Maiorana, P.C.

Trademark Attorneys

When Should I File For A Trademark Registration?

I sometimes get questions from clients asking when to file a trademark application. This is especially interesting when a client has an idea for what they want to use as a trademark, but have not established actual use. Actual use in terms of a trademark application is when the mark was first used in interstate commerce. Another date that is important is the first use anywhere. Both of these are needed when filing an actual use mark under 15 U.S.C. 1051, Section 1(a).

With an actual use mark we need to submit both a drawing and a specimen. The specimen is normally a picture of the goods that show the mark.

If there is concern whether the mark has already been used, and if a trademark registration is even possible, filing as an intent-to-use application under 15 U.S.C. 1051, Section 1(b) is a good first step. We still need to file a drawing, but we do not need to send in a specimen, since there has not been an actual use established. The intent-to-use application is a good starting point, and allows us to complete the examination to see if there are other marks that may be competing with your mark. If we pass the examination process, then we need to establish actual use within about six months of the completion of the trademark examination process.

So what other information is needed to file a Federal Trademark application? The exact information needed might vary depending on your scenario and what you plan to do. Evaluating your specific situation is our job as an affordable trademark attorney. There are a few things that you can prepare in advance that are common to Trademark filings:

We need to know the owner of the mark. This includes a name, address, and an entity type (individual, corporation, LLC, etc.). We also need to have the country of citizenship (for an individual) or the country/state of organization.

We need to know about the mark you want to file and the associated goods and services. Your mark needs to have a name. If you want to file a logo as your mark we need to submit a copy of the logo as well. A basic description of the goods/services you provide in association with the mark can help us decide how to describe your goods/services and which international class(es)) to file under.

You can always ask one of our Affordable Trademark Lawyers for additional information. Please call us at MI - 586-498-0670 or CA - 408-890-6549

  • Chris Maiorana
  • January 2018 [1]
Topics: USPTO Trademark Process, Intent to Use, Actual Use, Intent-to-Use, 15 U.S.C. 1051, Section 1(a), Section 1(b)
Related: Trademark Registration Process, What is a Trademark Class.
[1]  Blog revised July 2019

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