Trademark FAQs Page 1
Charles Carreon
How easy is it to file a trademark online? Pretty easy. So easy that, in my humble opinion, anyone who doesn't file their trademark registration online is wasting time and money. The USPTO online filing system is called TEAS, for Trademark Electronic Application System, and the USPTO website specifically says they prefer TEAS submissions. My experience is that online submissions are processed much faster than over-the-counter, paper submissions.
Of course, just submitting your registration application only begins the process. You may have to respond to further communications from the “examining attorney” at the USPTO; however, they will take your telephone call and receive your emails, and in fact prefer to communicate in this way. These inquiries from the USPTO are called “office actions,” and the TEAS system now allows you to respond to office actions directly through the USPTO website.
For a person who is capable with online media, the online trademark registration application is much easier to handle. Preparing a paper submission is quite daunting, requiring you to print things on special kinds of paper, cut the right size, and enclosing samples of how the logo is used, all of which can take quite a bit of time to get together. By contrast, an online trademark application requires only the digital equivalent of these things.
Don't I need to understand trademark law? Well, a little bit, so before we start, let me clarify three terms of art so you can understand the TEAS instructions. These three terms are “drawing,” “specimen,” and “use in commerce.” The “drawing” in trademark-speak isn't necessarily just a drawing, it can include a phrase. A “specimen” is the term used to describe a product on which the trademark appears, such as a baseball cap, a flashlight, or the “join page” on a membership website. “Use in commerce” means the mark is used to sell something, anything that can be called “goods or services.” The U.S. trademark laws are intended to fuel the marketplace, so a word or phrase can only be trademarked if it's being used to sell. Or, as we discuss below, if you have the “intent to use” the mark in commerce. If the trademarked phrase or image is used to mark hard goods, like a piece of software that is sold on CD, then you will need to send them a photograph of the CD, with the trademark printed on it. In order to show that the trademark is being used “in commerce” for website marketing, it is usually sufficient to send a screen shot of your website credit card transaction page.
What can I trademark? You can trademark a phrase, an image, or both. You can do these things all together in one application, but you should have it planned out before you start, because as you are going through the application you will have opportunities to type in the phrase, upload the picture, or the phrase and picture combination. You will also need to upload an image showing how the phrase and/or picture is “used in commerce.”
Can I register a trademark for a product or service that doesn't exist yet? You may want to submit a trademark registration for a product that has not yet been marketed. This can be a good idea, especially if you see competitors moving into the field, and you think you have a good mark that you want to register. In that case, you can submit an “intent to use” application. The USPTO will allow the registration, and give you six months to show that you have started using the mark in commerce. If you do not respond to their notice to give further information in six months, the mark will be deemed abandoned, and the registration application will go into the “dead file.”
What are the “45 Classes of Goods & Services”? In order to submit a trademark application, you must also select from one of 45 “Classes of Goods and Services.” You will find a link to the USPTO's official list of Goods and Services on the TEAS website. You can select the appropriate number from there and then enter it in the online application form. You can select for more than one class of goods and services, if you think it's necessary. However, you have to pay an additional $325 for each additional category, so you want to think this over carefully. Once you selected the category of goods or services you'll be marketing using the trademark, you must describe the specific goods or services. This is just a short description in plain language, but requires thought and attention. If you are trademarking a cutting edge product, schedule a consultation, and we can develop an appropriate description.
How do I know if someone has already taken my trademark? That's a good question. First, you can run a “TESS” search on the USPTO website. This feature is very easy to use, and you can run a basic search to see if anyone has registered the name yet. Unfortunately, the TESS database is not fully up-to-date, and if you want to be absolutely sure before you submit your registration, there are a number of services that can assist you to check the most up-to-date filing sources.
How much does it cost? $325. Not really that much, considering that among other things it's the best form of security for a domain name that would otherwise be unprotected. You can pay online, using a credit card, but be sure you have done everything just right before you click the payment button, because after that point, fixing errors can be time-consuming and require payment of additional fees.
Can every name be trademarked? Definitely not. There are a number of reasons why trademarks will be rejected, and probably the most common one is that a mark is “merely descriptive.” Many examples of merely descriptive marks come to mind. “Speedy Dry Cleaners,” “Crackling Cold Beer,” and “Yummy Donuts,” are all good examples of names that, while inherently appealing to some people, do nothing more than tell you that at this place you will get your dry cleaning done fast, your beer really cold, or your sweet tooth satisfied. You will have better luck trademarking names that are a little more unique, or which incorporate a misspelling. For example, in the first case you might try, “Press 'n Go.” For the second case, “Ice Man Packaged Liquors” would probably do better. And of course, for the third category, we know about “Krispy Kreme” which certainly has some descriptive elements but also enjoys the benefits of misspellings and an oblique allusion to the product.
