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Applying for a Trademark

When you are ready to file a trademark application you may complete one of the USPTO’s three electronic Initial Application Forms, comprising the TEAS Regular form, the TEAS RF form, and the TEAS Plus form. In all three applications, you will be asked to provide both mandatory and optional identifying information about yourself and your trademark search.

Be mindful that all submitted information will become publicly available through the USPTO TESS database so be prepared to receive some unwanted phone calls and emails if you choose to provide that information.

”In Use” (1a) v. “Intent to Use” (1b) designation

When completing your application one part of the form will require you to designate the products or services for which you will associate your trademark search. A searchable list will be provided within the form but you can also search the USPTO’s Trademark ID Manual if you want to plan ahead. Once you have generated a list of goods and services you will be asked to designate each one as “1a” or “1b”. A 1a (In Use) designation means that you are currently using the trademark for that purpose and can provide a specimen for proof of use with your filing, whereas a 1b (Intent to Use) designation means that you intend to use the trademark for that purpose but cannot at the time of filing provide a specimen for proof of use. For any application designating one or more 1b products or services, proof of use will not be required until later in the application process, but this will incur additional filing costs down the road.

Primary v. secondary

Unless you specify otherwise your trademark application will be for the USPTO “primary register”. If, however, during the trademark application process an examiner determines that your trademark is weak then registration on the primary register may be denied. Fortunately, the USPTO also maintains a lesser known register called the “Secondary” or “Supplemental” register wherein weak trademarks can overcome their limitations by acquiring secondary meaning. Acquiring secondary meaning is the idea that, even if your mark might have been considered merely descriptive at first, over time the public has learned to recognize and perceive your trademark search as a unique identifier for your brand.

For example, the “Holiday Inn” might at one point have been considered merely descriptive of the services provided but over time the consumer has come to recognize its secondary meaning as a specific brand of hotel.

Whether your trademark search ends up on the primary register or the secondary register, in either case it will still be permitted to use the “®” symbol and entitles you to bring a trademark infringement suit in federal court. Thus, whereas registration on the primary register is preferred, the supplemental register is a great plan B while your mark is still acquiring evidence of secondary meaning.

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