TMIN: Before You File

Part 2 of Trademark Information Network Series

Published on Dec 09, 2016

This video provides an overview of the most important issues you should be aware of when filing a trademark application. It covers such topics as trademark availability searching, ownership information, differences between drawings and specimens, identifications of goods and services, and filing bases. Failure to understand these topics can create major deficiencies in your application or result in an application that is void from the start.

Trademark Information Network Series

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List of critical application issues


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Refusals. Delays. Loss of time and money. Usually leading to the death of a trademark application. Thats the report were getting from the Trademark Office at this hour. If you fail to search for conflicting marks before filing, improperly fill out the application, or fail to submit the proper supporting documents, you may create major deficiencies in your application. Take a look.

Yeah, I really didnt know what I was doing. But, Im in a band with some friends and we wanted to protect our band name. So, I got online after a show one night and filled out the application. Um, but doing it in a rush like that was a mistake because I wasted a year and 225 dollars. Did you know that fee was nonrefundable?

So, if you are a first-time filer, wish to avoid delays, or want to avoid an application that is void from the start, stay tuned for some important tips just released by the Trademark Office.

First, use the electronic resources provided to you by the Office. For example, before you even start the application, use the Trademark Electronic Search System, or TESS, to search for marks that are confusingly similar to yours. If theres a live mark in the system that is similar to yours and used with related goods and services, your application may be refused.

Its a good thing I checked, actually. Turns out some guy in Alaska had already filed for the mark I wanted in a related business. So, I just picked a new mark. Saved me a bunch of money

Second, file electronically. Use the Trademark Electronic Application System, or TEAS (T-E-A-S), to file your application. Once you start to fill out the application form, remember that the Owner of the Mark is not necessarily the name of the person filling out the form.

If the owner of the trademark is a corporation, Limited Liability Company, partnership, or other legally formed business, use the name of the business as the Applicant Name. And dont forget to include the state in which the business is incorporated or organized.

If you alone own the trademark, you may indicate this by filling in your personal name, clicking that you are an Individual, and selecting your country of citizenship. Pay careful attention to this matter or you could end up with a void application.

I screwed up big time! I put down my name, plus my moms name, cause she kinda gave me the idea. And also that I was an LLC cause I wanted to file papers for that and I thought, well, if I put it down, Id file for it, but then I didnt. It was a mess. I guess Ill read the form next time!

Ive just been informed that we have breaking news from the Trademark Office.

Karen, can we go live? OK.

Ladies and gentlemen, were taking you live to the USPTO campus. Standing outside the atrium is our own Sandhya Mahajan. Sandhya, whats the story?

Well, Mark, Ive just been informed that the number one mistake first time filers make is not understanding that a drawing of the mark is not the same thing as a specimen. Ever.

A drawing of the mark is merely a depiction of the mark by itself, without anything else around it. As you can see from the screen, it could be a Standard Character Mark, meaning you dont claim rights to any particular style, font, or color. Or, it could be a Stylized or Special Form mark.

A specimen, on the other hand, shows how you actually use the mark in commerce in connection with your goods and services. For example, if you use the mark on goods, youd submit a picture of the mark on a label or hang tag that is attached to the goods. For services, on the other hand, advertising and marketing materials are acceptable, so long as they show the mark being used in the advertising or providing of the services.

Dont confuse the two and remember: a drawing shows what the mark is; a specimen shows how the mark is used.

Thats all from here, Mark. Ill let you know if anything else develops.

Thanks, Sandhya; keep us posted.

Now, uh, I guess this is number four? Make sure to correctly identify your goods or services.

My goodsy what?

Choose carefully, because an incorrect identification of goods and services could prevent registration down the road. And, in these situations, the Office does not issue refunds.

Learned that the hard way

If youre asking what an "identification" is or what is meant by "goods and services," think about it this way. What do customers purchase from you? An actual physical product that bears your trademark? Or do they hire you to perform an activity for them? If its products, you have goods. If its activities, you have services. Although the determination of whether you have goods or services can be confusing, its critical that you make the correct identification.

