A threshold issue in the application process concerns the identity of the party or parties that own the trademark or service mark. A trademark may be owned by an individual or a juristic person, which includes corporations, partnerships, joint ventures, unions, associations and other organizations capable of suing and being sued in a court of law. The application must be made only by the owner of the mark or by the person or entity that has a bona fide intention to use the mark in commerce.

Although the identity of the owner of a mark is usually fairly clear in the case of an individual or corporation, ownership by a musical group is problematic. A trademark application is usually filed in the name of a single party, because, historically, ownership by more than one party appears to contradict the function of a trademark to indicate a single source. However, joint applicants, such as some or all of the individual members of a musical group, may be allowed provided that the mark and the business in which it is used are in fact owned by separate parties jointly and cannot be identified correctly in any other way. Of course, if it is decided that all members of a musical group will be the owners of the trademark, then they should be able to apply as joint applicants.

A separate agreement between the individual band members should be executed concerning the disposition of the trademark rights should one or more members of the group leave or should the group be reconstituted, since the failure to do so may result in dire consequences should one or more of the band members depart or strike out on their own under the same name. In one dispute a court held that a musical group's manager and promoter owned the group's name since he "exerted influence over the style and content of the group’s act" and "functioned much like the producer of a theater company." [5] In another fairly well-known case, the name Fleetwood Mac was the subject of litigation when the group experienced internal problems which forced it to cut short its tour. Afterward, the band's manager, assembled a new band under the name Fleetwood Mac to complete the tour, even though no original group members were involved. The original group commenced an action to stop the new group from performing under the name and the court granted an injunction. This could have been avoided had appropriate agreements been in place.

Likewise, in a recent decision, the widow of the original manager of The Drifters, after over 30 years of dispute, successfully enjoined several former members of the group from using the Drifters mark, even though the former members had originally signed an agreement surrendering rights in the name. [6] A recent decision has also held that a former band member may legitimately use his former band’s name in promotional materials, in this case, Nicholas Kassbaum, formerly of Steppenwolf, was allowed to refer to himself as “Formerly of Steppenwolf”, and an “Original (Founding) Member of Steppenwolf” when performing with his new group. [7]

Another threshold issue is has the mark been used or will the mark be used in interstate or international commerce? If the trademark is used only locally, such as a band performing only in Wichita, Kansas, and there is no intention to use the mark outside of that locality, then it may not be possible to obtain a federal trademark registration, since only marks that have been or will be used in interstate or international commerce are eligible for registration on the US Federal Register. In this case, it may be prudent to consider simply obtaining a state registration for the trademark, at least so that the public is put on notice that someone claims rights in the mark. State registrations are relatively simple and inexpensive to obtain. However, if a trademark is eligible for federal registration, state registrations are unnecessary and not cost-effective since they do not generally provide substantive rights, but only serve to put third parties on notice of the trademark claim.

If a mark is already in use, then an application based on such use may be filed. If the mark has not yet been used, the applicant may apply based on a bona fide intention to use the mark in commerce. Special rules may apply to trademark owners whose trademark rights originate in other countries.

It is also important to know on which goods and services the mark has been or will be used. The USPTO requires that the application specify the goods or services on or in connection with which an applicant uses, or has a bona fide intention to use, the mark in commerce. This means that the goods and services must be identified in an explicit manner and must specify the "particular" goods or services as clearly, accurately and as concisely as possible. The USPTO will reject an overbroad or ambiguous specification of goods. For example, if the mark has only been used on "t-shirts", a specification for "clothing" will be rejected as overbroad. In addition, once filed, a specification of goods may be clarified or restricted, but not expanded.

Since the United States employs a classification system for goods and services, in accordance with the International Classification system of 34 classes of goods and 8 classes of services, once the goods and services of interest are identified, they must be classified. In the music industry, the most often used classes of goods and services are International Class 9, which covers recordings, International Class 16, which covers paper products and printed matter, International Class 25, which covers articles of clothing, and International Class 41, which covers entertainment services. Other related classes of interest may include International Class 14, which covers jewelry, International Class 18 which covers leather goods and bags, International Class 38 which covers broadcasting services as well as on-line chat room services, and International Class 35 which covers artist management, public relations, electronic retailing and advertising services. However, a potential merchandising program may include even more classes, if it involves goods such as cosmetics, fragrances or cleaning products which fall in Class 3, candles which fall in Class 4, metal key chains which fall in Class 6, tableware which falls in Class 8, picture frames and non-metal key rings which fall in Class 20, beverageware and lunch boxes which fall in Class 21, bed, bath and table linens which fall in Class 24, or even toys and games in Class 28.

If an application is based on use in commerce, the application must identify the specific goods on which the mark has been used and, with respect to each category of goods or services, to identify the date of first use in commerce in or with the United States and the type of commerce involved; to provide the date of earliest use anywhere; to indicate the mode or manner in which the mark is used; and to provide specimens showing the trademark used in the form filed in the application for each class of products.

Once this information is available, the application form, containing a verification or declaration attesting to the facts and allegations concerning use, must be completed and properly signed by the applicant, a member of the applicant firm, or an officer of the applicant corporation or association. In addition, a person appointed by a power of attorney may also sign such documents.