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TIPS For The TEAS Plus Trademark Application!


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.

Classification

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.

Description

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."

Filing Basis

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!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!

Myra Per-Lee
Featured Blogger
www.AmericanInventorSpot.com

Related Readings:

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.

Comments
Mar 14, 2007
by Anonymous (not verified)

Thank you!

The series of trademark articles you wrote has been especially helpful!  Thank you for putting it together!

B.B.

Mar 14, 2007
by Anonymous (not verified)

very detailed article.

I can't believe that advice like this is free on the internet. Thanks for your good work.

Mar 15, 2007
by Anonymous (not verified)

Great stuff!

myra,
you continue to show people that information is out there and you just have to apply it to what ever you are working on. Thanks for making my life easier when it comes to questions new inventors ask me. I just tell them to read your articles.
Bobby Amorewww.tonerbelt.org

Mar 16, 2007
by Body Beauty

Thanks

Very Informative

Oct 3, 2007
by Anonymous (not verified)

format

I am trying to do my first trademark filing and came across your site- does it really matter how you format the mark? You said to use the standard character format to get the broadest protection. That just doesnt relaly make sense to me- how somone having a different color/font could possibly get away with using your trademark!

Is this really the safest way to proceed? so what happens if you use the trademark after its approved by USPTO and then use it witha different font and use color? Sorry but i have no trademark experience and i am trying to understand how to do this!

Oct 17, 2007
by Myra Per-Lee

Yes, it does matter.

Once you get the mark in standard character approved, you can use it however you like. That is the broadest coverage you can get.

If you submit a design of your mark, only your design is protected, not the name itself. So if you want to protect the name "BULLY ME" against anyone else using it for a similar product, type it in standard character for your application. When it comes to use, you can stand on its head if you want to.

On the other hand, if the design of your mark is critical to your "look," particulary if you will be designing other marks in the same way, say for other products in the same line, then you should also protect the design of your mark and submit a .jpeg of the design. This is a separate trademark filing.

 

Myra Per-Lee