(4) Mark Information II

On this page #4, you will describe the product or service you're selling. Is it a good or a service? What international class does the good/service fall under? And how do you describe the good/service in detail? To answer the questions, you need to know "what it is" that you sell.

TEAS plus P4

 

Is it GOOD or SERVICE?

For example, if you're a handyman doing business as the "Household Geek." It doesn't matter that you occasionally sell parts and tools to the customer because what customers ultimately get under the mark "Household Geek" is handyman services. So, it's considered a Servicemark by the USPTO.

 

INTERNATIONAL CLASSES

Handyman service would fall under the international class "037: building construction and repair." Classes exist for administrative convenience, so you have to fit your however unique good/service into one of them. You can use your mark for goods/services in two or more international classes. In this case, you can simply select multiple classes in an application and pay application fees per class.

 

DESCRIPTION

Under a class, you will find many different services. One of the description in the class 037 is "Handyman service, namely, building repair and maintenance." This probably is a suitable description of the Household Geek servicemark. To keep the application fee low at $225 (TEAS plus), you should choose among the prescribed descriptions included in USPTO's Trademark ID Manual. However, if you find no appropriate description, you can ask the USPTO (before filing the application) to add a new description in the Manual.

You need to find an appropriate description and international class for your good/service.

Click teas_button_add_goods_services to search the Trademark ID Manual. Now, you will see this.

teas_p4_001

Type "handyman" in the box next to "Search for:" just like the below. And hit "Go."

teas_p4_search_for

Conveniently there's only one entry for "handyman" in the entire Manual.

teas_p4_002

Now you can check the box next to the International Class code 037, and click "Insert Checked Entries." Often you will get multiples results, and some descriptions fall under multiple classes.

You should focus on what your customers are getting from you, and choose an international class accordingly. And you are free to choose multiple descriptions, but you don't have to choose multiple descriptions and classes just because your good/service can function in a described way or somehow fit the description.

 

Found multiple classes and not sure which one to choose? Get It Done

Filing Basis

After inserting a class, you will be required to select a filing basis for the class. (If you're filing for multiple classes, you simply repeat the following steps.)

teas_p4_003

Because you are already using your mark, select teas_button_section1a. If you haven't used it, you can select Section 1(b) and filing the specimen at a later time and pay an extra fee for that.

teas_p4_004
Here, you upload an image file of your specimen and provide the date when you first used your mark.

 

You've been using it, but not sure it can be a filing basis? Ask a lawyer

Attach Specimen

Specimen is a photo image (JPG or PDF) of your mark appearing with/on your product. For example, let's say you sell smartphone cases made of wood. Its design concept is minimalism, so the cases do not carry any mark on them. However, they are packaged in boxes with prints of your mark. In this case, you take a picture of your mark on the box.

On your online storefront, your trademark would be shown with the products. If the proximity and relationship between the mark and the product image is obvious from the display, a screen-capture of your website can be a specimen.

You can take a picture or capture an image, but it's important that you shouldn't zoom in too much to only show the mark itself or zoom out to leave out the details of your mark.

On the other hand, obviously you can't get photographs of a servicemark this way. If (and only if) your mark is for service, you can use your mark appeared in an advertisement or brochure among others.

teas_button_attach_remove_specimen button lets you upload your image file.

 

What works best for a specimen? Ask a lawyer

Description of Specimen

Unless the style/design of your trademark needs some extra explanation, you may briefly describe how the mark is appeared in connection with your product on the specimen. If your trademark has style/design features, don't forget to fully explain the specimen.

 

Are you not sure if all elements are described? Ask a lawyer

Dates of first use

There are two different dates ("anywhere" and "in commerce"), which can be identical. You want to use the earliest date you can prove your use. And to satisfy "use," you need to actually sell or transport goods or provide services.

