What is a trademark?
A trademark is a symbol, sign, design, phrase, or word that distinguishes a good or service belonging to a specific brand from competitors. It aids customers in recognizing a company’s goods and services, associating them with particular business, and safeguarding the intellectual property of their creator.
Trademark, patent, or copyright
|Original works of authorship such as books articles songs photographs sculptures choreography sound recordings motion pictures and other works
|Inventions, such as processes, machines, manufactures, compositions of matter as well as improvements to these.
|Any word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others
|Requirements to be Protected
|Work must be original, creative, and fixed in a tangible medium
|An invention must be new, useful, and nonobvious
|A mark must be distinctive (i.e., that is, it must be capable of identifying the source of a particular good)
|Term of Protection
|Author’s life plus 70 more years.
|For as long as the mark is in commerce
|Right to control the reproduction, making of derivative works, distribution, and public performance and display of the copyrighted works
|Right to prevent others from making, selling, using, or importing the patented invention
|Right to use the mark and prevent others from using similar mark in a way that would cause a likelihood of confusion about the origin of the goods or services.
Name: Coco Chanel is a superb example of a trademarked name. Coco Chanel, a well-known fashion designer, made a reputation by exploiting her name. People knew that they were getting high quality workmanship when they bought a Coco Chanel item. Her name became well-known over the world as a result of her reputation for having impeccable taste. Her name is a trademark because it is also the brand name of her company, and utilized to set herself apart from other designers and generic apparel producers.
Symbol: The golden arches of McDonald’s are a classic example of a symbol trademark. Customers are alerted when a McDonald’s is located at the next exit by golden arches that line interstate roads. On these golden arches, there is no mention of the word McDonalds. McDonald’s isn’t required to do so. The general public, as well as its consumers, are aware that McDonalds is represented by a golden arch. Their golden arch insignia sets them apart from other fast-food establishments.
Catchphrases: A trademark can be applied to a catchphrase that is unique to a person or company and is used to sell products. “You’re Fired” by Donald Trump is a wonderful example of a trademark slogan. On his reality television show “The Apprentice,” Donald Trump employs his catchphrase.
Figure or Mascot: Geico’s talking gecko is a famous example of a trademark character. Many advertisements featuring Geico’s talking gecko promoted Geico’s insurance. The gecko became the company’s mascot. Thousands of American households are already familiar with this talking lizard.
Lyrics: Lyrics are a songwriter’s hallmark. In 1986, Bob Seger and the Silver Bullet Band had a hit single with “Like a Rock.” This song helped Chevrolet recover from a near-bankruptcy scenario in 1991. The “Like a Rock” commercials were so popular that they were used for more than ten years. For licencing his trademark, “Like a Rock,” Chevrolet paid Seger royalties.
All of these well-known trademark examples show how names, words, and physical marks can be utilised to set a company apart from its competitors. It’s critical for companies to be able to trademark these identifying characteristics. It prevents competitors from plagiarising their work. It also makes it easier for their customers to recognise them.
Scope of protection
Others are banned from using a mark that can be confused with the trademark in business activities, which is an important feature of the exclusivity conferred by a trademark. When it comes to registration requirements, confusion is only possible if the marks are for the same or similar goods or services.
As an exception to the aforementioned, confusing resemblance can be alleged even in the case of non-identical or distinct goods or services in the case of well-known trademarks. Even if the goods or services were not confusingly identical or comparable per se, the goal of this exception is to avoid undue exploitation of, or action damaging to, such reputable trademarks. The Board of Patents and Registration keeps track of well-known trademarks. However, these trademarks are not considered impediments to registration; rather, the goal is to raise awareness of well-known trademarks in order to avoid trademark disputes. In order for a trademark to be listed, a separate application must be filed with the Board of Patents and Registration.
A registration decision issued by the Board of Patents and Registration grants protection only in Philippines. A further level of protection can be gained by registering a Community Trademark internationally.
With respect to goods that have been placed on the market by the trademark proprietor or with the proprietor’s consent within the European Economic Area, the trademark proprietor’s exclusive rights expire. This expiration is crucial since it will allow for so-called parallel importation of the relevant products in EEA Member States.
