Businesses move. And their trademarks should come along. Unfortunately, changing your address on your trademark registration(s) (also in your application(s) if it has not been registered) is not as straightforward as changing your profile on Facebook.
Amazon’s IP Accelerator Program (hereinafter “IPAP”) allows sellers to use Amazon Brand Registry as soon as they file for a trademark application with the USPTO. Typically, registration takes 6-9 months, so this is an exciting program for Amazon sellers.
If you’ve reached this article, you’re very likely mindful about those dubious online trademark services. They’re low cost, and they tend to have bad reviews on online communities like BBB and Yelp. Well, I’m not surprised. I’ve recently had a client who was charged for two international classes ($550 in USPTO fees), but for only one international class the application was actually filed. That’s an outright fraud.
So, now you wonder how IPfever is different. I understand it seemingly has less documentations and lacks fancy charts/diagrams explaining the process. The truth is that IPfever is actually just an online arm of two patent attorneys’ traditional law practice. In other words, though IPfever has online presence, we work like any other law offices with real attorneys except that we have a very different approach to legal fees.
The reason people consider those dubious online services is obviously the cost. When you walk in to a law firm, you’re starting to pay everything you see and interact from there on. The receptionist’s salary? The fancy office furniture? The time you spend in their offices including “free” consultation? All paid by the clients in the end. IPfever attorneys believe attorneys can file a trademark application at a fraction of cost if they work smart.
Not all trademark applications are created equal. Some takes more time and preparation while others may be filed in minutes if not an hour. So, IPfever created this after-the-fact fee structure where clients will not pay unless they are satisfied.
Here’s how it works:
When you request a free consultation, an attorney will contact you and ask you bunch of questions. Of course, you can ask questions, too. But some of those questions will cost money.
For example, if you want to know if you can use a brand name or logo without infringing other’s trademark, or more simply if you can successfully register a brand name or logo with the USPTO, then attorneys will have to do some research to answer that question. These kind of answers will be in a research report that comes with an invoice, which you should pay, theoretically. However, if you feel you’re not happy with the report, then you’re free to walk away.
Other than that, most questions will be answered by your attorney on spot. Some of the questions will take a lot of time answering because you might ask something like “what about this design feature?” There, your attorney will try to guide you through the process of getting a registered trademark based on your specific needs about the cost, timeline, the ultimate strength of registered trademark, and etc. When you say the cost is your top priority, your attorney will lead you to the shortest way, but meanwhile you will be informed about the risks that you’re taking. Sometimes, you are willing to take a risk to save money, and we fully understand.
After that initial consultation, attorneys can give you the estimate of cost for filing an trademark application with the USPTO. This would include all the USPTO fees, and unless your application is initially refused for some reason, that is all you pay for the registration.
If you like what you saw and heard so far, you give your attorney a nod, and a trademark application will be ready in 2-3 business days. Then, you will receive a report of details of the trademark application and an invoice, for the services done so far and the USPTO filing fees. You make the payment, and your application will be filed with the USPTO.
This is not the most straightforward process because more often than not, the first question you ask is how much it costs? Well, the obvious answer is “it depends”. Maybe we can simply say $1,000 per trademark, excluding USPTO fees, like other attorneys. We can certainly do that because the average cost of getting a registered trademark at IPfever is less.
From February 2020 to June 2020, the average cost of getting a registered trademark at IPfever was about $425.
Then, why not just do $500 flat fee? Well, the lowest was $130. What should we say to the client for whom we only spent $130 worth time and resources? We understand the fear of getting unexpected legal invoices, and that is why we always try to provide estimates before we move and also have the “100% satisfaction guarantee”: if you’re not satisfied with the services, you don’t have to pay the invoice. Just let us know what went wrong, and we will try to fix it or simply cancel the invoice.
I hope you find this article helpful, and if you have further questions, simply request a free consultation and include your question there.
There are good reasons you should stick to the Trademark ID Manual when you describe your goods and services in your trademark application. Picking one outside Trademark ID Manual not only cost you more but also may delay the registration process.
Why is the description important?
First, you need to understand there are two different classification systems: (1) the Nice Classification (NCL) and (2) a Trademark Identifications and Classifications Project (or TM5). The NCL is a “compulsory” classification system, which is annually updated and currently lists about 80 international classes (ICs). TM5 is an “optional” classification regime that simply seeks to unite the big 5 intellectual property agencies in the world (obviously the USPTO is one of them).
