Preparing Your Trademark Application

You've chosen where to file your trademark application. Now comes the critical work of preparing an accurate, complete application that won't be delayed or refused due to errors. This chapter provides a comprehensive checklist of everything you need to prepare before submitting your application to the USPTO or EUIPO.

Application Preparation Checklist

Before you start filling out forms, gather these essential components:

Owner Information Requirements

The trademark owner is the person or entity that controls the mark and the goods/services it represents. This information is permanent and cannot be changed after filing.

Entity Types

You must specify your legal entity type accurately:

Information You Must Provide

For individuals:

• Full legal name
• Citizenship (US) or nationality (EU)
• Domicile address (where you primarily reside)

For companies:

• Full legal name with entity designation (Inc., LLC, Ltd., etc.)
• State or country of incorporation/organization
• Principal place of business address

For partnerships:

• Partnership name
• Names and citizenship of general partners (US)
• State or country of organization

Domicile Address Requirements

United States (USPTO):

• Must provide your permanent legal residence or principal place of business
• Cannot be a P.O. Box alone (must include physical address)
• Must be kept current throughout the application process

European Union (EUIPO):

• Must provide address where you can be reached
• Telephone number and email address required
• User Area account for electronic communications

Representation Requirements

US Requirements:

• Foreign-domiciled applicants: MUST have a U.S.-licensed attorney represent them (mandatory as of August 3, 2019)
• US-domiciled applicants: May file pro se (represent yourself) or hire an attorney (optional)

EU Requirements:

• EEA-domiciled applicants: No representative required (EEA = EU + Iceland, Liechtenstein, Norway)
• Non-EEA applicants: Must appoint a representative for all proceedings after filing

Filing Basis (US Only)

The USPTO requires you to specify the legal basis for why you're allowed to register your trademark. The EU does not have this requirement—you can file in the EU without using the mark yet.

Four Filing Bases

Use in Commerce (Section 1(a))

Requirements:

• You must be using the mark NOW in selling/shipping goods across state lines or in providing services to out-of-state customers
• Specimen showing actual use required at filing
• Must provide dates:
  • Date of first use anywhere in the world
  • Date of first use in US interstate or foreign commerce

Examples of "use in commerce":

• Selling t-shirts with your brand name from California to customers in Texas (goods crossing state lines)
• Providing web design services from Oregon to clients in Georgia (services to out-of-state customers)
• Selling products online to customers in multiple states

Not use in commerce:

• Local sales within one state only
• Internal company use
• Token use (mock-ups or samples not offered for sale)

Intent to Use (Section 1(b))

Requirements:

• Bona fide (good faith) intent to use the mark in commerce
• Cannot register until you actually start using the mark and file a Statement of Use
• Must file Statement of Use within 6 months of receiving Notice of Allowance (can extend up to 3 years)

Examples of intent to use:

• You're developing a new product line but haven't launched yet
• You're expanding services to interstate customers soon
• You're securing a mark before investing in branding

Process:

1. File application on 1(b) basis
2. Application examined and approved
3. Receive Notice of Allowance
4. Start using mark in commerce
5. File Statement of Use with specimen and fee ($100 per class)
6. Registration issued

Foreign Application and Registration Bases

Section 44(d) - Foreign Application:

• Claim priority from a foreign application filed within the last 6 months
• Your US filing date is treated as your foreign filing date for priority purposes
• Still must prove US use or intent to use eventually

Section 44(e) - Foreign Registration:

• Based on existing registration in your country of origin
• No use in US required to register (but can be challenged for non-use after 3 years)
• Used by foreign companies entering US market

Mark Representation

How you represent your mark in the application determines the scope of protection you receive.