Trademark protection is valid for ten years from the date of filing, following which it can be renewed for another ten years. The trademark can be renewed an unlimited number of times. A trademark renewal must be requested no earlier than one year before the ten-year period expires, and no later than six months after the ten-year period has expired.
Suggestion trademarks, arbitrary trademarks, and fancy trademarks are the three most powerful sorts of trademarks. Because they are intrinsically distinctive, they are considered powerful trademarks. Trademarks that are descriptive, merely descriptive, or generic are weak or unprotectable.
When starting a business, picking a name to use as a trademark is crucial. You must examine not only the name’s marketing possibilities, but also its potential legal implications. While trademarks that define the goods or services can help with marketing, the greatest trademarks from a legal standpoint are those that have no connection to the goods or services in question. Even better, the most powerful trademark is one that does not yet exist, as was the case with Exxon and Kodak.
Whether you’re looking for a strong trademark for your company, product, or service, or you need legal help protecting an existing trademark, it’s critical to speak with a trademark attorney as soon as possible to avoid costly mistakes later on.
Examples of strong trademarks
It’s critical to understand the difference between a “weak” and a “strong” trademark before investing time and money to advertise a new product or service. Knowing the difference could end up costing you money in the long run because the weaker the trademark, the less legal protection you’ll have and the more likely you’ll face infringement concerns. So, what does it mean to have a powerful trademark?
For its distinctiveness, a strong trademark falls into one of the three categories below. In general, the more distinctive a term is, the less probable it is to be used by another business. Furthermore, the more distinctive your trademark, the more likely you are to avoid trademark infringement.
What is a suggestive trademark?
A suggestive trademark alludes to a business or product’s characteristic or quality but does not explain it without some imagination or mental stop. These trademarks rely on the consumer’s imagination to link the word’s meaning to the company or product. For example, naming a car firm after a swift, graceful animal like a Jaguar suggests that the company’s products are similar to the best features of a jaguar. As a result, assuming there are no identical uses in the marketplace, the word Jaguar can become a powerful trademark for use in the vehicle industry.
What is an arbitrary trademark?
An arbitrary trademark is a term that has nothing to do with the goods or services in question. When applied to a product or service that is wholly unrelated to the word, common words can become strong trademarks. For example, the word “apple” is a widely used term that has no meaning for any corporation that sells apples. The name “Apple” for a computer corporation, on the other hand, is arbitrary because it does not define a feature or quality of the company’s goods or services. As a result, Apple is a very distinctive use of the term in the context of computers, and it has the potential to become a very strong brand.
What is a fanciful trademark?
A fanciful trademark is a word that was created exclusively for the purpose of being used as a trademark. Because they are fundamentally different and hence easier to protect under trademark law, these are potentially the most powerful trademarks. Kodak, Pepsi, Exxon, and Polaroid, for example, are entirely made-up words that have no other meaning beyond the names of the firms who developed them.
Why registers your trademark?
- Your Trademark sets you apart from others. It symbolizes your company/business identity, image, and reputation, which distinguishes it from your competitors.
- Your Trademark is a valuable asset and personal property. It is quite valuable!
- The registration of your trademark will safeguard your business and keep it safe from unscrupulous individuals who wish to profits from the goodwill that your company has worked so hard to build over the years.
- There are remedies available to owners of registered trademarks from infringers such as Civil and Criminal Actions for infringement, unfair competition, false, or fraudulent declaration, and false designation of origin. Administration actions for violations of IP before the IPO’s Bureau of legal affairs, as well as Inter Parted Cases (opposition or cancellation) &/or Border Measures before the Bureau of Customs.
Online trademark tools
- MyUSPTO is your personized homepage and portal to all of your USPTO records. It gives you a safe place to keep track of your intellectual property portfolio, with quick access to search, file, and status services. You can even sign up to receive email notifications when the status of your application changes. By logging into your uspto.gov account, you may access and customise your MyUSPTO page. To use MyUSPTO, you must first create an account at uspto.gov. You can create a free account if you don’t already have one.
- The Trademark Electronic Search System (TESS) is a database that houses all active and inactive trademark registrations and applications. You can search this database for any trademarks that have been applied for or registered to discover if any are similar to yours. This search will assist you in determining whether or not you should apply to register your trademark. We have a number of materials to assist you in using TESS, including why searching in TESS is important, what to expect from searching, and how to prepare for searching, including the various search options available.
