“The Story of” series of articles are written by Young Jeon, Esq. to share his experience with a trademark application filed with the USPTO. It is intended to be informative as to the USPTO trademark registration process. Only information readily available to the public is contained in this article.
DASAMOA® is an online retail department store based in Texas.
I particularly remember this case for taking only three days to file. That means I spent only three days on reviewing, preparing, and filing the application. One might say, “Three days? I can do it in 20 minutes.”
What needs to be done?
When you have a totally arbitrary standard character mark, such as “QEGIX”, you often find no similar mark used for related goods or services. Also, when the mark is currently used for a good and you can personally verify the use, you can move pretty quickly.
However, even in those cases, it typically takes more than a week due to things like executing a retainer agreement, following up with the clients, and so on.
What’s arbitrary?
A mark is arbitrary when it does not have any pertinence to the good or service with which it is associated. I used QEGIX as an example above because it is probably not pertinent to any good or service. However, even a common word like Apple can be arbitrary when it is used in association with electronics and computers.
What’s “current used for”?
Before registration, a trademark must be used, and a mark is used when goods bearing the mark are sold in the United States. Technically, the marked goods have to move across the state borders, but in today’s world it’s rather hard to find a good that is made and sold within a single state.
Why verify?
I work with diverse clients with different backgrounds. A lot of businesses are based in a country that has a different trademark registration scheme than the U.S. system. In fact, in many countries one can simply file for a trademark regardless of the “use” requirement. Hence, I make sure if they are using the mark correctly among others before filing an application.
Notes
- For a service, the “use” requirement is satisfied when a service is offered.
- I could verify the existence of Dasamoa, LLC in the state of Texas via Taxable Entity Search (state.tx.us).
- A web page can be used as a specimen for both goods and services. However, you will need to include the web address and the date on which you produced the screenshot in your application.
Timeline
10/26/2020: Initial consultation
10/28/2020: Application filed
4/5/2021: Office action*
4/5/2021: Response to the OA
8/10/2021: Published for opposition
10/26/2021: Registered
*A clerical error caused an office action to be issued. It was resolved without additional charges to the client.