Useful Links

Search for Registered Trademarks Check Status of an Application if serial number is known Trademark Manual of Examining Procedure (TMEP) Trademark Identification Manual USPTO Forms Directory Trademark Classes simplified list Trademark Classes USPTO's explaination Trademark Trial and Appeal Board Inquiry System

Trademark Registration Applications

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First Things First

• REVIEW  "Basic Trademark Concepts" - an explaination of the concepts that must be understood before attempting to prepare a registration application.   Also, review the link that is given to the client in the opening email describing the Clinic's trademark services.


• OPENING EMAIL. Send an opening email to the client using THIS trademark-specific template.  Make the subject line read "file opening - trademarks".


• INFORMATION REQUEST EMAIL - Send an email to the client asking him or her to fill out and return the trademark questionnaire. CLICK HERE.  For the temple to use in creating the email.  CLICK HERE to download the questionnaire that will be attached to that email  (CLICK HERE for the Spanish version of the questionnaire).


• After the client returns the questionnaire call the client on the phone IF any of the answers are incomplete or ambiguous

Create Your Personal USPTO Account:

• To create your personal user account CLICK HERE - Use your FIU email address when prompted.  Note: part of the creation process is a one-time identity verification procedure (click here for information).


• Designating Your "User Role": 
  
  
  • AFTER you create your personal user account your "user role" must be designated
  
  
  • This happens AFTER you have logged-in to your new user account by clicking a link to one of USPTO'S on-line forms.  To make this easy, here is a link to USPTO's Trademark Center.  Once you are on that page click the link to for Apply to Register a Trademark
  
  
  • At this point you will not actually be filing anything but after clicking the link you should be prompted to select your "user roll" - choose "Attorney Support Staff".  Then, exit the form.  Doing that will allow your supervisor to add you to his "sponsorship list"


• When done designating your "user role" send a message to your supervisor to let him know so that he can add your email address to the "sponsored" list on his own USPTO account

Completing the Electronic Application

• Don't Prepare the Application Unless:


1. Mark Eligibility - You are convinced that the mark appears to be eligible for registration


2. Search for Similar Marks


• Clinic Search Policy:  Upon opening a trademark file the Clinic tells its clients that it will not conduct an extensive search for similar marks.  Clients are told that if they are concerned about that they should pay for a professional trademark search.


• Conduct a Limited Search - CLICK HERE for an article on USPTO's website on how to conduct a search for similar marks that have been previously registered.  CLICK HERE for the actual USPTO search page


3. Description of Goods or Services: 
   
   
   • You must have an adequate description of the goods or services associated with the mark.  Strive to use one or more of the pre-approved descriptions found in USPTO's searchable Trademark ID Manual.  Applicants are allowed to describe their goods and services using descriptions that are not found in the Trademark ID Manual but doing so will increase the amount of the filing fee and may delay approval approval of the application.
   
   
   • "Custom" or "Free-Form" Descriptions are Allowed:  While the USPTO encourages applicants to use the pre-approved descriptions from the Trademark ID Manual to streamline the process, you are not strictly limited to them.  You can draft your own "custom" or "free-form" descriptions. - BUT, IF POSSIBLE, TRY NOT TO DO THAT - final approval could be delayed and additional fees will be charged. Here's a breakdown:
   
   
   • Additional Fees: If you use descriptions that are not taken directly from the USPTO's Trademark ID Manual, even if the goods or services are listed in the manual but you enter them in a free-form manner, you will incur an additional fee of $200 per class. This fee applies across all classes, even if some classes use approved ID Manual descriptions.
   
   
   • Requirements for Custom Descriptions: Any description you provide, whether from the Trademark ID Manual or custom-drafted, must still be:
   
   
   • Specific, definite, clear, accurate, and concise. Vague terms are generally not accepted.
   • Understandable to the average person. Lengthy descriptions of characteristics or uses are typically not accepted.
   • Properly classified within a single international class.
   
   
   • Reasons for Using Custom Descriptions:
   
   
   • Sometimes, the ID Manual descriptions may not accurately or completely describe a particular good or service, especially with new technologies or niche offerings.
   
   
   • Applicants may want to use broader terminology to avoid broadcasting exact offerings, though this can sometimes lead to issues if too broad.
   