- The online Trademark Electronic Application System (TEAS) is where you fill out, submit, and pay for all trademark forms. You can submit registration maintenance and renewal paperwork, respond to office actions, change correspondence information, and more. You must be logged in to your uspto.gov account in order to complete a form.
- The Trademark Status and Document Retrieval (TSDR) system allows you to look for the serial or registration number of a trademark application or registration file. You can access TSDR at any time to check the progress of your application or registration, as well as to view, print, and download any documents in your file.
- The Acceptable Identification of Goods and Services Manual (ID Manual) is a searchable database of acceptable goods and service identifications. These pre-approved descriptors can be used to describe and categorise your items or services in your initial application. If a description isn’t accurate, don’t use it. Incorrectly naming your goods or services can cause delays in your application or prevent you from registering your trademark. You can read the handbook both before and after filling out the TEAS first application form.
- The Trademark Manual of Examining Procedure (TMEP) lays forth the rules and procedures that examining attorneys must follow while reviewing trademark applications.
- The Trademark Official Gazette (TMOG) is a weekly publication of the USPTO that includes trademarks on the Principal Register that have gained preliminary approval from an examining attorney. The 30-day opposition period for these trademarks begins when they are published in the TMOG. This is a resource that private practise attorneys and professional search firms frequently use for their clients.
- The Design Search Code Manual explains how to use TESS to look for designs in trademarks. For searching reasons, the USPTO gives one or more six-digit numerical codes to all trademarks with design figurative components. The design categories, divisions, and sections that make up these codes are all indexed in this manual.
KNOW ABOUT THE PROCESS
Do I need an attorney?
It is not necessary for everyone to hire an attorney to represent them before the USPTO. In trademark applications, however, all trademark applicants and registrants must specify and keep current their domicile address. This allows us to determine the applicant’s or registrant’s identity and whether they need to be represented by a U.S.-licensed attorney when filing trademark documents with us.
You must have a U.S.-licensed attorney represent you if you are a foreign-domiciled trademark applicant or registrant. You are not obligated to have an attorney if you live in the United States. You must include and keep current your domicile address in trademark filings to determine whether you’re required to have a U.S.-licensed attorney.
Consider whether you should engage a U.S.-licensed attorney even if you aren’t compelled to. If you don’t hire an attorney, be prepared to represent yourself.
The following are some of the advantages of employing an attorney:
- Providing you crucial legal advice about your trademark.
- Conducting your trademark clearance search before you file an application.
- Preparing your application accurately.
- Responding to legal correspondence from the USPTO.
- Enforcing and maintaining your trademark rights.
- Representing you at the USPTO’s Trademark Trial and Appeal Board.
- Shielding you from fraudulent solicitations.
If you employ an attorney, keep in mind that your application fees will stay the same, but your overall costs of submitting a trademark application will go up because you’ll have to pay for your attorney’s services as well.
Hiring an attorney, on the other hand, may save you money in the long run because an attorney will know how to effectively advise you on the registrability of your trademark, prepare your application, and reply to the USPTO on numerous concerns that may emerge during the process
How long does it take to register?
|USPTO reviews the application
|4 – 6 months
|Responding to the Office Action (unless there are no issues)
|Publication period in the Official Gazette
|USPTO issues the certificate of registration
|2 – 3 months
|Typically, 13 – 18 Months
When you add the 4-6 months it takes to review the application, the 6 months it takes to respond to the Office Action, the 3 months it takes to publish the trademark in the Official Gazette, and the 2-3 months it takes to get the certificate of registration, the total time it takes to get a trademark is around 13-18 months. Most people will think this is a long time, but it’s critical to understand why it takes so long.
The Date of Filing
To begin, it should be remembered that, despite the fact that the entire trademark registration procedure might take over a year, a trademark applicant has trademark protection from the moment the application is filed. Your federal trademark rights will always be retroactive to the date of the initial filing, assuming you are finally awarded a federal trademark registration.
The Trademark Status and Document Retrieval (TSDR) system allows you to verify the status of your application at any time. You’ll get a serial number on your filing receipt once you’ve submitted your application to us. Simply go to TSDR and enter your serial number to see what’s going on with your application, as well as view, print, and download any documents contained in your file. You’ll also be able to discover if there are any remaining deadlines that you need to meet.