As opposed to "use anywhere," "use in commerce" requires that your activity was not limited within a single state. But most transactions nowadays involve another state or another country. For example, if you're selling a product made in China, your good already crossed the state boarder, which counts for a use in commerce. For servicemark, if you offered a service through the internet, your use already reached beyond your home state.

teas_button_assign_filing_basis button saves the progress and brings you back to the previous page.

 

Heard of "token use" and you're concerned? Ask a lawyer

(3) Mark Information I

Let's take a look at Page #3. It's about your mark.

TEAS plus P3 Full

Mark type: (Standard Character)

If you have no design/aesthetic features in your mark (i.e. it's just letters), leave the default value (of Standard Characters) alone shown as below.
teas_p3_001

 Not sure if you have a design feature or not? Ask a lawyer

Enter the mark here: (Standard Character)

Type your letters in the blank. Capital/small letters don't matter because it will be registered as all caps.

TEAS_P3_img_002

You can use Preview_USPTO-Generated_Image button to preview your mark as it would appear in the registration record.

Does the preview fully represent what your mark is? If you would like to have a specific font or color, that's a design/aesthetic feature. Also, if you want to include anything other than shown in the USPTO-Generated Image, you should consider using "Special Form".

If the image doesn't seem "quite" right, it might be a bad sign. Get It Done

Mark Type: (Special Form)

If you select "Special Form" as your Mark type, the form will adapt to your choice as below.

teas_p3_004

You should be careful because choosing a special form tends to reduce the extent of your trademark rights. Make sure you have read "You can call your coffee house “The Coffee House,” but …" Special form does have its own merit.

 

Standard or Special?  Ask a lawyer

Attaching image and explaining it (Special Form)

Now you have more things to do although it's not too complicated. Let's take a close look using an example. Via "Choose File" and "Attach" buttons, an image of IPfever logo has been uploaded. And the rest of the form is filled out accordingly as shown below.

TEAS_P3_img_005For Special Mark, you should be extra careful because this might limit your trademark rights. Make sure you are thorough with IPfever's Basics of Trademark in 10 minutes and USPTO's Trademark Basics. You should thoroughly consider the pros and cons of including design/aesthetic features in your registered mark.

 

Hard to describe design features in words? Get It Done

Additional Statement

You are not done yet. There's an important, but rather inconspicuously shown, message at the bottom. (Yes, you may go south in TEAS plus.)

teas_p3_006

This "Additional Statement" is only required for some cases, but a failure to include required Statements would disqualify your application of TEAS plus status (and extra fees and processing time will be due). A non-exhaustive but simple test is "whether your mark has an international element." If the answer is yes, you might need an additional statement. Another useful test is " whether you feel some important aspect of your mark is left out during application process." Submitting all necessary documents not only prevents unnecessary cost and delay but also maximizes your trademark rights.

 

Do you need a survey of your trademark for additional statement? Get It Done

(2) Applicant Information

Page #2 has more questions; most of them self-explanatory.
TEAS plus P2

"Owner of Trademark" & "Entity Type":

You don't necessarily put down your name or your company's name as the "Owner of Mark." The answer depends on the type of business and can be complicated when there are more than one owner.

Not sure who should be the owner? Ask a lawyer

All other questions

The rest of the questions ask Applicant's contact information. Contact information is very important for trademark prosecution because the Office will contact you about your application when something is wrong. Unless you provided a correct information and proved that you were not at fault regarding the loss of correspondence, missing due dates for required action will cost you extra money and potentially your trademark right.

Want someone to handle all correspondences? Get it Done

(1) General Information

Common questions:
trademark-DIY
IPfever-way

Take a look at Page #1 of TEAS plus form. At the very bottom, there are two questions.
TEAS plus P1

Question #1 asks if you're an attorney.

It's automatically marked "Yes." Because you're not an attorney, you should choose "No."

 

Not sure if you can do it alone? Re-visit "Should you hire an attorney?"

Question #2 asks if you wish to open an application previously filled-out and saved in your computer.