   
   • Consequences of Non-Compliance:
   
   
   • Using overly broad or vague descriptions can lead to an "Office Action" from the examining attorney, requiring you to amend the description, which can delay the application process.
   
   
   • Applications that don't meet all base application requirements (which can include identification-related deficiencies) may incur an additional $100 surcharge per class.
   
   
4. Adequate specimens:
   
   
   • Unless the application is to filed on an "intent to use" basis it must include digital images called "specimens" that prove the mark is being used "in commerce".    Don't prepare the application until you have adequate specimens
   
   
   • For "Services"
   
   
   • Specimens can include images that show the mark being used in marketing, advertising, business cards, websites, etc.
   
   
   • Screen captures from a website are the most common type of specimen when it is services being sold.  CAPTURE THE ENTIRE PAGE (NOT JUST THE INTIAL SCREEN THAT IS DISPLAYED.  Also, insert the page's URL and the access date for the screen capture.  The Firefox "page saver WE" extension does a good job.  other Browsers can do the same thing.  Check with your supervisor if you are having trouble doing this. BY YOUR BROWSER)
   
   
   • For "goods"
   
   
   • The specimens MUST show the mark being used on the goods themselves (where and how a consumer would expect to see it).
   
   
   • Specimens for sale of goods can be digital images showing the mark being used on labels, hang tag or packaging.
   
   
   • Specimen for sale of goods can also be a webpage screen capture, BUT, it must show a means for ordering the goods such as a "shopping cart" button/link, an order form, or a telephone number for placing orders.


• Optional "CYA" type communications before delivering application


• CYA Email When Application Will Be "Intent to Use":  An email should be sent to the client before the student delivers a digital Intent to Use application.  The purpose of the email is to confirm that the client wants to file the application on an "intent to use" basis.  It goes on to explain the difference from filing on the normal "used in commerce" basis.  USE THIS TEMPLATE when drafting that email.


• CYA Email if Mark is Borderline "Merely Descriptive".  If the proposed trademark seems that it might possibly be rejected by USPTO because it is "merely descriptive" but it is a close call and the client wants to file anyway, send a CYA type email to the client before delivering the completed application.  The purpose of the email is to disclose the problem and confirm that the client wants to proceed anyway.  The email goes on to explain that if the application is initially rejected USPTO will allow the application to be amended to the "supplemental registery" (as opposed to the normal "principal register").  USE THIS TEMPLATE when drafting that email.


• CYA Email When Mark Includes a Surname.   CLICK HERE for the email template.


• CYA Email if Specimens are Only Marginally Adequate:  If the specimens are marginal but the client wants to file the application anyway sent a CYA type email to the client before delivering the application.  USE THIS TEMPLATE for the message.


• CYA Email Where a Taglines is Being Registered  Taglines that may be interpreted as "informational" might be rejected.  Click Here to see the relevant chapter of the official trademark examiner's manual.  In such cases a CYA type email should be sent to the client giving him or her the "heads up" that the application might be rejected on those grounds.  CLICK HERE for the template to use for creating the message.


• Prepare the Application:


• CLICK HERE to go to the Trademark Center page


• Click "Apply to Register a Trademark" (log in to your account if prompted)


• Follow the instructions to complete the application (fill in the "attorney" information with your supervisor's information>


• DON'T INCLUDE THE CLIENT'S PHONE NUMBER


• At anytime you can click "save" to save the draft.


• "Declaration and Signature" page  On the "Declaration and Signature" page don't fill in the text blocks for the actual electronic signature  (your supervisor will be the one who electronically signs the application, not you).


• CREATING PDF COPY:  Create a PDF copy of the application to share with the client (on page for entering "signature method" click the button for "download application preview".  Save the resulting "preview.pdf" file so that you can later attach it to your email to the client asking for the credit card information.


• When done editing click "exit".  (you can do this whether you have completed the form or not).  Doing this will take you to the "Drafts and Dockets" page where you can find the drafts that you have previously saved


• To share a draft with your supervisor click "send" in the "share" column


• CREDIT CARD INFORMATION REQUEST.  Send an email asking the client to provide his or her credit card information.  CLICK HERE for the template to use in creating that email.  Attach to that email a PDF copy of the application (see the instructions above for creating it).  The specific information needed is as follows:


• name on card
• card number
• expiration date
• security code
• address used for that card