New documents may not appear in TSDR right away, so don’t be concerned if you don’t see one on the same day you filed it. In most cases, new applications surface within four to five days. New application uploads may take up to 80 days due to an unanticipated rise in filings.
Examination of your application
Your application is allocated a serial number and a trademark examining attorney once you submit your initial application and fee. Your application will be reviewed by an examining attorney to ensure that it complies with all legal criteria and that your trademark is registrable.
We check our database of registered and pending trademarks as part of this review to see whether your trademark conflicts with any of them. We look into whether your trademark has any meaning in your industry, check your goods or services identification, and make sure you’ve met the filing basis requirements.
Examining attorney decision and your response
The examining attorney will approve your trademark for publication if the examining attorney determines that your application meets all of the legal conditions for registration on the Principal Register and that there are no substantive difficulties, such as no competing trademarks in our database.
If the examining attorney concludes that your trademark is not registrable, an office action will be issued. This official letter explains why registration has been denied and, if applicable, gives any advice for improving the application. By the date, you must reply to the office action and fix the issues specified in the letter. The reviewing attorney will approve your trademark for publication if your response corrects all of the issues.
The examining attorney will give you a final office action if your response does not resolve all of the issues. Your trademark will not be registered, according to this letter. The Trademark Trial and Appeal Board will hear your appeal of this final decision (TTAB). The examining attorney will approve your trademark for publication if you win your appeal.
It’s possible that you won’t be able to fix every demand or rejection. If only small changes are needed, the examining attorney may contact you by email or phone.
Your application will be considered abandoned if you do not react to an office action within the required time frame or if you lose your TTAB appeal.
The USPTO will consider your application abandoned if you miss a filing deadline. We shall declare your application abandoned and give you a notice of abandonment if you do not react to an office action by the deadline.
Approval for publication
A trademark application is subjected to a thorough review by a government attorney before being registered. The trademark application is “published for opposition” once it has been approved by the government attorney. The “publishing period,” sometimes known as the “opposition phase,” is an important part of the trademark application procedure.
An “Approved for Publication” mark indicates that the examining attorney discovered no concerns that would prevent the trademark from being registered and has concluded their investigation. The USPTO schedules the trademark for “publication” once it has been approved. Third parties who believe their rights may be harmed by the registration of a published trademark have thirty days from the date of publication to file a “Notice of Opposition” (or file for an extension of time to oppose). While it’s hard to say whether or not someone will submit an opposition, these cases are uncommon. Only 2% of the 328,001 trademark applications accepted for publication in 2020 were challenged (6,712 oppositions).
In 3-4 months, if no oppositions are submitted, the trademark will move on to the final phases of the registration process.
The length of the final step is determined by the method used to file the trademark. If an applicant has already filed a “use in commerce” application with the USPTO or has based their application on a foreign registration, the application will go straight to registration.
The applicant must present proof of use before the USPTO will register the trademark if the application was filed with the “purpose to use” the mark in commerce (a Section 1(b) application). The USPTO will issue a Notice of Allowance, after which the applicant will have six months to submit a Statement of Use. The applicant can request an extension of time to use the mark in commerce for all of the goods and services specified (or to delete the ones that aren’t). The USPTO must receive this “proof of usage” filing before issuing the registration number or certificate.
Receiving your registration
If your trademark is registered, the USPTO will enter it into the Trademark Status and Document Retrieval (TSDR) system. In the prosecution history, you’ll see a registration notification as well as the certificate icon.
A paper certificate of registration will also be mailed to you by the USPTO. Within three months of finishing the registration process, you should obtain this certificate. Maintain a record of your certificate. It serves as proof that your trademark has been registered with us.
Contact the Trademarks Post-Registration Unit at 571-272-9500 if you have not received your certificate within three months.
Maintaining your registration
Certain trademark maintenance filings have deadlines specified by the US government under US law. The registration will be abandoned if you do not file these renewal documents. There will be no exceptions or excuses. If you continue to use the trademark after the time has passed, you will have limited “common-law,” or “unregistered,” trademark rights, but they will be limited.
