Welcome to our seventh blog in the How to Make Money with Trademarks series. In our last blog, How to Apply for a Trademark, we talked about the actual questions that you will need to be prepared to answer when completing your federal trademark application. In this blog, we will continue our discussion on How to Apply for a Trademark by sharing more questions that you will see within your federal trademark application.
How to Apply for a Trademark
In our last post, we discussed the following elements to the federal trademark application:
- Ownership of the mark
- Contact Information
- Information regarding the Mark
In this post, we will talk about three more questions you will need to be prepared to answer in your trademark application.
What is the Filing Basis?
Your federal trademark application will require that you specify your “filing basis.” The filing basis let’s you tell the government if you are filing to register a mark that you are currently using in commerce or for a mark that you plan to use in the future. For example, if you already have a website and are actively promoting your goods and services, you would likely want to list your filing basis as “in use” since you are already using the mark. On the other hand, if you are registering a mark that you haven’t started using yet, you would want to use an “intent to use” filing basis.
Keep in mind that it is not enough to say that you are currently using the mark. You will have to provide the government with actual dates as well as an example, or specimen, of your actual use of the mark in the application. We will discuss the requirements for a specimen further in this article.
How are you using the Mark?
Filing to register your trademark with the federal government does not give you unfettered rights to use your mark (name, logo or slogan) in any way that you want. Instead, you have to file for ownership of the mark within different “categories” which the government refers to as international classes. In your federal trademark application, you will need to list specifically which goods and services you are using (or plan to use if it is an intent to use application) with your brand.
This step is very important because you will not be able to go back and add additional goods and services unless you pay an additional fee. Whenever we are meeting with clients, our firm undergoes a detailed legal analysis to determine exactly which international classes would provide our clients with maximum legal protection based on their current and anticipated use of their mark.
What is your Specimen?
One of the last components to your federal trademark application will be submitting a specimen for the government to review with your application. A specimen is an actual showcase of the mark being used “in commerce.” A specimen cannot simply be a digital rendering or mock-up. For example, a t-shirt company would need to submit an image of an actual shirt featuring the logo of the brand that they are trying to register. A 3D image or rendering of the photo in Adobe Photoshop likely would not be sufficient. In the event that you are filing an “in use” application, the government wants to see an example of how you are actually using your mark in commerce as proof in support of your claim for ownership.
Now that we understand what applying for a federal trademark entails, we will continue our series by discussing how to license your trademark in our next blog.