If you completed TEAS form before, you might have a save file. If you open the file, the form will be automatically filled out with your old answers. Otherwise, you can just ignore this question. By the way, you can save your answers to the form only at the last stage of the form.

When you are done, you can use  button to save your answers and proceed to next page.

 

Simply not comfortable with all those buttons? "Get It Done" by a professional

Should you hire an attorney?

Getting a trademark, you can either "do it yourself" or hire a professionals.

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.

 

Go back to find out more about Trademark Application.

How much does a trademark registration REALLY cost?

Above is a cumulative showing of trademark fees (government fees only).

Assuming you use your trademark for a single type (category) of product/service, an online application fee can cost as low as $225, plus a $125 one-time maintenance fee after 5 years of use and $425 every 10 years. Total $1,200 over 20+ years? Not much right?

However, if you don’t do it correctly, there are penalties.

When you fail to provide all necessary information at filing, you will be subject to fees varying from $50 to $150 per incident. There are also optional filings that might strengthen your trademark. And if you miss a date on maintenance fees, you may be penalized. Those penalties can accumulate well past the initial filing fee.

Aside from that, there are legal fees.

Many attorneys charge a flat legal fee of $1000-$2000 per mark plus government fees. If your mark experiences rejections from the USPTO, they might ask for more money on an hourly basis during subsequent actions.

As a result, your cost can vary widely depending on your trademark and how you proceed with it.

[updated to reflect increase in fees in 2017]

You can call your coffee house “The Coffee House,” but …

Common questions:
mark-type

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.Coca-cola_stylized_logo

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?

  1. 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.
  2. 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:IPfever_logo_example 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:JPfever_example.

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  jpfever_example, 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.

the_coffee_house

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.

the_coffee_shop

So, figure out what's the strength and weakness of your mark, and then choose wisely.

 

Have you chosen a suitable mark-type? Ask a lawyer

Go back to see other topics in the Basics in 10 min.

Tax forms are complex and lengthy, but they can’t go south.

Federal trademark registration has become a standard practice for many reasons including (1) it’s inexpensive (as low as $225 to apply online); (2) due to the internet, no one does business in a single state; and (3) branding becomes crucial to even small businesses. And if I add one more to the list, it’s fairly easy.

The easiness comes with a risk.

For example, federal tax forms are usually very complex and lengthy; they are designed to make you write down all taxable incomes imaginable, even those you would never know they were considered income. A trademark application, on the other hand, is very simple and straightforward. In other words, it’s easy to fill out the forms but hard to do it right.

So there’s $99 (plus application fees) trademark registration services online.

Unfortunately, not many people see this as a problem. These services simply let you search registered trademarks online, to apply trademark online, and remind you of important dates for maintaining registration. Well, it sounds like a lot, but the United States Patent and Trademark Office (“USPTO”) offers Trademark Electronic Search, Trademark Electronic Application, and even email reminders of important dates, for free of charge.

There is a reason for such a low price.

Online registration services do provide convenient tools and ease the pain of yours, but they come with a price (literally and also in the form of a false sense of security).

 

See other topics in the Basics in 10 min.

You’ve got to “use” your trademark

Let's take a look at an interesting story:

By the time Apple Inc. debuted iPhone in January 2007, the prefix "i" had already become a thing of Apple. The inauguration of iMac series dates back in 1998. In 2003, iPod was a mega hit.

Lesser known than Apple, however, there was a startup called InfoGear Techonlogy Corporation, which developed an internet phone technology, called "iPhone."

Yes, iPhone™ by InfoGear.

specimen in InfoGear's trademark application
specimen in InfoGear's trademark application

Of course, there's nothing suspicious about Apple's iMac; the iMac trademark was first registered in 1995 by Digi International Inc. which assigned the trademark to Apple in 1998. Here, Apple did a right thing; it bought the iMac trademark before announcing iMac.

