The United States Patent and Trademark Office, the government agency responsible for trademark registrations, provides up-to-date, comprehensive guides and toolkits:
It’s important to note that the USPTO is a SELF-FUNDED AGENCY.
This means they are incentivized to make every effort to help you through the application process. Well, it’s in their self-interest because they charge a flat fee for examining your application; poorly prepared applications cost them more time and resource.
Please do not ignore what they say “basics”. They are basics in the sense that you MUST KNOW THEM before applying for registration. It’s your first step toward legally securing one of your most valuable assets, your brands.
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.
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.
The USPTO has helpful videos and TEAS instructions to help out trademark applicants, but how disclaimer affects your legal rights and potential to be initially rejected for registration via office action?
Let’s talk about the disclaimer in terms of registrability and trademark owner’s right.
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.
First, understand what you’re doing.
You actually have quite a list of addresses on your trademark registration/application.
Owner’s (domicile) address (or principal place of business)
Owner’s mailing address (USPTO permits you to have a different mailing address than your address over privacy concern; only mailing address is made public)
Address of your Domestic Representative (Domestic Representative acts like a registered agent for a business. i.e. service of process can be made on a Domestic Representative)
Correspondence address (this is either your mailing address or your attorney’s address)
If you’re shaking your head in disbelief, maybe you shouldn’t do this yourself.
If you don’t have a USPTO.gov account (MyUSPTO), you need to create one. It’s pretty much like creating an account on any website. So, I won’t go into details.
Let’s fill out the form.
Page 1
You might find this first page familiar if you have filed a trademark application yourself.
A noticeable difference is that you can enter multiple serial/registration numbers at a time. Yes, that means you can change your address on multiple registrations/applications in a single filing. How convenient!
Put down your serial/registration number in the blank and hit .
Page 2
Now, it shows your mark and your information. Make sure you are looking at your registration/application.
Then, you have this prompt.
It’s actually asking who you are to this registration/application. You need to be the Owner or the Attorney of Record to make any change of address. Here, we’re assuming you’re doing it DIY, so Owner it is.
When you press the Owner button, you might see the following message.
You see this warning because you had an attorney file the application on your behalf. If so, you must “REVOKE” the authority of a currently appointed attorney to do this address change yourself. If revoked, the attorney will be out of picture in regard to the registration/application. Select “Yes” for the “REVOKE” question.
Also, you might see the 2. “UPDATE” question above as the first question if you did not provide your email address in the registration/application. The USPTO now requires an email address information for every trademark registration, so if you haven’t done this, you must provide one now. Thus, select “Yes” for the “UPDATE” question. You see I’m referring the questions not by numbers but by keywords. The questions, in fact, may be presented in different orders.
Furthermore, there could be a different set of questions at times. But I won’t go into further details. You need to “REVOKE” the power of attorney before you file anything with the USPTO yourself, but in so doing, you might also need to make some other changes or updates if necessary. But don’t worry, the form is pretty smart, if you, for example, do not revoke the power of attorney, the form will not let you proceed when you click .
Following pages
Depending on how many “Yes” you had on the Page 2, you would encounter many more pages for the necessary changes/updates. However, the address you want to change will appear in section as below.
You see Mailing Address (top third) and Domicile Address (very bottom). If you want to have a separate mailing address to hide your actual address from the public, insert the address you want to receive your mail in Mailing Address field, and then uncheck the box next to Domicile Address as shown below.
Then, you can type in your address in the blank field. Alternatively, if you don’t mind making your address public or don’t have a separate mailing address, then you should put down your address next to Mailing Address and leave the box next to Domicile Address (shown above) checked.
Last page
Now, you need to sign the form and .
I will assume you want to “Sign directly” here. Simply, select Owner/Holder as shown below.
Then, fill out the bottom table. Remember, the USPTO recognizes your electronic signature only if it meets certain formality. I suggest you just fill the Signature box with your full name enclosed with / on each side.
On the above shown, replace “your name” with an actual name of yours. If Tom Cruise was the Owner, it would look like:
Don’t forget the slashes, and fill out the Signatory’s Position. In most cases, you can simply write down Owner, but as aforementioned, you may be an employee of an business entity Owner. In this case, you can write down your job title. I doubt a company would have a Temporary Worker to do this, but if that is the case, the supervisor should sign the form not the Temporary Worker.
You’re now set to the form.
The rest will be breeze. Unlike when you filed a trademark application, this submission does not require fees. So, as soon as you submit the form, you’re done.
Congrats! You’ve made the address change on your registration/application yourself.
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.
.
section as below.
.