Keep these things in mind to keep your trademark registration current:
Don’t miss a renewal filing deadline. Between the fifth and sixth years after the registration date, the first renewal is due. The tenth anniversary of the first registration date is when the second renewal is due (9th-10th year). The registration must be renewed every ten years following the second renewal. The government of the United States will not remind you of approaching renewals and will not offer extensions (aside from a six-month grace period which requires additional fees). It is entirely your responsibility, and if you fail to renew, your mark will be automatically cancelled.
PREPARING TO FILE
Why search for similar trademarks?
One of the most common reasons trademark applications are denied is because the applied-for trademark is too similar to one that has already been registered, causing confusion. Customers are more inclined to believe your goods or services are sourced from the same place as another party’s goods or services. So, before submitting an application to register a trademark, check to see if someone else has already registered the same or a similar trademark.
This entails completing a clearance search, which normally entails looking up federally registered and applied-for trademarks in our Trademark Electronic Search System (TESS), state trademark databases, and the internet. Although the trademark examining attorney assigned to your application will do a search, it will simply be to see whether there are any trademarks in our database that are in dispute with yours. As a result, you should be aware of any additional trademarks that might be infringing. It is up to you to conduct a search of state trademark databases and the internet.
It is not a guarantee that your trademark will be registered if you apply for it. As a result, you should do your best to ensure that everything in your initial application complies with federal registration standards. Before you begin your application, think about each of these points.
Application becomes public record
Once you submit your trademark application, it becomes public record. Except for payment information, all personal information you provide to us, such as your address and email address, becomes part of a public record that can be viewed on our website and other websites that index USPTO data, such as Google.
This is a legal requirement. You have a few options for preventing certain types of personal data from being made public on USPTO website.
Determine what type of trademark you want to register
Your trademark can be registered as a conventional character trademark or as a special form trademark. The category you select has an impact on the scope of your protection as well as your submission criteria.
A regular character trademark requires little information; however, a color special form trademark requires a JPG version of the trademark, a color claim, and a description of the trademark that identifies where the colors are situated within the trademark. You cannot update your trademark or fundamentally alter the trademark you filed once you have submitted your application.
Search for a trademark that’s confusingly similar to yours
Using the Trademark Electronic Search System, conduct a thorough search to ensure that no one else has already registered or applied for a trademark that is the same as or too similar to yours (TESS). If someone else has previously done so, your application may be denied due to a probability of confusion between your trademark and the other trademark. After doing a search, you must decide whether or not to file your application.
How much does it cost?
If you hire an attorney to help you file a trademark, you’ll be concerned about two costs: the cost of submitting the application (paid to the US government) and the cost of the attorney’s services (research, consultation, trademark filing time, and so on).
The federal filing fee is $350 per category of products. For example, if you want to trademark a name that represents a clothes line, a jewellery brand, or a purse brand, the US Government filing cost for each of those product categories or “classes” will be $350. (As they are called by the United States Patent and Trademark Office). In some unusual circumstances, the filing cost can be reduced to $225 per class instead of $350, and your trademark attorney can look into this on a case-by-case basis.
Total Cost to File a Trademark: Assuming you are selling your goods at the time of filing, the total cost of registering a trademark will be $950 for the flat legal fee and $350 per class for the US Government filing fee. As a result, the overall cost of the process for a single class application will be $1,300.
Potential Additional Costs Associated with a Trademark Registration: After that, let’s look at some of the complexity of the filing procedure and how they could affect the charge. We’ll look at some common situations that persons who register and receive trademarks may face in order to provide maximum transparency to what, like any bureaucratic procedure, can sometimes appear opaque and confusing.
As previously stated, if you are not selling your goods and/or services at the time of filing – that is, you have not yet offered your product or service for sale – the cost of filing will fluctuate slightly. If that’s the case, you’ll have to start selling your product or service within a year of filing, and you’ll have to pay an extra fee for the papers to prove it. That’s a total of $350 for a single class application, including a $100 filing fee to the US government and a flat $250 legal cost for assembling and submitting the facts and proof of your trademark in commerce to the USPTO.
In trademark renewals and responding to – or initiating – opposition proceedings, or refusals to register due to a third-party conflict, descriptiveness concern, or genericness concern issued by the USPTO, it’s a little more difficult to provide an across-the-board rate without knowing the full details of the services required.
