Aside from your name, address, telephone number, and email address, there's not much left to filing the new TEAS Plus trademark application. (TEAS stands for the Trademark Electronic Application System.)
But what is left - the trade name, its classification, its description, and its filing basis - is important.
Your Trade Name
Your purpose in registering a trademark is to get the widest possible protection for your brand. To do this, file for "standard character" registration by providing the name in plain type (classic font style), for example, CHINATONE. This registration, if accepted, will protect your brand no matter how it is written.
The classification of your trade name relates to the actual product or products that you are branding with your trade name. As we saw during the trademark search (If You Think A Trademark Search Is Easy...), each product belongs to one of 34 different classes of goods . If you are using your name for a musical instrument, like Chinatone, that would belong to international class (1C) 015. But if you also want to use Chinatone for a chime polishing cream, that would belong to IC 03. There is a separate fee for each IC that you claim.
Beyond classification, the Trademark Office now requires, if you file online, that you use the language of Trademark Identification of Goods and Services to describe your product. This section has been made easier, because now, when you enter a search term for your product, a pop-up window appears that lists all the possible classifications and descriptions for your product. Read each one to make sure you haven't jumped the gun on your classification, and choose the best description for your product. The search term "musical instrument" yielded 13 pages of classifications and descriptions, but the one that described my product perfectly was on page 8: "015 Musical instruments, namely, musical chimes."
You can file a principal trademark application on one or more of the following bases:
1. You are using the mark in interstate commerce now. (TEAS application category 1a). You will be asked to submit samples of your trademark in use, which you should do electronically. A hang tag, product label, or advertising copy are examples of what you can submit in the recommended jpeg form. For your own records, keep evidence that the use in interstate commerce actually occurred before your filing date; such evidence might a shipping receipt to the purchaser or a dated proof of payment. Remember, the sale must take place across state or country borders.
2. You have not used your name in commerce yet, but you have an "intent to use" the mark within six months of your filing date. (TEAS application category 1b).
3. You have a filed a foreign application for the same trademark. (TEAS application category 44a).
4. Your trademark is registered in a foreign country. (TEAS application category 44b)
On the application check any of the above filing bases that apply.
Your Logo Design
Part of your brand is the design in which you frame it. This is stylized in a way that is as easily recognizable, or more, than the name itself. If you have a special logo, for example, you should protect that as well as the name; however, you will have to file a separate application for the design. It's the same form, the TEAS Plus, but in the trade name section, instead of selecting "standard character," select "special form (stylized and/or design)." The TEAS form will reset upon selection, and you will be able to upload a jpeg file of your design, making sure to meet the size requirements listed.
If you choose not to protect your design, this is what could happen!Trademark Infringement? Sure Looks Like It!
There is a separate manual, a Design Search Code Manual, that you must use to find the classification and description for your brand design. Trademark design is quite a bit more esoteric than the "standard character" drawing and for this search and filing, I definitely recommend using a trademark design specialist.
A Couple-a-More Tips
- You may use the symbols TM or SM after your trade name to indication that you are claiming rights to the name. The symbol ®, however, may be used only after the Trademark Office awards a registration for your mark.
- Elect to have all of your correspondence from the Trademark Office sent by email. Things do get lost in regular mail and for some reason, in my case anyway, they always seem to be from the USPTO. Nevertheless, screen your snail mail carefully, because the Trademark Office, at its discretion, will use this means to send certain correspondence, including your official registration!
- Keep the Trademark Office informed of any changes in your contact information... address, telephone, and email. If you will not be able to meet the six month deadline on your intent to use application, remember to file an extension. See Teas Forms.
- There are several kinds of names that the Trademark Office will not consider for registration. You may not register a name or visual depiction that represents or disparages a person, institution, national symbol, or belief. Neither can your name suggest anything immoral or scandalous...(see Can the Office refuse to register a mark?)
- If your trade name is descriptive, it will not be registered as a principal trademark, but don't give up! There are other bases for filing trademarks (see all filing bases), like those designated supplemental. For example, "Dog Ball" would not be eligible for registration because it's too descriptive. But what about "Clement's Dog Ball" with no claim to "Dog Ball" independently? You might be eligible for a supplemental trademark registration, as long as the name is not in use. You will not receive all the protection guaranteed by a principal registration, but you will have established yourself as the rightful owner of the mark and the right to sue for infringement in federal court. (If you are interested in registering such a mark see supplemental register in the USPTO glossary and file the TEAS form.)
- If you are planning to market your product internationally, you can file a foreign application immediately after you've filed your U.S. application, if you have an established business (e.g., a distributor for your product) in that country. You can search most trademark databases online by country; however, the World International Property Organization (WIPO) has a database of trademarks from more than 80 member countries - for a more efficient search. You may apply for an international trademark through the USPTO.
Good luck to you all and be your own best brand!
If You Think A Trademark Search Is Easy, You're Not Doing It Right!
10 Top Tips For Branding Your Invention
Or, for other topics in the invention series, see My Blog. The series starts at the bottom of the last page.