Back to Basics: Trademarks – Part 3
Common Questions During the Application Process
Have you used your mark in commerce and what is the impact of that?
If you are already selling your product or service with the mark on it, you are “using” your mark in commerce. As a result, you will need to provide proof that you are already using it. You can still register your mark even if you have not started yet. You can file what is referred to as an intent to use application to hold your place in line. You will have to make another filing when you actually start using your mark or file extensions to hold your place in line.
What do I use for a specimen?
As mentioned above, if you are using your mark in commerce, you will have to provide proof which is referred to as a specimen. The specimen can’t just be your logo in a vacuum. It needs to be something that shows you are actually using it like scanned or digitally photographed tags, labels, instruction manuals, or containers that show the mark on the goods. The USPTO warns that invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods. If you are selling services, acceptable specimen are signs, photographs, brochures, websites or advertisements that show the mark used in the sale or advertising of the services.
Are you selling goods or services?
For trademarks, you have to distinguish between whether you are selling goods or services. Goods involve the sales of actual physical products. Services, on the other hand, are activities you perform for others such as professional services. In many cases it will be easy to distinguish between goods and services. Sometimes, it won’t be as easy. For example, renting goods to others means you are providing a service.
The USPTO uses shirts as an example. If you sell shirts with your own logo, you sell goods. If you allow others to bring you shirts and you put their logo on there for them, then you provide a service. If you sell shirts to people, but put your customer’s designs on them, then you may provide a good and service and may need to file in two classes and pay two class fees. If you operate an online store where you sell other people’s shirts to customers, then you are likely involved in the retail service.
Software can be both a good and service. If you are selling actual software purchased by customers through a disk or download then you are selling a good. But, if you are selling SaaS from your website, then you are selling a service.
What category do I use for the goods and services associated with my mark?
As part of the application process, you will have to select a category for the goods and services from a pre-selected list. This is used by the USPTO to help determine whether you are selling similar goods and services as someone else who might be using a similar name. If you use your mark in multiple categories and want it protected for each category, you may have to make multiple $275 payments to the USPTO.
Your selection of a category is important because it identifies the types of goods or services where you may have the exclusive right to use your mark. At the same time, you also need to make sure you actually sell products and services in that category because if you don’t, your registration could be invalidated. Also, changing the category designation can be difficult and require an additional filing fee.
How do I describe my goods or services?
In addition to picking a category, you will have to provide some more details about your goods and services. This is anywhere from a one-word description (t-shirts), to a sentence-long description. Your description, or identification of goods and services, provides the public and the USPTO the necessary information they need to determine whether your mark may interfere with a similar mark. While you have some latitude, the USPTO disfavors using open-ended phrases such as “including,” etc.” and “such as.” You cannot simply repeat the same broader category name. By way of example, if you sell t-shirts, you would pick the category “Clothing” and then use the description “t-shirts.” If you sold a variety of clothing items, your description might be “t-shirts, collared shirts, pants, shorts and shoes.”