Preparing and filing a trademark application with the United States Patent and Trademark Office is not a simple task. Like most governmental agencies, the Trademark Office has many rules and regulations that must be followed in the filing process.  If a trademark owner does not carefully follow these requirements, chances are that his/her trademark application will either be rejected for being incomplete or die an administrative death further down road.  The following is what you will need to successfully prepare and file your trademark application:

  • Name and address of Applicant
  • State of formation (if a corporation or LLC)
  • Basis for Use  (intent to use in commerce or based on use)
  • description of goods or services on which the mark is to be used
  • date of first use (if a use-based application)
  • specimens of use (marketing or promotional materials if a use-based application)
  • submission of a trademark “drawing” (either block letters or design mark)
  • Signature
  • Appointment of counsel to communicate with the USPTO
  • Payment of governmental filing fee

The above information is the minimum of what you or your attorney will need to do and know in order to successfully register and use a trademark in commerce in association with your company’s products or services.  In planning a trademark strategy, make sure that you speak with an experienced trademark attorney in your area.

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Photo of James Hastings James Hastings

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel
  • National E-tailing and Mail Order Organization of America