When you go through a TEAS application, you will be required to assign an acceptable identification of goods/services for your trademark. In doing so, you will be (sometimes unknowingly) assigning an international class as well. Find out what are these and how to choose them.
International Classes & Acceptable Identifications of Goods or Services
These are two separate systems of categorizing goods and services. As you probably know by now, a trademark (or servicemark) cannot exist without an associated good or service. In other words, you cannot claim a phrase like “Your Favorite Snarky Joe” alone as a trademark. When you make and sell t-shirts printed with the wording “Your Favorite Snarky Joe”, you can stop others from selling T-shirts with the same print. That’s how trademark works.
Naturally, when you file a trademark application (or TEAS) for your brand with the USPTO, you need to provide a list of goods/services your brand sells/offers (or plan to do so) in the U.S. market. An option is to search something called “ID Manual” that has a list of goods/services. For your information, they are called “acceptable identification” because they are pre-approved for use in trademark registration. In fact, you are required to choose exclusively from the ID Manual if you want to qualify for TEAS plus, which is at least $50 cheaper to file.
It’s “at least” $50 cheaper because application fees are calculated based on how many International Classes you have. In the ID Manual, you will see a three-digit number with a heading “Class” next to each item. That’s short for International Class, and it’s international because representatives of many countries met in Nice and agreed to have a common classification system for trademark. There are only 45 Classes, each encompassing a wide range of goods or services. For example, Class 1 includes various chemicals for industrial and commercial purposes such as
sensitized paper;
tyre repairing compositions;
salt for preserving, other than for foodstuffs;
certain additives for use in the food industry, for example, pectin, lecithin, enzymes and chemical preservatives;
certain ingredients for use in the manufacture of cosmetics and pharmaceuticals, for example, vitamins, preservatives and antioxidants;
certain filtering materials, for example, mineral substances, vegetable substances and ceramic materials in particulate form.
In many cases, all of goods/services you sell/offer will belong to a single Class. If that’s the case, it does not matter how many goods/services you include in your application. The application fee stays the same. However, if your goods/services span over two Classes, you will pay double the application fee (which is $250 as of 2022). Three Classes, then triple the amount. If you cannot find a suitable description of your good/service in the ID Manual for your goods/services, you will have to opt out of TEAS plus and simply type up a description in your own words. For the $50 extra fee, the USPTO will examine whether it’s an acceptable identification or not.
Which is better: Over- or under-inclusive of goods/services?
If you are already selling/offering the goods/services in the U.S. market, obviously there is no reason to be over-inclusive. To include goods/service planned for future, you will have to file a separate intent-to-use (“ITU”) application for those items. But if you are filing for a trademark that is not currently in use in the U.S. (i.e. filing an ITU application), it may be tempting for you to include as many goods/services as possible. As long as they all belong to a Class, you pay the same, right?
You should not include more than those you firmly plan to sell or offer in the U.S. because you are required to prove that you are currently selling or offering all goods/services listed in your registration at all times. To explain further, although you only need to submit a single specimen for an entire Class in your application and most likely throughout the registration process, the USPTO can always ask for more later. In fact, they do periodical audits to carve out trademarks that are no longer in use.
On the other hand, when your goods/services span over multiple Classes, you might consider going under-inclusive. Many trademark DIY-ers have a tight budget, and application fees are the ultimate cost for them. So, having multiple Classes may need to be avoided at all costs. In this case, you should focus on your core business. The USPTO will almost always first reject an application if they find a registration with a similar trademark in the same Class. In terms of fending off your competitors, you should have your trademark registered in Classes where your competition happens.
If you’re worried that your competitors may have a similar or same trademark registered in a Class potentially competing with your interest in the future, you can either file an intent-to-use application preemptively or monitor USPTO Official Gazette that publish trademarks to be registered if not opposed. Filing a preemptive application will only work for a period of time because you will be required to submit proof of use within 6 months (can be extended up to 3 years) after the examination of the application is completed. And there are professional Gazette monitoring services, which can be highly efficient if you have a large trademark portfolio.
Although Classes and IDs are made by the USPTO for administrative purpose, they often make big differences in real-life outcomes and affect your legal rights in terms of enforcing your trademark right. Do spend time and double-check if you’re in doubt.
You may be able to move the USPTO to expunge or cancel a trademark registration for not being commercially used in the U.S.
What is Expungement (and Reexamination) of Trademark Registration?
Virtually anyone can petition for an expungement of a registered trademark with the evidence of record supporting that the registered mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration.
