Each year, more than 700.000 trademark applications are filed with the United States Trademark and Patent Office (USPTO). To make this process easier, it is best to explore all your filing options in advance. This article outlines key considerations before filing a trademark application.

Federal or State Trademark Registration

You can file a trademark application on a federal or a state level. Most businesses apply for federal trademark application, which, if registered, is valid in all 50 states of the U.S. Local businesses, such as single restaurants, tailors, that operate in one city, county or state, may consider filing state trademark application. Usually, state trademark registration is cheaper, faster, but at the same time limits its protection only to one state.

Principal or Supplemental Trademark Register

A federal trademark can be registered in the principal or supplemental register. The principal register is the default trademark register.

However, in some cases, the trademark cannot be registered in the principal register (for instance, if the trademark is descriptive).

In such a situation, you can register the trademark in the supplemental register. Then, if the trademark gains distinctiveness through use, it can be registered in the principal register later, usually after 5 years and more.

So, when applying for a trademark, consider whether you need federal or only state trademark and, if applying for a federal trademark, estimate whether to apply to principal or supplemental register. In addition, even if you initially apply to a principal register, and during examination get Office Action on the ground of descriptiveness, in most cases you can amend you trademark from principal to supplemental register.

Trademark application: used based or intent to use trademark application

When applying to the federal principal register, you have to choose your basis of filing. If you have been already using the trademark on the date of filing, there is an option to file used based application. This means:

• You shall file specimens (examples) of trademark usage within the application.

• If the examiner approves your application, your trademark will be registered (as opposed to intent to use application, see below).

If you are only planning to use a trademark, you shall file intent to use trademark application. This means:

• You declare that you have good faith intent to use trademark in commerce.

• If the examiner approves your application, you will receive Notice of Allowance. Then you need to submit specimen (example of the use) and pay the government fee for such filing. Only after approval of your specimen by the examiner, your trademark will be registered. Therefore, in general intent to use trademark registration process is more expensive.

Goods and Services

Trademarks are registered for certain goods or services, so you must clarify these in your trademark application. The identification of goods and services should be specific and definite. If not, you may receive an Office Action.

All goods and services are classified according to 45 classes of international classification. Most government fees you need to pay depend on the number of classes. For instance, if you apply for a trademark in 2 classes: 25 (t-shirts) and 41 (entertainment services), you will be required to pay $700 government filing fee ($350 per class). If in the future you will decide to extend the range of your goods and services, there might be a need to file a new trademark application for the new goods/services.

Trademark Search

There are various grounds for refusal of trademark registration: trademark is descriptive, trademark is a surname, goods/services are defined ambiguously, and other grounds.

One of the most common is the likelihood of confusion with third-party trademarks. To mitigate the risk of refusal on this ground, it is recommended to conduct trademark search prior to registration. Trademark search report includes the list of trademarks already registered on the name of other trademark holders, trademarks filed for registration (pending trademarks). Additionally, such report may include information on state trademark registration and common law trademark rights.

After conducting a trademark search, it is recommended that you contact your trademark attorney to discuss possible risks and ways to overcome them. For instance, a trademark attorney may advise you to narrow the goods or services claimed in the trademark application, slightly alter the trademark, and, in some cases, even change it.

To sum up, for a successful and efficient registration, it is essential to consider certain factors even before starting the filing a trademark application.

Conducting trademark searches, carefully choosing the right level of registration and the register itself, selecting the type of filing, and claiming a specific list of goods and services will increase your chances of a smooth and satisfactory registration and might also save you time and money.