We are always delighted to look at your situation and provide a quote if you require assistance in these areas, whether it’s with a trademark you’ve had for a long time or with a trademark you filed with Berlant’s help. You can anticipate the same level of service and pleasure once you contact us with your demands and receive a quote.
Application filing basis
To file a trademark application with the United States Patent and Trademark Office, a trademark applicant must have a statutory foundation. There are five filing grounds, and a trademark applicant must meet the legal requirements for at least one of them. If you opt to file a TEAS Plus application for a reduced filing cost ($275.00 per International Classification), you must identify and satisfy the basis requirements at the time of filing. If you choose to file a TEAS application but fail to meet the filing basis conditions, the Examining Attorney will provide you opportunity to fix the errors in the first Office Action.
Filing Under §1(a) of the Trademark Act (15 U.S. C. §1051(a))
A use-based application is what this is known as. A verifiable statement attesting to use of the trademark in commerce in connection with the products or services listed in the application must be included with the application at least as early as the filing date. The applicant must mention the date the trademark was first used anywhere and in “commerce.” The term “commerce” has a legal definition that includes any sort of business that can be controlled by the US Congress. Interstate, territorial, and commerce between the United States and a foreign country are examples of these sorts. Intrastate trade alone will not sufficient. Finally, one specimen must be presented for each International Class to demonstrate use.
Filing Under §1(b) of the Trademark Act (15 U.S. C. §1051(b))
An intent-to-use application is what this app is called. The applicant must demonstrate that it intends to use the trademark in commerce in connection with the products or services indicated in the application. Until usage has been proved, a trademark in an intent-to-use application is not eligible for registration on the Supplemental Register. The question of whether a trademark applicant has a “bona fide” purpose to use the mark in commerce will be considered in an objective manner based on all of the circumstances.
Filing Under §44(d) of the Trademark Act (15 U.S. C. §1126(d))
This section of the Trademark Act allows for a priority filing date if the following conditions are met: (1) the claim of priority is filed within six months of the foreign application’s filing date; (2) the application specifies the filing date, serial number, and country of the first filed foreign application; and (3) the application verifies that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods and services. The applicant must establish a basis under 1(a), 1(b), or 44(e) of the Act before the application can be authorised for publication or registration.
Filing Under §44(e) of the Trademark Act (15 U.S. C. §1126(e))
A trademark application filed under section 44(e) is based on a trademark registration issued by the applicant’s home country. The applicant must produce a copy of the registration from the applicant’s country of origin to satisfy the requirements of Section 44(e) of the Act (which must either be a party to a convention or treaty in which the U.S. is also a party or extends reciprocal registration rights to nationals of the U.S.). The application must also include a declaration from the applicant that it intends to use the mark in commerce with the goods or services described in the trademark application. Even if the application claims commercial use, this confirmed statement is essential.
Filing Under §66(a) of the Trademark Act (15 U.S. C. §1141f(a))
This clause of the Trademark Act allows an overseas registration’s protection to be extended to the United States. In the same way that trademark applications filed under Section 44 of the Trademark Act must include a declaration of a bona fide intention to use the mark in commerce with the goods or services listed in the application, the applicant must include a declaration of a bona fide intention to use the mark in commerce with the goods or services listed in the application.
A crucial stage in trademark prosecution is deciding on the right filing basis. Each filing basis has its own set of requirements, and choosing one typically involves strategic considerations.
Goods and services
There is no such thing as a trademark that exists in a vacuum. At least one product or service must be associated with a trademark. In the abstract, you can’t trademark words. When you hear about a celebrity trademarking a phrase, you can be sure that the phrase or slogan will be used to promote a certain product or service. While there is no limit to the number of goods or services that can be named in an application, as mentioned below, the cost of filing may increase as the number of goods or services increases.
Only those goods or services that have been sold under the mark as of the filing date of the application should be identified in a use-based application. In a use-based application, do not include things that you have not yet sold.
If you want to include things that haven’t yet been sold, file an Intent-To-Utilize application or use the ITU filing basis for those items that haven’t been used yet. You might use an ITU application or file basis to include a wide range of goods and/or services that you expect to market in the future. However, you must be practical. Others may contest your filing based on a lack of bona fide intent to utilize if you have too many goods or services.