Standard Character vs Special Form

Standard Character Marks

USPTO:

• Typed in the appropriate field (not uploaded as image)
• Can only include characters from USPTO's standard character set:
  • Latin letters (A-Z, a-z)
  • Numbers (0-9)
  • Common punctuation and symbols
• Protects the text in any font, size, color, or style

EUIPO:

• Select "Word mark" option
• Type your mark in the text field
• Protects the text in any typeface

When to choose standard character:

• Your brand name is the most important element
• You want flexibility to change fonts and colors
• You haven't finalized a logo design yet
• You're protecting a slogan or tagline

Special Form Marks (Stylized/Figurative)

USPTO:

• Upload a JPEG image file
• Image requirements:
  • Format: JPEG only
  • Size: Between 250 and 944 pixels per side
  • Resolution: 300 DPI minimum
  • File size: Maximum 5 MB

EUIPO:

• Upload image of mark
• Accepted formats: JPEG, PNG, SVG
• Maximum file size: 10 MB
• Must clearly show all elements

When to choose special form:

• You have a distinctive logo
• Specific colors are part of your brand identity
• The stylization or design is crucial
• You're protecting the overall look and feel

Mark Description Requirements

When required:

• All special form marks must include a description
• Marks containing non-English wording
• Marks with non-standard elements

What to include:

• Describe all elements in the mark
• Explain any non-obvious features
• Identify any foreign words and provide translation
• Describe colors if claiming color as a feature

Examples:

Drawings Requirements

Your drawing is the official representation of your mark in the USPTO or EUIPO database.

USPTO Drawing Requirements

Standard Character Mark:

• No drawing file required
• Type mark in the text field
• Cannot include design elements, stylization, or color claims

Special Form Mark:

• Must submit JPEG image
• Technical specifications:
  • Format: JPEG only (.jpg)
  • Color space: RGB (for color marks) or grayscale (for black-and-white)
  • Dimensions: Between 250 and 944 pixels (height and width)
  • Resolution: At least 300 DPI
  • File size: Maximum 5 MB
  • Image must fit within a perfect square

Color vs Black-and-White:

• Black-and-white: Protects the mark in any color
• Color: Protects the mark in the specific colors shown (must also file color claim statement)

EUIPO Representation Requirements

Word Mark:

• Type your mark in the text field
• Maximum 200 characters
• Can include spaces, punctuation, standard characters

Figurative Mark:

• Upload clear image of the mark
• Accepted formats: JPEG, PNG, SVG
• Recommended size: At least 1,000 pixels on longest side
• Maximum file size: 10 MB
• Must be clear and legible

Common Drawing Mistakes

Specimens (Proof of Use)

A specimen shows how you actually use your trademark in commerce. This is different from your drawing, which just shows what the mark looks like.

When Specimens Are Required

USPTO:

• Required at filing for use-in-commerce (Section 1(a)) applications
• Required later with Statement of Use for intent-to-use (Section 1(b)) applications
• One specimen per class

EUIPO:

• NOT required at filing
• EU is registration-based, not use-based
• Proof of use only required if challenged for non-use after 5 years

Specimens for Goods

Your specimen must show the mark used on or in connection with the actual goods you're selling.

Acceptable specimens for goods:

Unacceptable specimens for goods:

• Website screenshots showing goods (not accepted for goods, only services)
• Advertising flyers or brochures
• Business cards
• Invoices or receipts (show sale, not use of mark on goods)
• Mock-ups or renderings (must show actual product)

Specimens for Services

Your specimen must show the mark used in the sale or advertising of services.

Acceptable specimens for services:

Unacceptable specimens for services:

• Specimens showing goods, not services
• Invoices alone (must show mark used in offering services)
• Social media profile pages without service information
• Website showing only company information without services

Specimen Quality Requirements

Technical requirements:

• Clear and legible
• Shows the mark as it appears in the drawing
• Submitted as JPEG (USPTO) or JPEG/PDF (EUIPO)
• Maximum file size: 5 MB (USPTO), 10 MB (EUIPO)

Content requirements:

• Mark must be visible and clear
• For goods: Mark must appear on/with the goods themselves
• For services: Must show mark used in offering or advertising the services
• Must match the goods/services identified in the application

Common Specimen Failures

Goods and Services Identification

You must identify the specific goods and/or services you're using or will use with your trademark. These must be classified according to the Nice Classification system (covered in Chapter 4).

Using Official Databases

USPTO - ID Manual:

• Searchable database of pre-approved identifications
• Access at: https://idm-tmng.uspto.gov/id-master-list-public.html
• Over 70,000 pre-approved descriptions
• Using ID Manual terms speeds up examination

EUIPO - TMclass:

• Free online tool for searching goods/services
• Access at: https://euipo.europa.eu/ec2/
• Covers all 45 Nice Classification classes
• Links to Harmonised Database for Fast Track eligibility

Harmonised Database (EUIPO Fast Track)

The Harmonised Database contains goods and services terms that have been accepted by multiple IP offices worldwide.

