Filed It Yourself? Five Things to Check Before It Is Too Late

Filing a trademark application yourself is entirely legal, and plenty of people do it successfully. If you have already filed with the USPTO without an attorney, there are a few items worth checking now to avoid delays and refusals.

Most of these are still fixable while your mark goes through examination. Some cannot be corrected at all. Knowing which is which is the useful part — and you can check all five against your filing receipt.

1. Did you file the right kind of mark?

Did you file the words of your mark themselves (a word mark), or the logo (a design mark)?

A standard character mark — a word mark — protects the words themselves in any font, size, color, or styling. Most trademarks are filed this way, and the scope of a word mark’s protection does not change if you later change the font, the color, the size, or any other visual element.

A design mark, on the other hand, protects the exact design as submitted. That protection is narrower. If you redraw the logo in the future, it may no longer match what you registered.

Most businesses want to protect the name first. If you filed the logo because the logo felt like the brand, you have narrower protection than you may want. You cannot change this designation while the application is in examination — you would file a second application instead. Knowing this now is better than discovering it during a rebrand.

2. Is your description of goods and services accurate, and does it cover everything you want to protect?

This is the one that causes the most trouble, and the one people most often need to change.

A trademark’s scope is tied to the specific goods or services sold to customers under the mark. The USPTO requires those to be described with specificity, and the description sets the scope of your protection. If the description is too narrow, you have protected less than you sell. If it is too broad, you will get an office action asking you to narrow it.

If you sell five product lines and described only one, the other four are outside the application permanently. To add goods or services, you file a second application.

3. Did you claim the right filing basis?

There are two common filing bases. Actual use in commerce is appropriate if you were already selling goods or services under the mark when you filed. Intent to use is for when you are not selling under the mark yet but intend to.

Claiming actual use when you had not yet made a genuine sale in commerce is a serious problem. Your application includes a sworn statement, and an inaccurate one can be raised against the registration for its entire life — including years later, by a competitor.

If you filed on use and now suspect that was not the right designation, that is worth reviewing and amending sooner rather than later.

4. Is your specimen going to survive?

If you filed under actual use in commerce, you were required to submit a specimen. It is worth looking at that specimen honestly.

The USPTO wants evidence of the mark being used in real commerce. For goods, that means the mark appears on the product, on packaging, or on a genuine point-of-sale display. For services, it means the mark appears on advertising or materials showing the mark used in connection with that particular service.

A weak specimen is usually fixable during examination, which is exactly why it is worth reviewing early rather than after a refusal arrives.

5. Is the owner listed correctly?

Whose name is on the application?

The applicant should be the person or entity that owns and controls the mark. Filing in your personal name when the business owns the brand, or in the name of an entity you later dissolved, creates a defect that follows the registration.

Some ownership errors can be corrected. Others are treated as a void application, because an application filed by the wrong party was never valid to begin with. Which category yours falls into depends on the specifics, and it is worth knowing before the office asks.

And one thing that is difficult to check yourself

Whether the mark was clear to use in the first place.

The USPTO will refuse your application if it finds a conflicting prior registration — but the office’s search is limited to the federal register. The register does not tell you about unregistered marks with prior common law rights, state registrations, or businesses that have been using the name for years without ever filing.

A prior user can oppose your application, petition to cancel your registration later, or stop you from using the name in the areas where they already have rights — whether or not they ever filed with the USPTO. That is what a clearance search is for, and it is the step DIY filings most often skip. Our walkthrough of searching the USPTO database covers the method, including the variations most people do not know to look for.

If you would like a second opinion

We review applications that were filed by the owner or by another firm, and tell you plainly what we see: what is fixable, what is not, and what to do next. Our application review page sets out what is included and what it costs.

If an office action has already issued, that is a different conversation, and it comes with a strict deadline attached. Our guide to responding to an office action covers what they are and how to answer one.

This article is general information, not legal advice, and reading it does not create an attorney-client relationship. Rules differ by state and change over time. Please speak with a licensed attorney about your own situation.