All About Trademarks

Trademark Filing Requirements

Trademark applications in the United States and internationally require certain basic information to be filed:

1) The Trademark to be Registered

For a word mark, the exact spelling of the mark – i.e just the name being protected – is required
For a logo mark, a JPG image of the logo is required, as well as the exact spelling of any text shown in the mark (if applicable). We can convert other image file formats to JPG for you, so any image will do.

2) The Goods and Services & Classification Scheme

All marks must list the goods and services to be protected by the mark.
Examples:

a) “hats, gloves, scarves, boots”; or
b) “software downloads in the field of financial planning.”

Each of these examples fits into a single “class” of goods as they are related. However, if you want to put the goods of both “a” and “b” in the same trademark application, the U.S. Trademark Office charges a fee for each class of goods. (For European Union trademark applications, up to three classes are included for the same fee).

For certification marks, a declaration of the types of goods to be certified as well as a submission of the applied standards are required.

3) Owner Information

Name of the owner (individual or corporation)
State of incorporation (if owner is a corporation)
Address of owner
Name of person who will sign the application and their title (e.g. “president”, “owner”, “trademark administrator”)

4) Showing Use of Your Trademark

U.S. Trademark applications may be filed in one of two ways:

Intent to use
- No Statement of Use is required at the time of filing, but will be filed later.
  - (Please be advised that an additional government and law firm fee applies when filing a Statement of Use separate from the application itself.)

Currently in use
- A specimen of use is required, proving that the mark is indeed used as claimed and filed. If your mark is filed for multiple classes of goods, one specimen per class will be required. In order for us to submit a proper specimen, please send us one of the following:
  - A URL of a website showing your product with the mark in use in connection to the alleged goods and services
  - An image of your product/service (as sold) displaying the mark
  - An actual version of the physical product displaying the mark

Primary vs. Supplemental Register

A US Trademark may be registered on either the Primary Register or the Supplemental Register. The differences are as follows:

Primary Register

Strongest Protection: Trademarks on the Primary Register receive the strongest legal protection. This includes benefits such as presumptions of validity, ownership, and exclusive rights to use the mark nationwide.

Distinctiveness: For a trademark to be registered on the Primary Register, it must be distinctive. This means it should not describe the goods or services it is associated with. For example, the word mark “STINGRAY” for a tent (U.S. Reg. No. 5,165,125) does not describe the tent in any way, making it distinctive and eligible for the Primary Register.

Supplemental Register

Descriptive Trademarks: Trademarks that are descriptive of the goods or services they represent are not eligible for the Primary Register initially. Descriptive trademarks provide information about the product’s characteristics, qualities, or features. An example is “DRY MISO” for a condiment made from miso (U.S. Reg. No. 3,659,587).

Limited Protection: Trademarks on the Supplemental Register receive more limited protection compared to those on the Primary Register. They don’t enjoy the same presumptions of validity and exclusivity, but can still use the ® symbol and block later registrations of confusingly similar marks.

Secondary Meaning

Acquired Distinctiveness: If a descriptive trademark on the Supplemental Register is used consistently and extensively for at least five years, it can acquire “secondary meaning.” This means the public begins to associate the trademark with a particular source rather than just the product itself.

Re-Registration on the Primary Register: Once a trademark has acquired secondary meaning, it can be re-registered on the Primary Register. This transition allows the trademark to receive the full benefits and protections of the Primary Register.

Difference in Damages

With a Primary Register trademark you can seek higher damages including attorney fees and between $1,000 and $200,000 for many types of infringement. (See 15 USC § 1117 of the United States code). A Supplemental Register trademark won’t allow you to recover attorneys fees or the higher “statutory” damages. You can typically recover only what you can prove you lost through the infringement or what the other party gained.
Another consideration is that while Amazon will rarely honor a trademark registration on the Supplemental Register, Amazon typically gives credence to a Primary Register trademark. Still, any form of registration is a deterrent against others using your trademark and also prevents another from trademarking your brand.

Domain Name Disputes

Domain name registrations and trademark registrations are separate systems. Owning a trademark does not necessarily mean you have the exclusive right to own a domain name, and owning a domain name does not necessarily mean that you can sell a product sharing a trade name with the domain. However, in circumstances where the content on a competitor’s domain infringes upon your trademark, a trademark may entitle you to stop them from having their domain name.
According to ICANN’s Uniform Domain Name Dispute Resolution Policy and based on the licensed arbitrator that you decide to use, a domain name can be taken from another if:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the present owner has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.

Abandoned Trademark Applications

If the delay was unintentional, you can petition to revive. You file whatever you should have filed, pay a fee to revive, and pay any fees that came due in the meantime.

The clock does not run from the deadline you missed. It runs two months from the issue date of the Notice of Abandonment. If that notice never reached you, you get two months from when you learned of the abandonment, and never more than six months after the abandonment date in the USPTO’s records. After that you need the Director to find an extraordinary situation.

Your original filing date survives. The months your trademark sat dead do not.

Revival sends your application back for a fresh search against current records. Any mark that registered in the gap can get cited against your trademark application.

Abandoned Trademark Registrations

The above is about applications. If your mark already registered and you miss a renewal deadline, you have a six-month grace period. Miss that and the registration is gone for good — no petition brings it back. You file a new application, with a new date, behind everyone who filed while you lapsed.

Want to Use an Abandoned Trademark Registration?

Maybe. Registration and rights are not the same thing. Rights come from use in commerce. Registration gives you enhanced rights — very enhanced rights — but it is not the source of them. Someone who let a registration lapse may still be selling under that mark, and may still be able to stop you.

Worth checking first: whether the owner is still using the mark (no USPTO database will tell you), why the trademark went abandoned, whether that owner has since filed again, and whether anyone else moved in.

Trademark International Classes

Trademarks are filed in International Classes. That is, an International Class is designated for each type of goods. If you are using a mark for multiple types of goods, a fee must be paid for each International Class. Thus, if your trademark is used for apparel – that’s one Class and one fee. If it’s for Apparel and a food item – that may be two or three Classes.

For your convenience, the International Classes are listed here below. Trademarks are placed into classes 1-35, service marks in classes 36-45.

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminant(s); candles, wicks.

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements (other than hand-operated); incubators for eggs.

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

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 and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.

Class 15: Musical instruments.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

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; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23: Yarns and threads, for textile use.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers.

Class 25: Clothing, footwear, headgear.

Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks 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; legal services.

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: Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.

Certification marks use the following classes:

Class A: Certifying goods.
Class B: Certifying services.