Category: Trademark

  • Acceptable identifications of goods and services

    Acceptable identifications of goods and services

    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.

  • TM Int. Classes (11-2018)

    TM Int. Classes (11-2018)

    Class 1

    Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.

    Class 2

    Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.

    Class 3

    Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.

    Class 4

    Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.

    Class 5

    Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

    Class 6

    Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes.

    Class 7

    Machines, machine tools, power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.

    Class 8

    Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.

    Class 9

    Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

    Class 10

    Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.

    Class 11

    Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

    Class 12

    Vehicles; apparatus for locomotion by land, air or water.

    Class 13

    Firearms; ammunition and projectiles; explosives; fireworks.

    Class 14

    Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.

    Class 15

    Musical instruments.

    Class 16

    Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks.

    Class 17

    Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.

    Class 18

    Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.

    Class 19

    Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

    Class 20

    Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.

    Class 21

    Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.

    Class 22

    Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor.

    Class 23

    Yarns and threads, for textile use.

    Class 24

    Textiles and substitutes for textiles; household linen; curtains of textile or plastic.

    Class 25

    Clothing, footwear, headgear.

    Class 26

    Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.

    Class 27

    Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

    Class 28

    Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.

    Class 29

    Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; oils and fats for food.

    Class 30

    Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (frozen water).

    Class 31

    Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt.

    Class 32

    Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

    Class 33

    Alcoholic beverages (except beers).

    Class 34

    Tobacco; smokers’ articles; matches.

    Class 35

    Advertising; business management; business administration; office functions.

    Class 36

    Insurance; financial affairs; monetary affairs; real estate affairs.

    Class 37

    Building construction; repair; installation services.

    Class 38

    Telecommunications.

    Class 39

    Transport; packaging and storage of goods; travel arrangement.

    Class 40

    Treatment of materials.

    Class 41

    Education; providing of training; entertainment; sporting and cultural activities.

    Class 42

    Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

    Class 43

    Services for providing food and drink; temporary accommodation.

    Class 44

    Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

    Class 45

    Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.

  • Online Trademark Services: Good or Bad?

    Online Trademark Services: Good or Bad?

    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.

    The government agency handling trademark registration, the USPTO, provides ample resources including video clips to guide you through the process.

    Although the form itself is not as user-friendly as it could be, you can do it yourself without any prior knowledge or experience.

    Nonetheless, it’s not about simply filling the form.

    You ought to consider many things before filling out the application form. From what can be trademarked to how it should be trademarked, there are many questions that you should ask yourself before you start filling out the form. The USPTO provides all relevant information, but you can fill out the form without studying them.

    The thing is that all online fee services that charge flat fees ask you to choose on your own if you want a basic service or a more through service. How are you supposed to know?

    When I prepare trademark applications for my clients,

    I see cases where I end up charging only $200 for attorney’s fees in addition to the then-TEAS Plus fee of $225. That’s about on par with the online trademark services.

    As I internally process all the questions a client should ask and ask the client only what must be answered by the client, the client might not know how much time and money is being saved. Some attorneys charge for those hidden time and money savings. That explains why they are more expensive than those largely automated trademark services via online.

    I tend to talk to clients a lot, and some clients have tons of questions. I think they benefit more from my service. In fact, if you just want it to be filed and move on, you might benefit from automated services as I am not available 24/7.

  • Trademark Maintenance: does trademark registration expire?

    Trademark Maintenance: does trademark registration expire?

    Maintaining registration calls for both administrative and executive action.

    Administratively, you need to file with the USPTO a showing that you’re still using the mark after 5 years of the registration, and every 10 years, you need to file a request for renewal.

    On the business side, you must continue using your mark at all times, even after the registration. This requirement is often overlooked because your staff who handles trademark typically has no saying in continuing/discontinuing a product line.

    You need to monitor your registration status and enforce your trademark rights yourself.

    Trademark Status and Document Retrieval (TSDR) service offered by the USPTO is a good place to start. The USPTO recommends every trademark applicant to check TSDR regularly.

    The USPTO does not enforce registered trademarks for the owners. It’s your obligation to monitor infringing activities in the market and take actions to stop them. Often it involves writing a letter to notify the wrongdoer and ask for compliance/compensation, but you may need to bring a lawsuit if there’s a dispute.

  • Trademark Clearance Search

    Trademark Clearance Search

    It is absolutely necessary to find out if there is anyone using your mark prior to your use. A clearance search is often performed through proprietary services, which often search not only state and federal registrations but also common law trademarks. Typically, a better service costs more; but depending on your situation a simple Google search may suffice.

    Typically, a clearance search provides lists of all current state, federal, common law trademarks that are identical or similar to your mark. Unless your mark is very unusual, you will face a number of identical and similar trademarks in use. Even if there is an identical trademark registered and used, it does not necessarily mean that you can’t use the mark; however, it is also true that even if there is no identical trademark, you might not be able to use the mark. At the end it all comes down to whether your use of the mark would infringe other trademark owner’s rights.

  • Trademark Registration: do I need to hire an attorney?

    Trademark Registration: do I need to hire an attorney?

    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.

  • Standard Character mark v. Special Form mark

    Standard Character mark v. Special Form mark

    There are mainly two types of trademark, a standard one and a stylized one.

    Coca-cola_stylized_logo

    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?

    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.

    IPfever_logo_example
    JPfever_example

    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.

    jpfever_example

    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.

    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.

  • Trademark Office Action: how to respond

    Trademark Office Action: how to respond

    Office Action calls for a legal writing.

    When there is problem with your trademark application, the Office will issue an OA.  There could be multiple instances of OA per application while many trademarks get registered without any.

    Sometimes, a simple change to your application can fix the problem, so the only thing you need to is agreeing with the change. But often you must rebut the rejection with legal arguments. This provides you of an opportunity to clarify and strengthen your application (and the trademark), but a wrong response could render the trademark unenforceable or nominal.

    You must understand the reason for rejection clearly and respond to every issue to the full extent. You might find it helpful to review similar OAs and corresponding responses from another applicants on the TSDR (Trademark Status & Document Retrieval), which is open to the public and FREE. Although you can borrow their legal argument and logic, you must apply them to your facts.

    Sometimes it’s not a good idea to proceed with responding office actions. Use free consultation to figure out whether it’s a good idea or not. You may also get a rough idea about cost and timeline.

  • You’ve got to “use” your trademark

    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 Technology 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.

    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.)

    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.)

  • For DIY TM Applicants: What’s a Strong tradeMark?

    For DIY TM Applicants: What’s a Strong tradeMark?

    There is a “strong mark” and a “weak mark”. You don’t need to know all legal distinctions as to different types of marks, but you want to have a strong mark, right? Here’s a shortcut to get to the goal.

    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 is reluctant to protect your trademark because other companies should be free to say their Concierge Service is Luxury.

    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.

    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.