What is an Identification of Goods and Services?
The description of the products covered by a trademark application is the identification of goods and services. As used in conversation between USPTO trademark examining attorneys and trademark lawyers, nicknames for the identifier include “ID of products,” “ID of services,” or simply ID. A trademark application might include a variety of products and services.
What are USPTO trademark classes of goods/services?
The USPTO divides commodities and services (both of which shall be referred to as “products”) into 45 separate registration classes. These classifications aid in the identification of marks. It is typical for many trademark owners to register the same mark for various products in various classes. For example, Company A may have a registration for the mark ABC for tyres, but Company B may have a registration for the same mark for apparel. Despite the fact that both registrations are for the same mark (i.e., “ABC”), they are allowed to coexist as federal registrations since they are unlikely to cause consumer confusion.
When searching the USPTO database for possibly conflicting marks, pay special attention to the class that covers your relevant goods or services. Products from one category may be similar to those from another. A mark for a food or beverage product, for example, may be rejected by the USPTO because it is too similar to a mark registered for restaurant services.
A same problem affects software, mobile applications, and web products. While computer software is frequently classified as class 9, it may also be classified as class 35 for websites, class 38 for messaging or telecommunications, or class 45 for online social networking. Depending on the content, other classes may be engaged in online goods.
Famous marks may be granted protection that extends beyond the classes in which they have been registered. Trademarks are used to identify the origin of a product. As a result, it’s easy to see how misunderstanding may occur if someone tried to use and register a well-known mark for an entirely new product category. Consumers may mistakenly believe that the well-known brand is affiliated with them or that the well-known brand is expanding into new product lines.
How to Identify Goods and Services Properly
The USPTO encourages applicants to use preapproved descriptions as much as feasible when identifying products for trademark applications. You can use this searchable USPTO Trademark ID Manual to find pre-approved descriptions for your items. In your trademark application, use carefully prepared descriptions of goods and services to reduce delays. Non-substantive Office Actions can be avoided with well-written descriptions.
Drawings and specimens
In general, an applicant must provide evidence of trademark usage in connection with the products and services listed in a trademark application or trademark registration to the United States Patent and Trademark Office (USPTO). This type of evidence of usage is referred to as a “Specimen” by the USPTO and is subject to specific criteria. We’ll go over some of the guidelines for trademark specimens that are acceptable.
The Applicant must provide a specimen if the application is based on “use in commerce” or “intent to use.” A specimen is not necessary if the application is based on a foreign registration or lodged under the Madrid Protocol.
A specimen is also required between the fifth- and sixth-years following registration (Section 8 or 71 Declaration of Continued Use), and then every ten years (Renewal) after that, during the tenth, twentieth, and so on.
Applicant must provide a single specimen for each class of goods or services in the application/registration where a specimen is needed.
The USPTO publishes rules and guidelines on what constitutes an acceptable specimen, and these rules were updated on February 15, 2020 to reflect current statutory requirements and precedent.
When it comes to goods specimens, the specimen must exhibit actual use of the mark on the goods, containers or packaging for the goods, labels or tags affixed to the goods, or displays related with the goods.
In the case of service specimens, the specimen must demonstrate a direct link between the mark and the services through usage in the selling of services, including use in the performance or rendering of services, or in the promotion of services.
An acceptable specimen must:
- Be a true example of how you utilize your trademark in commerce to provide your goods or services (not a mockup, printer’s proof, digitally manipulated image, representation of intended packaging, or website draught showing how your mark might appear).
- Demonstrate how your brand is being used in conjunction with the goods or services indicated in your application.
- Draw a trademark that matches the one on your drawing.
- Demonstrate how you use your trademark (not use by someone else, such as press releases sent exclusively to news media).
- Depending on whether you have commodities or services, you should be an appropriate type of specimen. Advertising material, for example, is permissible for services but not for commodities.
- Demonstrate how your trademark is being utilized in a way that connects the mark to the products or services.
- Demonstrate how your trademark is used in such a way that customers would recognize it as a source indication for the products or services in your application (it functions as a trademark).
- In your submission, including the URL and date you accessed or printed the webpage.