What are the Best Tips for Filling out a Trademark Application?

C. Mitchell

Nearly all countries have systems in place to protect trademarks, but more often than not, trademark protections must be specifically applied for before they will attach. While specifics of what a trademark application will require vary by jurisdiction, a trademark application is a serious document everywhere, and should be thoughtfully prepared. In the United States, Canada, and most of Europe, a trademark application is a legal document, and the statements made in it are binding and must be accurate. The best tips for filling out a trademark application include carefully reading the entire application and ensuring that all requirements are understood; carefully preparing all sections, so that nothing has to be amended; and keeping track of all deadlines and fees. Many people elect to hire a trademark attorney to prepare trademark applications, but most countries will allow filers to fill out applications on their own.

Part of a trademark application.
Part of a trademark application.

The most important thing about filling out a trademark application is a solid understanding of what the application requires. In both the United States and the United Kingdom, the trademark offices — the United States Patent and Trademark Office and the Intellectual Property Office, respectively — publish informational pamphlets designed to guide applicants through the application process. Publications and guides, where they exist, should be read as a first step.

A trademark application.
A trademark application.

Applicants should also carefully read the trademark application itself. Trademark applications are available from national trademark agencies free of charge, and are usually posted online as well. Many applications come in several parts or phases. Prospective applicants should carefully read through all parts of the application, take note of the application’s requirements, and ask for more information on anything that is unclear before beginning.

Trademark applications generally require more than just a description of the trademark to be registered. Most also require evidence that the trademark has been used, how long it has been used, and the markets in which it has been used. Applications in most countries, including the U.S., the U.K., and Canada, also require a sworn statement that, to the best of the filer’s knowledge, the filer’s rights to the trademark are legitimate.

The basic application is the same whether the filer seeks a business trademark, a personal trademark, or a service mark. The evidentiary requirements and filings that must be made with the application can vary depending on the type of mark sought, however. Accordingly, it is also important for a filer to know what sort of mark he is registering before filling out the application. Trademark office publications, as well as trademark lawyers familiar with the local trademark rules, can help applicants discern what sort of trademark it is that they are seeking to register.

Most trademark offices allow for online trademark application filing as well as paper trademark application filing. The only difference between the two is usually turn-around time and, in some instances, the fee due. Online applicants will need to be sure that any attachments can be effectively uploaded to the electronic system, and must check that all of their documentation can be converted into electronic form. Applicants who do not properly attach all documents to their initial application risk being denied outright, or having to file later amendments at additional cost.

To avoid the chance of an application missing elements, missing steps, or otherwise falling short of the requirements, many applicants choose to hire a trademark attorney to manage their application process. This is particularly true if an applicant is filing more than one trademark simultaneously. Lawyers who regularly work with trademark applications can help applicants quickly identify the material that needs to be included, can help with or complete the application, and can manage all deadlines, supplemental filings, and disputes, should any arise. Trademark agencies do not generally require the assistance of an attorney, but nearly all recommend it. Consulting with a lawyer, at least initially, can be a good way to gain understanding about the application process, and avoid application problems later on.

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