To help you along, lets look at an example that applicants often find confusing: "T-shirts" and the custom imprinting of t-shirts. Lets say you designed a bunch of t-shirts and you want to sell them. If a customer purchases one, youre providing goods: t-shirts. Note that the customer didnt pay you to perform an activity. He paid you for a "thing." You, then, are a goods provider and youd want to identify your goods as "t-shirts."

On the other hand, lets say a customer has created a new design that she wants you to print on a t-shirt. If you do as she asks, youre providing a service: a custom imprinting service. Although the customer does end up with a t-shirt, she didnt come to you to purchase a "thing." She hired you to perform an activity. You, then, are a service provider and youd want to identify your services as "Custom imprinting of t-shirts" or "Silk screen printing."

But "Wait!" you might be asking. "Dont I need to put down that Im selling my t-shirts?" The quick answer is "No." The selling of your own goods is never a service, but the providing of a convenient place to purchase goods is.

So, if you have a website or a retail store where you provide a place for people to purchase goods, such as t-shirts, then youd want to identify "retail store services." For our example here, your services would be "Retail store and online retail store services featuring t-shirts."

See the difference between them all? It can be confusing, but just remember: goods are things that bear your trademark; services are activities that you perform for others.

The Office has a listing of acceptable goods and services in the Trademark Manual of Acceptable Identifications of Goods and Services, also known as the ID Manual. For guidance, spend a few minutes with the ID Manual and see if the Manual contains an identification that accurately reflects your goods and services. If so, use that ID in your application. Its important to list the correct ID, because you cant add additional goods and services later and you cant switch back and forth between goods and services if you get it wrong.

The Office has also indicated that the goods or services you identify should only be those with which you are actually using the mark or have a bona fide intent to use with the mark. Theoretical usage doesnt count.

Dont try to list everything within a class of goods or services. Its a complete waste of time. Theres no way youre going to use your mark on everything. Instead, just put down those items on which youre actually going to use your mark.

Fifth, as you figure out your goods and services, figure out your correct filing basis. If you are already using the mark in interstate commerce, you should file under the Section 1(a) Use-in-Commerce basis. If you are not yet using the mark in interstate commerce, but have a bona fide intent to do so within the next 3 to 4 years, you should file under the Section 1(b) Intent-to-Use basis. For more details on the examination chronology, check out the Application Timeline found on the USPTO website.

Finally, always remember that registration is not instantaneous or guaranteed. Each application must be reviewed for legal requirements and this takes time. Although your application usually will begin to be examined within 3 months, final disposition may be months or years down the road. You may need to respond to refusals by the examining attorney, submit additional documents, and pay additional fees. This is especially true if you are filing under the Intent to Use basis. You will be required to submit additional forms and you will be required to pay additional fees.

While some applicants complete the application process without assistance from a lawyer, other applicants hire attorneys who specialize in trademark law to help them through the proceedings. The choice is yours; do what is right for you.

Well, I didn't realize this before I filed my first application, but there are lawyers out there who specialize in trademark law. Which is fantastic, 'cause not only do they do the search to let you know if your mark is eligible for registration, but they also file the application for you and then they'll handle any problems that might arise through the whole process. I mean, maybe not everybody needs the help, but I figure it's a legal proceeding. Why not let the lawyer handle it? Know what I mean?

A transcript of this report, a list of these critical application issues, and a link to the Trademark Processing Timelines are all available on the Trademark Information Network page through Remember, these are all general guidelines and may not be directly applicable to your case.

For more breaking coverage on ways to save time and money at the Trademark Office, keep it right here. Additional news segments cover topics in the filing form, as well as what you need to know after youve submitted your application. Watch them now and replay them as often as you like. No need to wait for news at 11...

Im Mark Trademan, Trademark Information Network.

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