Fast Track benefits:

• Faster examination (approximately 4 months)
• No objections to your identifications
• Lower risk of refusal

Requirements:

• All terms must come from Harmonised Database
• Terms must be clear and precise
• Cannot use custom descriptions

When to use Fast Track:

• Your goods/services have standard descriptions
• Speed is important
• You want predictable timeline

Writing Clear Descriptions

Rules for acceptable identifications:

• Be specific and clear
• Use common terminology
• Avoid vague or overly broad terms
• Use singular form: "computer software" not "computer softwares"
• Avoid trade names: "downloadable software" not "Microsoft Word-compatible software"

Examples by industry:

Pre-Approved vs Custom Descriptions

Pre-approved (from ID Manual or TMclass):

• Faster processing
• No additional fees (USPTO TEAS Plus)
• Lower risk of objections
• Recommended whenever possible

Custom descriptions:

• Use when pre-approved terms don't fit
• May require clarification during examination
• USPTO TEAS Plus requires ID Manual terms (to use lower $250 fee)
• USPTO TEAS Standard allows custom terms ($350 fee)

Fees

Filing fees vary by office, number of classes, and application type. All fees are per class and non-refundable.

USPTO Fees

Additional US fees:

• Statement of Use: $100 per class (for intent-to-use applications)
• Extension requests: $125 per class per extension (up to 5 extensions available)

Examples:

• 1 class, TEAS Plus: $250
• 2 classes, TEAS Plus: $500
• 1 class, TEAS Standard: $350
• 3 classes, TEAS Standard: $1,050

EUIPO Fees

Special marks (EUIPO):

• Collective mark: €1,500 base fee (online) or €1,800 (paper)
• Certification mark: €1,500 base fee (online) or €1,800 (paper)

Examples:

• 1 class: €850
• 2 classes: €850 + €50 = €900
• 3 classes: €850 + €50 + €150 = €1,050
• 5 classes: €850 + €50 + (3 × €150) = €1,350

Payment Methods

USPTO:

• Credit/debit card (when filing online)
• USPTO deposit account
• Electronic Funds Transfer (EFT)

EUIPO:

• Credit card (immediate, recommended)
• Bank transfer (to Caixa Bank or Santander accounts in Alicante, Spain)
• EUIPO current account (for frequent filers, €1,000 minimum deposit)

SME Fund (EUIPO)

Small and medium-sized enterprises in the EU can receive reimbursement through the SME Fund:

• Up to 75% reimbursement of EUTM application fees
• Up to 50% reimbursement in some EU countries
• Must apply for voucher BEFORE filing trademark application
• Allow 3-4 weeks for voucher processing

Application Forms

Different forms are available depending on your situation and needs.

USPTO Forms Comparison

How to choose:

• Use TEAS Plus if your goods/services are in the ID Manual and you want to save $100 per class
• Use TEAS Standard if you need custom descriptions or prefer more flexibility

EUIPO Forms Comparison

How to choose:

• Use EUTM Easy Filing if you're an SME or individual with a simple application and want guidance
• Use EUTM Filing if you need advanced features, have multiple applicants, or are a professional filer

Common Application Mistakes

Avoid these frequent errors that cause delays or refusals:

Top 10 Application Errors

1. Incorrect Owner Information

• Problem: Cannot be corrected after filing; application must be abandoned
• Prevention: Double-check entity name, entity type, and ownership structure
• Example: Listing yourself as sole owner when business is co-owned

2. Wrong or Incomplete Goods/Services Descriptions

• Problem: May be refused for being too vague or too broad
• Prevention: Use specific, clear descriptions from ID Manual or TMclass
• Example: "Online services" instead of "Software as a service (SaaS) featuring project management software"

3. Missing or Incorrect Filing Basis (US)

• Problem: Application abandoned if no valid basis
• Prevention: Understand difference between 1(a) and 1(b); provide required dates and specimens
• Example: Claiming use in commerce but not providing specimen

4. Incorrect Specimen

• Problem: Doesn't show trademark use; may be refused
• Prevention: Show mark on goods or in offering of services
• Example: Submitting invoice instead of product photo for goods

5. Drawing Doesn't Match Specimen

• Problem: Inconsistency raises questions about what you're actually using
• Prevention: Ensure mark appears identically in drawing and specimen
• Example: Drawing shows "ACME" but specimen shows "Acme Co."

