Moving along to the names, portraits, signatures of individuals portion. If, indeed, your mark includes any of those items that relate to someone else, you need to have consent from that individual in order to register the mark. Once again, as you get to this level of detail, it would be very beneficial for you to speak with a trademark attorney.
The remaining statements relate to different items as well that a trademark attorney can walk you through. So, let’s assume that you want to apply for the mark without making an additional statement. At this point, again, all you have to do is include the mark as you want it to be registered here, and then click the continued button.
Fortunately, the USPTO provides a search tool that allows you to search what your good or service might be and select from a list of predetermined items. So, if we wanted to search for what the good is, let’s say, chairs, you can enter the term chairs and it will give you several options related to the kinds of chairs that might be at issue. And it’s important for you to recognize that it also lists a number here. This is known as an international class. An international class is a uniform designation by number that tries to group certain types of goods or services together. If you select more than one international class, you will have to pay an additional filing fee come time for payment. The additional filing fee is $275 per class. However, if you select multiple entries in the same international class, you do not have to worry about an additional filing fee.
So, let’s say that I’m filing for registration of mark as it relates to barbers’ chairs. I check that box and I ask it to insert the checked entries. At this point, you’ll see that the mark that I’m applying for pertains to barbers’ chairs. The next thing that you must do in order for the application to move forward is make a selection of 1(a), 1(b), or these Section 44’s which relate to foreign applications. If you’ve filed for or registered your mark in a foreign country, you can rely upon that mark as you file for this United States Patent and Trademark Office registration. But, once again, this is likely a point where you would need the assistance of a trademark attorney.
However, if you are actually using the mark right now in connection with barbers’ chairs, for example, you would click the Section 1(a). And what that means is that you, indeed, are actually using the mark in commerce. And if you are, it asks for specific information in order for your application to be complete. The first is it requires that you attach a specimen, and what a specimen is, is it’s an example showing how you’re actually using the mark in commerce. And this is where the distinction between a trademark, which pertains to goods, and a service mark, which pertains to services, becomes critically important. If you are applying for a trademark, the best kind of specimen shows use of that actual mark, either on the good itself, on a hang tag or label, packaging of the good or something similar. Whereas with a specimen for a service mark, which pertains to particular kind of service, you can attach such things as print out of the website or display advertisements. Regardless, you must have a specimen that the USPTO will accept. And the best thing to do is attach it here via a PDF or some other form that’s accepted by the USPTO. You must then describe what the specimen is. So, if I attached a specimen showing my mark on the back of my barber’s chair, I would likely attach a digital photograph of the good, and that will suffice.
The next item asks you for the date of first use of the mark anywhere. And this is the date that you first came up with the mark and actually started to contemplate using it. You can enter that date here. However, the next one is critically important. That’s the date of first use of the mark in commerce. In order to secure trademark rights, you must be the first to use the mark in interstate commerce. Meaning that you need to actually use the mark and display it in hopes of making sales or actually securing a sale in order to have trademark rights. This date is what you should put here. Now, keep in mind, it is important that you evidence to support whatever date you are going to input. So, if you do not have evidence to support it, you might want to consult with a trademark attorney to determine what the best date you can put in there would be.
Now, in the event that you don’t have all of this information and you have not actually used the mark in commerce yet, you would not want to file the trademark application as 1(a). So, you can remove that. And instead, file what’s known as an intent to use trademark. And what that means is that while you have not necessarily made an interstate use in commerce of the mark, you have a bona fide intent to use it in the future, and it’s important that your intent be bona fide. Meaning that you’ve actually started some business plans or advertising or printing or something more than coming up with the idea of the mark in your head in case you need to establish that you indeed have a bona fide intent to use the mark.
So, if you click 1(b), it gives you all of the language that you must read and actually agree with before moving forward. If, in fact, you have made a bona fide intent to use trademark application, you can click here and move on by assigning the filing basis. And what that does is it adds a 1(b) filing basis to your actual application. Once you’ve done that, you can either add more goods and services or you can continue on. Now, keep in mind, if you want to add more goods and services, the same rules that we’ve gone through just recently apply. You must have either used the mark in commerce in connection with those particular goods or services or have a bona fide intent to do so.
