is presented.


Trademark Information

The type of information you must provide about your trademark depends on the type of mark you would like to register. To register words or phrases without any specific stylization, those words or phrases simply need to be listed. To register design mark, such as a logo or a stylized word, an image file of the trademark along with a thorough and accurate written description of its visual elements must be provided within an application to help the assigned trademark examiner determine the trademark’s registrability. In either scenario, the USPTO is simply seeking to understand what exactly you are aiming to protect.


Ownership Information

To register a trademark with the USPTO, an applicant must first provide information about the owner of the mark. The owner may be an individual, in which case the applicant must provide the owner’s name, contact information, as well as the owner’s country of citizenship. If a trademark is being registered to a business entity, the application must include the business name, and contact information, the type of business entity and the state or country where the entity was organized, and information about the individuals who control the business entity. Though this information is fairly straightforward, it is very important to provide the accurate ownership information to avoid ownership disputes in the future.


Description of Goods or Services

The USPTO uses a classification system to categorize trademarks and to determine the amount of filing fees that must be submitted along with an application. Each of the 45 distinct classes cover a specific category of goods or services, and an applicant must identify the categories in which the applicant would like to register the mark. An applicant may choose one class or many, depending on the desired protection, however, an applicant must provide a separate filing fee for every class that is chosen. After an applicant has chosen registration classes for his trademark, the applicant must provide a written description of his goods or services so that an examiner may evaluate whether the applicant’s classification is correct. Because narrowly-drafted descriptions may result in very narrow enforcement rights and overly-broad descriptions create a risk that an application will be rejected, it is important to strike the right balance when completing this portion of the trademark application.


Evidence of Use

One of the prerequisites for registering a trademark is that it must be used in interstate commerce, such as by selling trademarked goods across state lines or to out-of-state consumers. If this requirement is satisfied before an application is submitted, the applicant will need to provide the date in which the trademark was first used, as well as the date the trademark was used in interstate commerce. The USPTO also requires a “specimen” of the trademark being used (usually in the form of photograph), which should be sufficient to show the trademark being used in connection with the goods or services described previously in the application. Applicants who have not yet satisfied the “interstate commerce” requirement can submit “intent-to-use” application to secure registration priority over later-filed applications, however, they must submit evidence of use and an additional fee before registration will be awarded.

At Gouchev Law in New York, we assist businesses of all sizes across New York City and New Jersey to protect their trademarks. For guidance on the trademark process or for help preparing your trademark application, call us at (212) 537-9209.

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Jamie Glowacki

“We use Gouchev Law for all of our legal needs. We are a NYC tech start-up in the service industry. Gouchev Law has done number Operating Agreement, dissolved a previous partnership we had, our trademark application, our Terms and Conditions and Privacy Policy, our Independent Contractor Agreement and other corporate documents. We plan on working with them as our company grows and highly recommend the firm.”

Terry Nguyen, Team Member, Techn

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