But, how about iPhone? Based on the USPTO's record, InfoGear used the iPhone trademark from 1997, and it was registered in 1999. Apple filed its iPhone trademark application in January 8th, 2007. (Steve Jobs unveiled iPhone to the world the next day).

Can Apple do that? Absolutely "NO" said Cisco who brought a lawsuit against Apple based on its iPhone trademark purchased along with InfoGear.

 

In all fairness, if Cisco proved its seriousness about iPhone in the court, we might now have "iPod 4G LTE Advanced" instead of "iPhone 7."

Who knows what Steve Jobs said to Cisco, but Cisco somehow agreed to a concurrent use of the iPhone trademark. (Apple probably challenged Cisco's iPhone trademark by saying that "i" prefix had been associated with Apple product even before Cisco's registration.) Well, assuming Cisco had a valid and enforceable trademark right, what could've happened?

Cisco would say the iPhones sold by InfoGear and Apple were both communication devices, and customers would likely be confused. Of course, Apple would say they are totally different devices; but Apple likely loses on this account.

As a counter, Apple could've argued that Cisco stopped using the trademark (thereby lost its right). Then, the followings become relevant: How many iPhone Cisco sold? How many people bought, used, knew or seen iPhone by Cisco? Had Cisco advertised iPhone? My guess is that Cisco purchased the iPhone trademark, but it really didn't think about using it much.

Are you using your trademark alright? Ask a lawyer

So, be aware that to own a trademark, you have to actually use it, which means placing your goods/services (bearing that mark) in the market.

Trademark registration provides security. For example, companies often file intent-to-use ("ITU") applications before making and selling new products. Without the ITU, mobile phone companies won't be able to announce a flagship model months earlier than actual release, nor can they push an advertising campaign for a new product before they make sales. (Announcing or even advertising is not enough to establish a use of trademark under the trademark law.)

 

Concerned about other businesses using your mark? Ask a lawyer

Trademark registration provides security. For example, companies often file intent-to-use ("ITU") applications before making and selling new products. Without the ITU, mobile phone companies won't be able to announce a flagship model months earlier than actual release, nor can they push an advertising campaign for a new product before they make sales. (Announcing or even advertising is not enough to establish a use of trademark under the trademark law.)

So, be aware that to own a trademark, you have to actually use it, which means placing your goods/services (bearing that mark) in the market.

 

Go back to see other topics in the Basics in 10 min.

Your first step to owning a trademark: choosing a mark

Common questions:
strong-mark

For a starter, you don't want to choose a mark that's fairly similar to what's already out there.

If you are making a new internet search engine, don't name it "Goggle" or "Yahou!"  Your common sense and conscience will tell you why. Similarly, don't name your search engine "Stanford Internet Search."

A clearance search can be cheaply done by a Google search. Search the names you have in mind (or what you're using already). Not only that, search goods or services that compete (or would compete) with yours. You definitely want to know what their names are.

Avoid any confusion at all cost. You probably shouldn't call any of your good/service "Coca-Cola." Nor can you call your soft drink product "Soda."

Next, your mark should stand out.

You can't name your concierge service "Luxury Concierge Service." Well, technically you can, it's a free country. However, the law won't protect your trademark because other companies should be free to say they offer a Luxury Concierge Service.

You need to be creative on this. "Kodak," I think, is a superb trademark. It's short but distinct, original but easy to pronounce. Don't worry if you're not good at making up words. A common word like "Apple" can be a good trademark for a computer electronics company.

Is your mark strong enough? Ask a lawyer

Internet-readiness

In today's world, an internet domain name is as important as a trademark.

A domain name registration does not necessarily mean that the name is taken as a trademark by others. However, you probably want to avoid someone else owning YOUR_TRADEMARK.com.

If the name in your mind is still available for a new registration, get it immediately. The domain registration costs less than $12 a year. (It's as easy as setting up an email account.) If it's owned by others, consider buying it from the current owner or finding a better name.

 

Go back to see other topics in the Basics in 10min.