Similarly, for registered marks that were not used at the time of filing or by the time provided for statement of alleged use, a petition for a reexamination can be filed with the corresponding evidence.
Either one is an ex parte proceeding before the USPTO, meaning once you establish that there is a prima facie case of non-use (see below), the registrant will need to prove otherwise.
Eligible period?
The registration should be in between 3 and 10 years from the date of registration. However, till December 27, 2023, you can file for an expungement proceeding for a registration that is at least 3 years old, regardless of the 10-year limit.
What is a prima facie case?
It’s a legal term of art that requires a working knowledge regarding burden of proof in a legal proceeding. The more important thing is how to establish a prima facie case.
When you file a petition for an expungement or reexamination you must include evidence as follows:
a. The elements of the reasonable investigation of nonuse conducted, as defined under ยงโ2.91(d), where for each source of information relied upon, the statement includes a description of how and when the searches were conducted and what the searches disclosed; and
b. A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse of the mark in commerce on or in connection with the goods and services as specified in ยงโ2.91(a);
A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.
What can be used as evidence?
As set forth in ยงโ2.91(d)(2), appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to:
State and Federal trademark records;
internet websites and other media likely to or believed to be owned or controlled by the registrant;
internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale;
Print sources and web pages likely to contain reviews or discussions of the relevant goods and/or services;
โข Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency;
The registrant’s marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services;
Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant’s use or nonuse of the registered mark; and
Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement), or was not in use in commerce as of the relevant date (reexamination), on or in connection with the relevant goods and/or services.
Notes
If you find a trademark registration that blocks your trademark’s registration or simply in the way of your commercial utilization of the trademark, it is definitely worth a look to see if the registration was legitimate and valid.
Also, the ex parte proceedings can be an effective way to respond to any claims against your trademark use or application based on a previous trademark registration, including a letter of protest, a TTAB opposition proceeding, and other legal disputes. The ex parte proceedings will suspend any actions before the USPTO and the TTAB.
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๊ณ ๋ก, ๋ฏธ๊ตญ ๋ณํธ์ฌ ์ฑ์ฉ ์ ํญ์ ๋ณผ ์ ์๋ ๊ธฐ๋ณธ ์๊ฑด 2๊ฐ์ง๋ (1) JD from an ABA accredited law school and (2) admitted to practice law in [STATE] ์ ๋๋ค.
“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.
DASAMOAยฎ 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.
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.
There are many business owners who own registered trademarks but have no idea about it. How come?
Possible scenarios:
You’ve registered a trademark when you started up, and you never looked back.
You thought having your business/brand name registered was a good idea one day, then you managed to get it registered. And now it feels like an ancient history.
You hired someone for your trademark registration, and you don’t know where to find them now.
Well, here comes what to do when that happens.
First, see if you have “U.S. Serial No.” or “Registration No.” in your hands.
If you have any of the following, you can find the number easily:
Registration Certificate (for your trademark)
USPTO Official Receipt (for your trademark application)
An email from the USPTO regarding your application or registration
If you don’t have any of those, you need to go to TESS and look up your trademark. See generally TESS Search Hacks.
Second, you go to TSDR and access the current status of your application/registration.
Just type the number you have in the box, and hit Status.
If it reads “Registered” on your status as highlighted below, you have a registered trademark.
If you don’t have a registered trademark, it’s obvious that you need to do something about it.
However, even if you have a registered mark that’s issued and active, you might still need to something.
Lastly, click Maintenance tab on the top.
Then, you’ll see something like this.
It will tell you if your maintenance is due. In other words, if you don’t act in time, your trademark registration will be canceled.
Well, losing registration doesn’t mean you lose your trademark altogether. In some cases, you can even revive your registration. However, there will be at least a suspension of your statutory rights under the registration, so you do not want that to happen.
If you didn’t do your application yourself, you may need help with maintenance as well, but not always.
Maintenance chiefly comes in two varieties: (1) making sure the registrant is still using the mark and (2) impose reasonable fees for keeping the trademark Registers. The latter is, as you probably guessed, about paying the bill while the former requires some documentation to prove your use.
Let’s talk about the former variety. This type of maintenance filing is often rejected for submitting a wrong specimen. So, you probably should check out Specimens | USPTO before filing.
Other than that, I believe the maintenance filing is pretty straightforward as long as you read and follow instruction carefully. Just make sure you find a correct form on the Index of all TEAS forms | USPTO.