Long story short, NCL gives categories and TM5 gives sub-categories. And some sub-categories adopted by the USPTO are yet adopted by all major intellectual property offices, meaning they are okay with the USPTO although not TM5.
The reason you need to place your trademark in a proper category arises from the very reason you want your trademark registered. As you probably know by now, trademark is quite different from other intellectual properties in that it is not about protecting your ingenuity or creativity but about protecting your goodwill and reputation in the market.
What this means is that your pretty logo or emblem is protected by the trademark law not because you created it but because you used it in association with your goods/services. If you want to protect your artistic or literary expression, you should seek copyright protection.
So, why we need appropriate classification? On the paper, your trademark protection likely goes only as far as the IC in which your product/service belongs. For example, you run a bakery named Flew Blast, and someone launches an athletic clothing brand Flew Blast . You unlikely can argue your trademark right is being infringed.
If you have two or more ICs in which your goods/services belong, you need to file multiple-class trademark application. In reality, you simply list all ICs in an application and pay the application fee multiplied by the number of ICs you elected.
How to Identify My Goods/Services?
Once you have chosen all ICs that apply to your goods/services, now you need to tell the USPTO why you selected those ICs. At least one good/service must be entered for each IC in your application, and it can be as many as you like. The thing is that your business is likely dealing with many types of goods/services in an IC. For example, all cosmetics belong to the international class 003 except those having medicinal purposes. The latter would belong to the international class 005 with other medicines.
It might be tempting to include just every possible goods/service you can find in the USPTO’s Trademark ID manual. After all, it is for no extra charge. However, one of the goals of the USPTO is to allow all rightful owners of trademarks to register their trademarks for protection. Sometimes, even within an IC, there can be instances where quite similar trademarks can be used by two business owners without much conflict or confusion among the consumers. That might be due to no overlapping of potential customers between these two among many other reasons. The identification of goods and services can tell if there would likely be an overlapping of potential customers.
To deter anyone in bad faith claims all the goods/services within an IC, the trademark examiner at the USPTO may require you to submit more than one specimen per international class. (see below for further discussion of specimen) Potentially, a specimen for each and every goods and services listed. Also, you should know that you trademark registration can be cancelled for your false statement.
The TEAS allows you to search the Trademark ID Manual while you are filling in the trademark application. So, do a thorough search and find descriptions that cover all the goods and services you provide. Sometimes, you may find just one description covers it all. Other times, you find two descriptions that more or less cover the same goods and services. You do not need to include all descriptions that apply to your goods/services. If one covers it all, select it and move on. If one does not carry all the way, find another one. Just keep going till everything is covered.
Statement of Use (Allegation of Use)
Whether you are currently using the trademark or you only intend to use it later, at some point you must prove that you are actually using it. That proof is a specimen. A specimen is usually a photography of a good that bears the trademark. The specimen should show the entirety of the product not just the trademark, which is obvious because you already provided how the trademark looks in the earlier stage of the application. Also, it should show the trademark as it is filed, meaning if you have claimed colors in the application, you photo cannot be a black-and-white one. When it comes to services, you need to find a way to show that your mark is used in association with your service/business. Nowadays, a screenshot of your business website should be your first consideration. Simply find the page that actually selling the services, meaning customers can place an order or find contact information. A screenshot of the webpage, which obviously should show your trademark as well, would be a good and convincing specimen.
How many specimens do you need? I would go for one specimen for one IC by default. Just think about how extensive your list of goods/services, and you feel you should show more than just one, then feel free to go ahead and include more specimens. The thing is if the examiner wants to see more specimen, they will simply ask you in an office action. You would have 6-months to add more specimen, and once you upload your specimens in the system using the Response to Office Action form, which can be found here, you are all set. You would face some delay depending on how quickly your examiner re-visit your application, but if your goods/services are cohesive and reasonable, it is unlikely that your examiner asks for more specimen.
Let’s talk about filing a TM application without any help first.
There is no doubt that any US person, including legal entity having address in the U.S., can file a trademark application without absolutely no help.
By carefully filling out all the required blanks and agreeing to go paperless in communicating with the USPTO, you can reduce your application fees from $325 to $225 (TEAS plus).
