Trademark prosecution

Requirements for a Trademark Application

For a trademark application, certain information must be included. It is as follows:

  • Owner of the mark (“Applicant”): The application must be filed in the applicant’s name. The applicant is the individual or entity who regulates the makeup and value of the goods/services that are recognized by the mark. The owner is not automatically the name of the individual completing the form. The owner might be a person, corporation, partnership, LLC, or other kind of legal entity.
  • Name and Address for Correspondence: The applicant’s name and street address is needed for the USPTO to send communications about the application. The application is fervently persuaded to give an e-mail address and permit the USPTO to be in contact electronically, to let the USPTO e-mail notices concerning the application.
  • Depiction of the Mark (“The Drawing”): All applications must contain a clear picture of one mark (“the drawing”). The USPTO employs the drawing to upload the mark into its search database and print the mark in the Official Gazette and on the registration certificate. There are two kinds of drawings:

o   Standard character: A standard character drawing is usually presented when the mark that the person wants to register contains only words, letters, or numbers. A standard character mark safeguards the phrasing itself, without restricting the mark to a particular font, style, size, or color and thus offers the individual a more extensive protection than a special form drawing. When a person files electronically, TEAS creates an average character drawing for the individual, based on the information that he or she enters on the form under “enter the mark here.”

o   Special form: If the person’s mark contains a design or logo, by itself or with phrasing, or if the specific lettering style or color(s) is essential, the individual must choose the “special form” drawing format. If the person is asking for registration of word(s) merged with a design component, the drawing must portray both the word(s) and the design component merged as one image. When an individual files electronically, the mark image must be in .jpg format and should have minimum white space bordering the mark’s design. Mark images should not contain the trademark, service mark, or registration symbols (™, ℠, ℗). Unless a color image is being presented for a mark in which color is alleged as the mark’s feature, the mark image should be black and white.

  • Goods/Services: Goods are products like bicycles or candles. Services are activities done for someone else’s benefit like bicycle rental services or catering. A person must record the particular goods/services for which he or she wishes to register his or her mark.
  • Application Filing Fee: Application filing fees are established on the kind of application form used and the number of International Classes of Goods or Services in the application.
  • Basis for Filing: A person must indicate his or her “basis” for filing. Many U.S. applicants establish their application on either their present use of the mark in commerce or their future intent to use the mark in commerce.
  • Signature: If a person owns the mark and is applying in his or her exclusive capacity and not as a business entity, he or she may sign the application. If a business entity owns the mark, then the individual who may sign the application on the business’ behalf is someone with 1) actual familiarity of the application contents and power to act for the owner or 2)  legal power to bind the owner like a general partner or a corporate officer. If an attorney represents the applicant, the attorney may sign the application on the applicant’s behalf.



The application shall be examined and reviewed between six to four months. If the examiner raised objections to the application, he will issue an Office Action letter and the applicant must file a response to the Office Action letter within the time limit stipulated by the letter.  Otherwise the application shall lapse for non action if response is not filed within the time limit.  Extension of time for filing the response is possible.

Acceptance of application

If the applicant has overcome all the objection raised by the trade mark examiner within the time limit,  the application shall be accepted.  Depending on the basis for filing the application, a Notice of allowance shall be issued and registration shall follow after opposition period has expired.