Although the PTO will still accept a trademark application submitted by hard copy, the
office greatly prefers that filing be done online through its TEAS system. An application
must include some basic information, such as the name of the applicant, a name and
address for correspondence, a depiction of the mark, a description of goods and/or
services, the basis for filing (i.e., use or intent to use), a specimen of use (for use-based
applications), a signature, and the appropriate filing fee. Upon filing, the PTO generates
an electronic receipt, which is sent to the email address provided in the application for
receiving correspondence. For applications submitted online, the application date is the
date when the application reaches the PTO’s server.
The fact that you have submitted a filing does not mean that you have fulfilled all of
the PTO’s requirements, or that you have a federal trademark registration. To obtain a
federal trademark registration, an applicant must satisfy all of the PTO’s filing
requirements, and overcome any objections or refusals issued by the Examining Attorney
during examination. Office Action refusals are often difficult to understand or overcome
without the assistance of a trademark attorney, and many issues may be avoided entirely
by involving a trademark lawyer in the trademark filing process as early as possible.
During the application process, you will be asked other questions, such as whether the
mark is a “Stylized or Special Form” drawing, and whether you wish to claim any rights
to colors included in the mark. The PTO has rules governing claims to colors and
other design elements. You or your trademark attorney must also supply a description
of the goods or services to be offered in connection with the trademark. The importance
of properly wording the description of goods and services cannot be overstated. An
overly broad claim of rights may result in the later cancellation of a mark for fraud, if goods or services not offered by the applicant are improperly claimed. On the other hand, once filed, the scope of rights claimed cannot be broadened.
