How to Apply for a Trademark
To apply for a trademark, you need to avoid likelihood of confusion, determine trademark classes, select a filing basis, and choose your application type. The process is nuanced and specific, and the question “how do I…?” is both frequent and impossible to avoid. Luckily, many how-tos can be sorted before you even open a trademark application.
Below, we discuss several of the more complicated federal trademark application requirements and how to apply.
Trademark Application Guide
1. Avoid Likelihood of Confusion
Likelihood of confusion exists when similar trademarks result in probable consumer confusion as to the source of goods/services. It’s a no-go in the trademark world. Because of this, searching for likelihood of confusion is one of the first—and most vital—parts of applying for a trademark.
To help make sure your trademark is unique within your industry, you’ll want to conduct a thorough clearance search prior to applying. A clearance search involves digging through sites and databases such as:
- Trademark Official Gazette
- Trademark Search
- State business registries
- State trademark databases
- Domain registries
- Social media
Among other things, if your search returns trademarks that are similar to yours in appearance, sound, and/or meaning—and that promote goods/services similar to yours—you may need to change your mark before applying for federal trademark registration.
Though likelihood of confusion is to be avoided, clearance searches aren’t mandated by the United States Patent and Trademark Office. It’s on you to do your due diligence. If it turns out your trademark creates a likelihood of confusion with a pre-existing mark, the USPTO may refuse your registration.
Sign up for Northwest’s Trademark Service and we’ll tackle the clearance search so you don’t have to.
2. Determine Trademark Classes
To successfully apply for a trademark, selecting the right trademark classes is essential. It can also be confusing. Let’s break it down.
Trademarks are registered in connection to one or more classes. There are 45 trademark class categories to choose from: 34 for goods and 11 for services. You will only have federal trademark protections for the class(es) you list on your application.
The first class is included in your base USPTO application fee. Each additional class costs $250 or $350, depending on the type of application you’re filing.
How do I know which trademark class(es) to select?
You want to select the class(es) that best match the goods and services you’re protecting under your trademark.
For example, if you sell candles, you’ll want to register under Class 4: Lubricants and Fuels. If you also sell greeting cards and want those protected under your mark too, you’ll need to include Class 16: Paper Goods and Printed Matter.
The USPTO’s Trademark ID Manual is helpful when determining your classes. To start narrowing the possibilities, just type in words that describe what you’re selling and see what aligns.
3. Select Filing Basis
A filing basis is the legal reason for your trademark application. Your selection indicates which portion of the Trademark Act allows you to apply for registration.
Selecting the correct filing basis for your situation is an essential element of applying for a trademark. The most common filing bases are use in commerce and intent-to-use:
- Use in Commerce Section 1(a) filing basis is used if you’re currently selling goods/services in connection to your trademark. You need to include specimens (examples) with your application that prove the mark is in use. If you’re not selling the relevant goods/services yet, you cannot use this basis.
- Intent-to-Use Section 1(b) filing basis is used if you’re not yet selling goods/services in connection to your mark, but will be soon. The benefit of intent-to-use is preserving a filing date today, rather than waiting to file until you’re selling goods/services. Over time, an intent-to-use filing basis results in additional fees, paperwork, and deadlines.
4. Choose Application Type
When learning how to apply for a trademark, no question is more obvious or more relevant than, “Which application do I use?” There are two types of trademark applications to choose from: TEAS Plus and TEAS Standard. They’re quite similar overall, differing in a few important ways:
- Cost
The most clear-cut difference between these trademark applications is the cost. TEAS Plus costs $250 per class, while TEAS Standard costs $350 per class. - Goods/services description
If you apply with TEAS Plus, your goods/services description is limited to pre-approved choices that exist in the Trademark ID Manual. There are tons of options, and this route works for many applicants. However, some goods and services are specialized and specific—a suitable pre-written description may not exist. That’s where TEAS Standard comes in, which allows free-form entries. - Additional requirements
When you submit a TEAS Plus application, all applicable fields must be filled out, such as an English translation if your mark is in a foreign language or a written description of a design mark. The TEAS Standard application allows you to skip these fields and respond later.
5. Complete and Submit Application
Once you’ve accounted for likelihood of confusion, determined your trademark class(es) and filing basis, and selected your application type, the next hurdle is completing and submitting your trademark application.
To begin, log in to your MyUSPTO account to access the Trademark Electronic Application System (TEAS). Once you start the application, you can download and save progress along the way.
Note: You need to complete ID.me verification before filing. This is a new requirement as of August 2022, requiring either a selfie upload or video chat with a representative, plus your government ID and social security number. Having an attorney file your application is the only way to avoid this step.
Federal trademark applications call for information such as:
- Trademark owner
- Entity type
- Owner’s citizenship or business organization location
- Mailing address
- Domicile address
- Contact information
- Website
- Trademark information
- Goods/services description(s) and class designation(s)
- Filing basis
- Specimens
Check out our How to Register a Federal Trademark page for more information about application requirements.
How to Apply for a Trademark FAQs
After you submit your trademark application, it will embark on its slow journey through the USPTO. In about 8 months, it will be assigned to an examining attorney who will ultimately approve it or issue a refusal, also known as an office action. If office actions are resolved or if none are issued, the application will be published in the Official Gazette and enter a 30-day opposition period. If no trademark oppositions are recorded—and at least one year after you initially filed—the trademark will be registered.
Due to the USPTO’s growing backlog, it typically takes at least 12 months for a trademark to be registered, but it can take even longer. Want up-to-date timing information? Check out the USPTO’s current processing time.
Yes. As long as you have a U.S. address, you can apply for a trademark without an attorney. However, the process can be confusing and complex, with various paperwork, communications, and deadlines to keep track of. Having a lawyer assist with the process can make things significantly easier and increase your chances of timely registration.
Yes. Once submitted, the majority of information on your trademark application will be public whether your mark is registered or denied.
TEAS stands for Trademark Electronic Application System. You’ll use this system to access forms and to fill out and submit your trademark application.
*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.