6. Wrong Mark Type Selected

• Problem: Limits protection to wrong scope
• Prevention: Choose standard character for text protection, special form for logos
• Example: Filing logo as standard character (protects text only, not design)

7. Selecting Wrong Classes

• Problem: Mark not protected for actual goods/services
• Prevention: Review Chapter 4; use TMclass or ID Manual to confirm classes
• Example: SaaS company filing only in Class 9 (downloadable software) but not Class 42 (SaaS services)

8. Insufficient Search Before Filing

• Problem: Likelihood of confusion refusal
• Prevention: Conduct comprehensive search (see Chapters 6-7) before filing
• Example: Filing without checking for existing similar marks in your industry

9. Missing Required Foreign-Domiciled Attorney (US)

• Problem: Application refused if no US attorney listed
• Prevention: Non-US applicants must hire US-licensed attorney before filing
• Example: Canadian company tries to file directly without US counsel

10. Incorrect Fee Payment

• Problem: Application not examined until correct fee received
• Prevention: Calculate fees correctly (per class); use correct payment method
• Example: Paying for 1 class when application lists 2 classes

Attorney Representation

Deciding whether to hire an attorney depends on several factors.

When an Attorney is REQUIRED

United States:

• Foreign-domiciled applicants and registrants MUST have US-licensed attorney
• Rule effective August 3, 2019
• Applies if your permanent residence or principal place of business is outside the United States
• No exceptions

European Union:

• Non-EEA applicants must appoint representative for proceedings after filing
• Filing itself can be done without representative
• Subsequent proceedings (office actions, oppositions, etc.) require EEA-based representative
• Representative must have domicile in EEA

When an Attorney is OPTIONAL (but Recommended)

US-domiciled applicants and EEA-domiciled applicants:

• Can file and prosecute applications yourself (pro se)
• Not required to have attorney

Consider hiring attorney when:

• Your mark is descriptive or weak (needs strong arguments for registration)
• Your goods/services don't fit neatly into ID Manual terms
• You need advice on filing strategy
• You want someone to handle correspondence and deadlines
• You're facing an office action or opposition
• Your business has significant value at stake

Benefits of Hiring an Attorney

Strategic advantages:

• Conduct comprehensive clearance search
• Advise on registrability before you file
• Prepare stronger applications with proper arguments
• Respond to office actions effectively
• Handle TTAB or EUIPO proceedings
• Protect you from scam solicitations

Practical benefits:

• USPTO/EUIPO communicates directly with attorney
• Attorney monitors deadlines
• Professional prosecution increases success rate
• Can save money long-term by avoiding costly mistakes

Costs of Attorney Representation

Typical attorney fees (US):

• Clearance search: $500-2,000
• Application preparation and filing: $1,000-2,500 per class
• Office action response: $1,000-3,000
• TTAB proceedings: $10,000-100,000+

Typical representative fees (EU):

• Application preparation and filing: €500-1,500
• Office action response: €500-2,000
• Opposition proceedings: €5,000-25,000+

Note: These are attorney/representative fees in ADDITION to government filing fees.

DIY (Pro Se) Considerations

When DIY makes sense:

• You have a strong, distinctive mark (fanciful or arbitrary)
• Your goods/services fit clear ID Manual or TMclass descriptions
• You're comfortable reading legal documents
• You can monitor deadlines carefully
• You have time to handle correspondence

When to hire professional help:

• Mark is descriptive or suggestive
• Facing likelihood of confusion issues
• Need custom goods/services descriptions
• Received an office action
• Facing opposition
• High-value brand at stake

What's Next

Your application is prepared with all required information, proper drawings, acceptable specimens (if needed), and correct fees. Chapter 10 walks you through the entire registration process from the moment you submit your application through receiving your registration certificate—including what happens during examination, publication, and the opposition period.