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Trademark Application Drafting Questionnaire

This questionnaire is done after the search and opinion letter is sent to the client. It asks all relevant questions needed to submit the final application to USPTO.

Applicant Type(Required)

Individual

Entity

Whether or not to file in the name of an individual or an entity is often a matter of corporate and tax law rather than trademark law.

For companies and organizations in the United States, it is usually a good idea to check the online records of the relevant Secretary of State before filing to make sure that the applicant exists and is active (an application may be void if the wrong party is identified). Most all Secretaries of State have user-friendly websites that make searching for entities and their status quick and easy.

Individual

Individual Applicant(Required)

First Last

Domicile Address(Required)

Street Address Address Line 2 City State ZIP Code

Cannot be a PO Box or "care of" address

Country of Citizenship(Required)

Applicant Email Address(Required)

Required as of Feb 15, 2020

Applicant Phone

Optional

Entity

Name of Representative

First Last

Entity Name(Required)

Principal place of business(Required)

Street Address Address Line 2 City State / Province / Region ZIP / Postal Code Country

Entity type(Required)

Corporation

Limited Liability Company

Partnership

Other

(e.g., corporation, limited liability company, partnership)

Jurisdiction of organization(Required)

(usually state or nation)

Email Address of Entity(Required)

The state of organization and the name and citizenship of the sole proprietor

Name

Role

(if applicant is a sole proprietorship)

The names and citizenship of the active members of the joint venture

Name

Role

(if applicant is a domestic joint venture)

The names and citizenship of general partners

Name

Role

(if applicant is a domestic partnership)

The Mark

Trade dress (i.e., product configuration or packaging) falls under the design mark designation. For a more detailed discussion on trade dress, see Trade Dress Fundamentals. A standard character mark can be displayed in capital letters, lower case letters, numbers, or a combination thereof. Standard character marks are afforded the broadest protection; the words, letters, and/or numbers of such marks are protected in any stylized font or as part of any design. Given this level of protection, an applicant should apply to register a mark in stylized form or as part of a design only if the stylization or design is an important component of the mark. For example, The Coca-Cola Company protects its mark COCA-COLA in its well-known script font because the stylization is an important part of the brand. Another issue to consider is whether a stylization or design will change down the road. This is relevant because to maintain the registration obtained, the registrant will need to prove use of the mark in substantially the same form between the fifth and sixth year after registration (and every ten years from the date of registration). Thus, if the font or design is likely to change, it may be prudent to file for the mark in standard characters. (For more on maintenance obligations, see Trademark Registrations: Maintenance and Renewal.) Where the mark is shown in stylized letters or as a design, you must submit the proposed mark in a .jpg file, and if such a mark includes a word, letter, or number, you must enter the "literal" element of the mark (i.e., the actual wording, lettering, or numbering). For design marks, you must also submit a description of the significant features of the mark. For example, Nike may describe the NIKE and Swoosh Design as follows: "the mark consists of the term NIKE above a wing design." Applicants for design marks must also consider whether to file the applied-for mark in color or in black and white. The protection of a color mark is limited to the color(s) identified in the application, whereas a black and white mark protects use of the mark in any color. Thus, applicants should file in color only if color is an important feature of the mark. If the applicant claims color, you must: •Submit a color image of the drawing in .jpg format •Identify the color(s) by their generic names •Indicate where the color(s) appear in the mark Otherwise, the image submitted must be a clear black-and-white drawing.

Form of Applied-for Mark(Required)

Standard characters

Stylized letters

A design

A sound or color

Additional Statements

For example, if an applicant is applying to register the mark ZENITH PRINTERS for computer printers, it should offer to disclaim exclusive rights to the word "printers" apart from the overall mark. Or if the mark refers to the name of someone now deceased, the applicant should indicate that the mark does not identify any living individual. For more information on disclaimers, see Gilson on Trademarks § 3.05[2][f].

Do any of these apply(Required)

A disclaimer of descriptive elements

Translation of foreign words

Ownership of a prior registration

None

Upload Mark or Design Specimen(s)(Required)

Drop files here or

Max. file size: 64 MB.

Is the mark color specific?(Required)

Submit a color image of the drawing in .jpg format

Identify the color(s) by their generic names

Indicate where the color(s) appear in the mark

Color Image of Mark

Drop files here or

Max. file size: 64 MB.

Identification of Goods/Services and Classification

The application must identify the goods and services offered or intended to be offered under the mark. An applicant may wish to identify the goods or services broadly for two main reasons: •To increase the scope of protection of the mark •The USPTO does not allow amendments that broaden the original identification of goods and services (only amendments that narrow or clarify them) However, the USPTO ultimately requires the goods and services to be described with specificity, and frequently requests amendments that provide for such specificity. For example, while it is permissible to identify "clothing" in an initial application, the USPTO would generally require the applicant to itemize the specific types of clothing (e.g., t-shirts and pants) before approving the application for registration. Also bear in mind that it is not necessary to identify each and every item provided or intended to be provided under the mark in order to adequately protect the mark. Under the "related goods" doctrine in U.S. trademark law, the mark would receive protection for those goods and services which are closely related to the ones included in the application. For example, an application including t-shirts would likely protect use of the mark in connection with long sleeve shirts, but not in connection with mobile devices.

