---
name: trademark-application
description: "Guides trademark application preparation with class selection, specimen requirements, and filing checklists. Use when preparing to file a trademark with the USPTO."
allowed-tools: Read Write Glob
metadata:
  author: matthewhitcham
  version: "1.0"
---

# Trademark Application

## When to Use This Skill

Use this skill when you need to:
- Prepare a trademark application for filing with the USPTO
- Select the correct trademark class(es) for your goods or services
- Understand specimen requirements and filing procedures
- Create a pre-filing checklist to ensure a complete application

**DO NOT** use this skill as a substitute for legal advice. This is a preparation and organization tool. Consult a trademark attorney for complex filings or legal questions.

---

## Core Principle

A TRADEMARK PROTECTS YOUR BRAND IDENTITY — PROPER PREPARATION REDUCES THE RISK OF OFFICE ACTIONS, REJECTIONS, AND WASTED FILING FEES.

---

## Phase 1: Trademark Details

### Required Inputs

| Input | What to Ask | Default |
|-------|------------|---------|
| **Mark** | "What word, phrase, logo, or slogan are you trademarking?" | No default — must be provided |
| **Mark type** | "Is this a word mark, design mark (logo), or combined?" | Word mark |
| **Goods/services** | "What products or services does this brand name cover?" | No default — must be provided |
| **Already in use?** | "Are you already using this mark in commerce? If so, when did you first use it?" | Yes — currently in use |
| **Geographic scope** | "Filing in the US only, or international as well?" | US only (USPTO) |

**GATE: Do not proceed without the mark and a description of goods/services.**

---

## Phase 2: Classification and Search

### International Class Selection

```
## Trademark Classification

Based on your goods/services, the following classes apply:

| Class | Description | Your Goods/Services in This Class |
|-------|------------|----------------------------------|
| Class [X] | [Official class description] | [Specific goods/services] |
| Class [X] | [Official class description] | [Specific goods/services] |

### Common Classes for Solopreneurs
| Class | Covers | Examples |
|-------|--------|---------|
| 9 | Software, digital products | Apps, downloadable courses, SaaS |
| 16 | Printed materials | Books, workbooks, planners |
| 25 | Clothing | Branded merchandise, apparel |
| 35 | Business services | Consulting, marketing, coaching |
| 36 | Financial services | Financial consulting, accounting |
| 41 | Education/entertainment | Online courses, workshops, podcasts |
| 42 | Technology services | Web design, SaaS, IT consulting |
| 45 | Legal services | Legal consulting |

**Note:** Each class requires a separate filing fee. Only file in classes where you are using (or intend to use) the mark.
```

### Preliminary Search Guidance

```
## Pre-Filing Search Checklist

Before filing, search for existing marks that could conflict:

- [ ] Search USPTO TESS database (tess2.uspto.gov) for identical marks
- [ ] Search for phonetically similar marks
- [ ] Search for similar marks in the same class(es)
- [ ] Search state trademark databases
- [ ] Search domain registrations and social media handles
- [ ] Search Google for businesses using similar names in your industry

**If you find a similar mark:** Consult a trademark attorney before proceeding. Filing against an existing mark wastes fees and may trigger opposition.
```

---

## Phase 3: Application Preparation

### Filing Basis

```
## Filing Basis

| Basis | Description | Requirements |
|-------|------------|-------------|
| **Use in Commerce (1a)** | Already using the mark in business | Must provide specimen + dates of first use |
| **Intent to Use (1b)** | Plan to use but have not yet | Must file Statement of Use later (additional fee) |

### Selected basis: [1a / 1b]
```

### Specimen Requirements

```
## Specimen Guidelines

A specimen shows the mark as used in commerce.

### For Goods (Products)
Acceptable: Product packaging, labels, tags, product photos showing the mark, screenshots of online store with mark on product listing
NOT acceptable: Business cards, letterhead, invoices, advertising

### For Services
Acceptable: Website screenshots showing the mark + service description, brochures, advertising, signage
NOT acceptable: Internal documents, mock-ups, unused designs

### Specimen Checklist
- [ ] Specimen clearly shows the mark as filed
- [ ] Specimen shows the mark in connection with the goods/services
- [ ] Specimen is from actual commercial use (not a mock-up)
- [ ] Digital specimens are clear and legible
- [ ] File format: JPG or PDF, under 5MB
```

### Application Checklist

```
## Filing Checklist

### Required Information
- [ ] Mark (exact text or design file)
- [ ] Mark type selected (standard character / special form / sound)
- [ ] Owner name and address (individual or entity)
- [ ] Entity type (individual, LLC, corporation, partnership)
- [ ] State/country of organization (if entity)
- [ ] Class(es) selected with descriptions of goods/services
- [ ] Filing basis (1a or 1b)
- [ ] Specimen prepared (if 1a filing)
- [ ] Date of first use in commerce (if 1a)
- [ ] Date of first use anywhere (if 1a)
- [ ] Email address for USPTO correspondence

### Fees
- [ ] Filing fee: $250/class (TEAS Plus) or $350/class (TEAS Standard)
- [ ] Payment method ready (credit card, deposit account, or EFT)

### After Filing
- [ ] Monitor USPTO status at tsdr.uspto.gov
- [ ] Respond to office actions within 6 months
- [ ] Expected timeline: 8-12 months to registration (if no issues)
```

---

## Phase 4: Post-Filing Guidance

```
## After Filing

### Timeline
| Stage | Expected Timeline |
|-------|------------------|
| Application filed | Day 0 |
| Assigned to examining attorney | 3-4 months |
| Office action (if any) | 4-6 months |
| Published for opposition | 6-8 months |
| Opposition period (30 days) | 8-9 months |
| Registration issued | 9-12 months |

### Maintenance
- **Section 8 Declaration:** Due between years 5-6 after registration
- **Section 9 Renewal:** Due every 10 years
- **Monitoring:** Watch for infringing uses of your mark
```

---

## Example: Online Course Brand "LaunchKit"

**Mark:** LAUNCHKIT (word mark). **Class 41:** Online educational courses and workshops. **Class 9:** Downloadable digital course materials. **Basis:** 1a (in use since March 2025). **Specimen:** Screenshot of website showing "LaunchKit" on the course sales page with pricing and enrollment button visible. **Filing fee:** $500 (2 classes x $250 TEAS Plus).

---

## Anti-Patterns

- **Filing without searching** — a $250+ filing fee is wasted if a conflicting mark exists. Always search first.
- **Wrong class selection** — filing in the wrong class does not protect your actual goods/services. Match classes precisely.
- **Descriptive marks** — marks that describe the product ("Fast Shipping Service") are harder to register. Distinctive, coined, or suggestive marks are stronger.
- **Submitting the wrong specimen** — a business card is not a valid specimen for goods. Follow the specimen guidelines exactly.
- **DIY on complex filings** — multi-class, design marks, or marks with potential conflicts benefit from attorney assistance.

---

## Recovery

- **Similar mark found in search:** Consult an attorney. Options include modifying the mark, arguing distinctiveness, or proceeding with risk acknowledged.
- **Office action received:** Respond within 6 months. Common issues: descriptiveness, likelihood of confusion, or specimen inadequacy. An attorney can help draft the response.
- **Intent-to-use but delayed launch:** You have 6 months to file a Statement of Use after the Notice of Allowance, with up to 5 extensions (6 months each) for a total of 3 years.
- **International protection needed:** File a Madrid Protocol application through the USPTO for international coverage. Each country has separate fees and requirements.