RF Standard allows you to enter goods/services description in your own words for a slightly heftier fee, but it is not recommended if you want the examination process to be as quick as possible. If you pick one from the Trademark ID manual (by USPTO), the examiner will unlikely oppose to the propriety of the description.
Not all questions are straightforward. When you’re in doubt, always consult USPTO guidelines. Always consult a professional before making decisions. All you learned today may be a tip of an ice burg.
Updated on 7/10/2020 to reflect name changes in USPTO TEAS forms (from Reduced Fees to Standard Fees). This change was made because non-electronic filing (which required a higher “standard” fee) is not available anymore.Young Jeon, Esq.
Getting a trademark, you can either “do it yourself” or hire a professionals. DIY option describes not only filing directly via TEAS at USPTO.gov but also using commercial services under $100.
Let’s compare these two options.
|Do it yourself||Professional Help|
|Mark||Your choice of wording and design||Likely a better wording and design|
|Registration||online trademark search/registration||via your representative|
|Cost||USPTO fees + $100 commercial service fees||USPTO fees + up to $2,000 attorney fees + design cost|
Trademark registration is not too complicated.
Nonetheless, mistakes can cost your time and money. If you are not going to hire an attorney, you should read and watch everything on USPTO’s Trademark Basics before you proceed. On a side note, even if things go smoothly while registering trademark, lawyers can improve the strength of the registered trademark significantly and designers will give your logo/design a professional look.
USPTO offers an online application form through TEAS (Trademark Electronic Application System).
There are various forms including TEAS plus, TEAS RF (Reduced Fee), and TEAS regular application types. Latter forms are subject to higher fees but offers some flexibility to applicants. Assuming you don’t make any mistake in filling out the form, you can save up to $100 by choosing TEAS plus. TEAS forms are web-based, guided, multi-page forms that anyone can learn the process as-you-go.
There are mainly two types of trademark, a standard one and a stylized one.
A standard one (called a standard character mark) establishes your trademark rights to the written words of the mark whereas a stylized one (called a stylized/design mark) to the expression of the words in a certain way.
For example, “Coca-Cola” is a brand name of a certain soda drink, registered to the Coca-Cola Company. But you more often see the name in a particular style as shown here.
Nowadays, the use of stylized logos and designs is very common because it effectively sets apart the company/brand from competitors’.
A common choice is Standard Character.
Although virtually all companies use at least some design/style elements in their trademark, still most of the companies register their trademark in a standard character format. Why?
- They don’t want their trademark right to be limited to a specific design. In fact, if you registered your brand name in a standard character format, any style/design of that registered name can’t be used by your competitors.
- Also, once registered as a stylized/design mark you can’t change the design or style of the mark. Companies often update their design and style elements to modernize them.
Thus, it’s is a rule of thumb that a standard character format affords a better protection.
A Styled/Design Mark works a bit differently.
Let’s say IPfever registered a stylized trademark: After a few years, a website devoted to teaching Japanese language and culture dubs itself Japanese Fever, “JP fever” in short, and starts using this logo:.
Do you see any problem? Although they changed a letter, they look too similar. There’s likely an infringement case.
However, if IPfever were registered as standard character, it would’ve been a different story. Because “fever” in Japanese Fever can be considered as a descriptive word for passion and enthusiasm for Japanese culture, it likely has a leeway.
But it should be noted that stylized/design marks have their own limitation. If Japanese Fever , I say this one differs in style so much to escape from a potential trademark infringement claim.
You have to choose, but choose wisely.
You might say you would just register both standard character and design marks. Problem solved? Well, it’s not that simple.
You can’t claim “the coffee house” trademark for your coffee house because that’s what people call any coffee house. It’s reserved for everyone. But you may register this stylized/design mark.
You probably need to disclaim rights to the words, (meaning that others can literally use the same name) but it still protects you from something like this knock-off.
So, figure out what’s the strength and weakness of your mark, and then choose wisely.
Many low-end products tend to say exactly what it is. On the other hand, high-end products are very subtle. Have you ever bought a crappy good carefully wrapped inside a sophisticated package? Well, more likely than not you weren’t careful.
The thing is there is a tiny market for a fancy looking crappy product.
In other words, having a fancy name does rarely fly for a low-end product. You should name your product for what it is. However, that doesn’t prevent you from growing a great brand name.