Which class most fits your service/product?

Class 1: Chemical Products. Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2: Paint Products. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3: Cosmetics and Cleaning Products. Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4: Lubricant and Fuel Products. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 5: Pharmaceutical Products. Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6: Metal Products. Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; nonelectric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7: Machinery Products. Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

Class 8: Hand Tool Products. Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9: Computer and Software Products and Electrical and Scientific Products. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.

Class 10: Medical Instrument Products. Surgical, medical, dental, and veterinary apparatus and instruments, artificial limbs, eyes, and teeth; orthopedic articles; suture materials.

Class 11: Environmental Control Instrument Products (lighting, heating, cooling, cooking). Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes.

Class 12: Vehicles and Products for locomotion by land, air or water. Vehicles; apparatus for locomotion by land, air, or water.

Class 13: Firearm Products. Firearms; ammunition and projectiles; explosives; fireworks.

Class 14: Jewelry Products. Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.

Class 15: Musical Instrument Products. Musical instruments

Class 16: Paper and Printed Material Products.Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 17: Rubber Products. Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18: Leather Products (not including clothing). Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 19: Non-Metallic Building Material Products. Building materials (non-metallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.

Class 20: Furniture Products. Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Houseware and Glass Products. Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel-wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22: Ropes, Cordage and Fiber Products. opes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23: Yarns and Threads. Yarns and threads, for textile use.

Class 24: Fabrics and Textile Products. Textiles and textile goods, not included in other classes; beds and table covers.

Class 25: Clothing and Apparel Products. Clothing, footwear, headgear.

Class 26: Lace, Ribbons, Embroidery and Fancy Goods. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27: Floor Covering Products. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28: Toys and Sporting Goods Products. Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29: Meat and Processed Food Products. Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Staple Food Products. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Natural Agricultural Products. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.

Class 32: Light Beverage Products. Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Wines and Spirits (not including beers). Alcoholic beverages (except beers).

Class 34: Smoker's Products. Tobacco; smokers' articles; matches.

Class 35: Advertising, Business and Retail Services. Advertising; business management; business administration; office functions.

Class 36: Insurance and Financial Services. Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37: Construction and Repair Services. Building construction; repair; installation services.

Class 38: Communication Services. Services allowing people to communicate with another by a sensory means.

Class 39: Transportation and Storage Services. Transport; packaging and storage of goods; travel arrangement

Class 40: Treatment and Processing of Materials Services. Treatment of materials.

Class 41: Education and Entertainment Services. Education; providing of training; entertainment; sporting and cultural activities.

Class 42: Computer and Software Services and Scientific Services. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43: Restaurant and Hotel Services. Services for providing food and drink; temporary accommodations.

Class 44: Medical and Beauty Services and Agricultural Services. Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45: Personal, Legal and Social Services. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

Filing Basis

Select One

Current use of the mark in U.S. commerce

Intent-to-use the mark in U.S. commerce

Country of origin registration (i.e., registration of substantially the same mark in the applicant’s country of origin)

An earlier-filed foreign application (if the U.S. application is filed within six months of the foreign application)

Date of First Use

You should recommend that clients maintain business records showing each first use date listed in the application, which could be important evidence if a question of priority arises down the line.

You must also submit a current “specimen of use” for any one item in each class of goods and/or services listed in the application and describe each specimen. (Even though only one specimen per class is required, some attorneys ask their clients for specimens for each separate good or service so as to reduce the possibility of over-claiming.) For goods, the specimen may consist of materials such as photographs or photocopies showing the mark as applied directly to the goods or to their packaging, labeling, or tags. For services, the specimen may consist of advertising or promotional materials. Importantly, advertising or promotional material is usually not considered a proper specimen of use for goods. The specimen may be submitted as a .jpg or .pdf file. For sample specimens of use, see Specimens of Use Chart.

Specimen of Use

Drop files here or

Max. file size: 64 MB.

Trademark Post-Research Opinion Letter

"*" indicates required fields

Client's Name*

First Last

Client's Email*

Hidden

Entity Name

Proposed Mark

e.g., whether the mark is in standard characters, a design mark, a product configuration, etc.

Date of Letter*

MM slash DD slash YYYY

Hidden

Type of Goods/Services

the contemplated goods/services per the USPTO, intended geographical use, and any pertinent information regarding the mark’s meaning, such as whether it possesses any meaning in the relevant industry, as a geographic term, or is a surname. For example, if your client’s proposed mark is NE GREEN CLEANERS for dry cleaning services, relevant information might include: (1) the mark is meant to reference the name of your client’s nationwide chain of retail apparel stores, NE STYLE SHOP, and to indicate that its dry cleaning methods are environmentally friendly; and (2) the “NE” portion of the mark represents the first initials of Nina and Edward Jones (client’s founders), not the Northeast United States (even though client established its first NE STYLE SHOP in upstate New York)

Use Form of Mark

in standard characters

as stylized letters

as a design

as a sound or color

Classes of Goods Searched

Class of Goods (for reference)*