How easy is it to file a trademark online? Pretty easy. So easy that, in my humble opinion, anyone who doesn't file their trademark registration online is wasting time and money. The USPTO online filing system is called TEAS, for Trademark Electronic Application System, and the USPTO website specifically says they prefer TEAS submissions. My experience is that online submissions are processed much faster than over-the-counter, paper submissions.
Of course, just submitting your registration application only begins the process. You may have to respond to further communications from the “examining attorney” at the USPTO; however, they will take your telephone call and receive your emails, and in fact prefer to communicate in this way. These inquiries from the USPTO are called “office actions,” and the TEAS system now allows you to respond to office actions directly through the USPTO website.
For a person who is capable with online media, the online trademark registration application is much easier to handle. Preparing a paper submission is quite daunting, requiring you to print things on special kinds of paper, cut the right size, and enclosing samples of how the logo is used, all of which can take quite a bit of time to get together. By contrast, an online trademark application requires only the digital equivalent of these things.
Don't I need to understand trademark law? Well, a little bit, so before we start, let me clarify three terms of art so you can understand the TEAS instructions. These three terms are “drawing,” “specimen,” and “use in commerce.” The “drawing” in trademark-speak isn't necessarily just a drawing, it can include a phrase. A “specimen” is the term used to describe a product on which the trademark appears, such as a baseball cap, a flashlight, or the “join page” on a membership website. “Use in commerce” means the mark is used to sell something, anything that can be called “goods or services.” The U.S. trademark laws are intended to fuel the marketplace, so a word or phrase can only be trademarked if it's being used to sell. Or, as we discuss below, if you have the “intent to use” the mark in commerce. If the trademarked phrase or image is used to mark hard goods, like a piece of software that is sold on CD, then you will need to send them a photograph of the CD, with the trademark printed on it. In order to show that the trademark is being used “in commerce” for website marketing, it is usually sufficient to send a screen shot of your website credit card transaction page.
What can I trademark? You can trademark a phrase, an image, or both. You can do these things all together in one application, but you should have it planned out before you start, because as you are going through the application you will have opportunities to type in the phrase, upload the picture, or the phrase and picture combination. You will also need to upload an image showing how the phrase and/or picture is “used in commerce.”
Can I register a trademark for a product or service that doesn't exist yet? You may want to submit a trademark registration for a product that has not yet been marketed. This can be a good idea, especially if you see competitors moving into the field, and you think you have a good mark that you want to register. In that case, you can submit an “intent to use” application. The USPTO will allow the registration, and give you six months to show that you have started using the mark in commerce. If you do not respond to their notice to give further information in six months, the mark will be deemed abandoned, and the registration application will go into the “dead file.”
What are the “45 Classes of Goods & Services”? In order to submit a trademark application, you must also select from one of 45 “Classes of Goods and Services.” You will find a link to the USPTO's official list of Goods and Services on the TEAS website. You can select the appropriate number from there and then enter it in the online application form. You can select for more than one class of goods and services, if you think it's necessary. However, you have to pay an additional $325 for each additional category, so you want to think this over carefully. Once you selected the category of goods or services you'll be marketing using the trademark, you must describe the specific goods or services. This is just a short description in plain language, but requires thought and attention. If you are trademarking a cutting edge product, schedule a consultation, and we can develop an appropriate description.
How do I know if someone has already taken my trademark? That's a good question. First, you can run a “TESS” search on the USPTO website. This feature is very easy to use, and you can run a basic search to see if anyone has registered the name yet. Unfortunately, the TESS database is not fully up-to-date, and if you want to be absolutely sure before you submit your registration, there are a number of services that can assist you to check the most up-to-date filing sources.
How much does it cost? $325. Not really that much, considering that among other things it's the best form of security for a domain name that would otherwise be unprotected. You can pay online, using a credit card, but be sure you have done everything just right before you click the payment button, because after that point, fixing errors can be time-consuming and require payment of additional fees.
Can every name be trademarked? Definitely not. There are a number of reasons why trademarks will be rejected, and probably the most common one is that a mark is “merely descriptive.” Many examples of merely descriptive marks come to mind. “Speedy Dry Cleaners,” “Crackling Cold Beer,” and “Yummy Donuts,” are all good examples of names that, while inherently appealing to some people, do nothing more than tell you that at this place you will get your dry cleaning done fast, your beer really cold, or your sweet tooth satisfied. You will have better luck trademarking names that are a little more unique, or which incorporate a misspelling. For example, in the first case you might try, “Press 'n Go.” For the second case, “Ice Man Packaged Liquors” would probably do better. And of course, for the third category, we know about “Krispy Kreme” which certainly has some descriptive elements but also enjoys the benefits of misspellings and an oblique allusion to the product.