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How to avoid mistakes when filing your US trademark

The US trademark registration form is deceptively simple. The online form can be completed in about 30 minutes. More time is needed to correctly answer the questions that use legal "terms of art," which can mislead first time users. These traps for the unwary can prevent registration or lie dormant until much later to prevent broad assertion of the trademark registration rights. Just being aware of these issues can help avoid them.

By reading this article, you may better understand the legal strategies and tactics used to respond to a file a trademark registration application. Yet, this article is not legal advice, and, you should not rely solely on this article. Please consult your own attorney or primary legal sources, such as the Trademark Manual of Examining Procedure.

Misspelling the trademark could forfeit your trademark filing fee

After filing, the trademark may NOT usually be amended or changed. It is essential to properly spell, space, punctuate, hyphenate, design, color, etc. Check, double check and triple check that the trademark is correct. The trademark examiner has some leniency to allow changes that don't change the character of the mark, but, you cannot count on the examiner's discretion. After paying the fee, you may be stuck with exactly what you entered on the application.

Your "Description of Goods and Services" legally defines the scope of your trademark protection.

When you write your "Description of Goods and Services" you legally define the scope of protection for your trademark. Since Trademarks protect consumers from becoming confused about who is providing them with stuff, the trademark is defined by what the "stuff" might be. When writing a goods and services description, you should know

  1. the goods and services descriptions of our competitor's registered trademarks;
  2. the pre-approved good and services description from the trademark identification manual;
  3. any unique commercial aspect of the goods you are selling; and
  4. what words people use to search for your stuff.

Attorneys will differ in their approach to writing a Goods and Services description. There is more than one good way. For small businesses that have just one or two trademarks, we recommend a Goods and Services description that includes the broadest possible commercial description, a narrower description including any unique aspect of your stuff, additional descriptions if other words might be used to find your stuff, any pre-approved goods and services from the trademark ID manual.

Larger business that have a portfolio of marks may wish to pursue different strategies depending on the number of marks, house brands, family marks and other factors.

Using the "TEAS Plus" form to spend $275 (and save $50) on your trademark application.

When you use the "TEAS Plus" form you save $50, but you lose the ability to properly define the scope of your Description of Goods and Services. See the previous paragraph for help on defining your Description of Goods and Services.

###Failing to "USE" the mark in Interstate commerce.

In trademark law, the term "USE" means sales, specifically, sales across state lines. This is a constitutional requirement of trademark law that can not otherwise be waived. If you have not sold your product or service into another state or at least had a customer travel to you from another state, then you have not "USED" your trademark.

Placing labels on products and shipping them to another state is not trademark "use". Putting up a website and having visitor from other states is not trademark "use" (unless the mark is purely for a free information based service). Sending catalogs across state lines that have the trademark is not trademark "use."

Also, each and every product or service in your Description of Goods and Services must have been used as of the date you claim of first use.

When in doubt, file the application as an "Intent to Use" application. You can later file a Statement of Use after you are sure that you have sold each and every element of your Description of Goods and Services across state lines.

Submitting defective trademark sample

Trademark samples are required to show how the trademark has been sold across state lines. For example, a trademark sample could be a price tag with the trademark affixed to the tag. A trademark sample could be product packaging that encloses the goods. A trademark sample could be a business card or letterhead, but, only when the trademark is for a service (and not a tangible product).

A trademark sample cannot be advertising material, including a website, unless the website includes a "shopping cart" or other method for purchasing the goods or services. In general, you want to show the trademark being used as close to the point of purchase as possible.

Filing for a logo or design trademark when the trademark is primarily words or letters

Trademarks registration application that consist only of words and letters, without any fonts, logos, capitalization, designs, scripts, styles, etc. may provide stronger protection. When a trademark is obtained "without any claim to a particular font, style, etc." then the law assumes that the trademark can and will be used with any and every stylization.

If you will only file for one trademark, then consider filing for a trademark on the words only, without your design. If you want to claim your design as well, consider filing for a second trademark on the logo alone, or the words with the design.

Filing for a color trademark when a black and white version trademark is available

When trademarks are filed in black and white, the law assumes that any colors may be used instead of black and white. Generally, it is preferable to for a trademark on the black and white version, which will include any and all color combinations.

Inadvertently perjuring oneself when signing the trademark registration application form

The trademark registration form includes a statement made under penalty of criminal perjury. If you are filing a trademark you must swear that

  1. if you are claiming actual use, that you have sold the described goods or services across state lines;
  2. if you are claiming intent to use, that you intend to sell the goods or services across state lines;
  3. you believe you have a right to use the mark in commerce;
  4. that no one else has the right to use the mark in commerce;
  5. that the mark will not be used to deceive, cause confusion, mistake;
  6. and that the rest of the application is truthful.

If you claim a description of goods or services that you have not actually sold across state lines, you may inadvertently perjure yourself and any trademark rights that you may obtain might be subject to cancellation of the registered trademark or other penalties.

Final Thoughts

Don't let a simple form sway you to answer haphazardly. Understand how each question relates to the trademark rights that you are trying to create. When in doubt, consult with your attorney to ensure that you do not waste time or money.

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