So, let’s assume that I’m applying for the mark in connection with my intent to use on barbers’ chairs. I would then click continue.
The next item asks you to input correspondence information. And this is information related to who the person receiving communications from the USPTO will be. If, in fact, it’s the same as the person filing, as it will be most likely in your case if you don’t retain a trademark attorney, you can simply review the information, make sure it’s correct and hit continue. However, recently, the USPTO added this option of having a secondary email address. So, if you and your wife are starting a business and have a trademark that you’re applying for, you may enter your wife’s email address here.
Similarly, if you’re part of a business, be it a corporation or an LLC, you can have other people from your organization so as to make sure they’re also getting notification of anything from the USPTO related to your application.
Once you continue, the USPTO provides a total fee for your application. Now, since we only selected one class, and it identifies it here (international class 20), which related to the barbers’ chairs, the fee is $275. Again, each additional class would be an additional $275.
At this point, you can do one of several things in order to submit your application. You can sign it directly with an electronic signature. You can email the text form to a second party for signature, which is unlikely something you would do if you are the one applying for it. Or if you feel comfortably, you can print out via pen and ink and send it in. However, I recommend that you sign it directly and to indicate your signature typically you can do your slash marks with your initials. The date will automatically be populated. You need to input your name and you need to put your position. So, if you are the individual owner, you can simply put that you are the owner. If you are part of an organization such as a limited liability company, you can show that you are a member of that or if you are part of a corporation, you can say what your position is, be it president, vice president or otherwise.
Now, typically, as a trademark attorney, when I’m filing these applications, I note that I am the attorney of record and a member of the Michigan Bar. However, you cannot do that because you are likely not an attorney if you are listening to this and trying to file on your own. And then, ultimately, it also asks for the signatory’s phone number. Again, this is not required because it doesn’t have the asterisk next to it. You must then either add a signatory if you want someone else to part of the application or simply validate it. When you validate, you might get the warning message again that says phone number was missing, but since it’s optional, it’s not something you need to worry about.
The next page shows you several pieces of information. The first is what’s known as input. And if you click on that, it allows you to review all the information that you input into the application. More than that, you can view or save this as PDF if you want to. If not, you can hit the back button.
The next one is the mark, and if you click on this, it again shows you exactly what the mark is you’re applying for. So since we chose a standard character mark, it is just for “MARK”. But if we chose a specialized form such as the logo or stylized design. It would actual show that.
The XML file is something that can be of particular use to you. If you are unsure about your application or have questions that you want to speak to a trademark attorney about, you would be well served to click on the XML file to see that it has all the information that you could use if you need to go back into the application. And it gives you the ability to actual download that XML file at the bottom of the screen. You can click download portable data and you can save the file. You should save it to your computer so that if you do work with a trademark attorney or someone else who has an understanding of the trademark registration process, you can go back in and modify it, make the necessary changes before filing.
Assuming that you’re ready to move forward to finalization, you must input your email address twice, and they must match exactly. And finally, you must read and click that you have read and understand the notice relating to your rights of confidentiality, or lack thereof, and other important information. Once you do that, you can click the pay or submit button, which will require you to make a payment via either credit card, by deposit account or EFT user account, which are options that are all available. Most will be paying by credit card. If you click that, you can input your credit card information. You will hit continue and it will give you a final opportunity to review the information and then click submit. And once you submit, you will get a confirmation on the screen showing that your mark has been submitted to the USPTO. You will get what’s known as a serial number, which is a unique number that allows you to track that information. And you should get an email to the email address you used showing what your mark is and that it was actually successfully applied for.
So, I hope this has been helpful for you if you’re looking to apply for a trademark registration with the United States Patent and Trademark Office. Obviously, this is not a complete statement of all the legal ramifications related to the process, but it does give you enough information to help you get started. If you have questions related to your particular kind of trademark or service mark, the application process or how to actually use, protect and maintain your trademark rights, you’d be well served speaking with a trademark attorney such as myself.
Once again, this has been Brian Hall, a trademark attorney with Traverse Legal, PLC. If you want to contact me, you can visit my website www.traverselegal.com and you can contact me via my phone number 866-936-7447 or you contact me via email at [email protected], thank you and good luck.