Tag Archives | trademark application

Statement of Use: Proving Use In an Intent-to-Use Trademark Application

Actual use of your trademark in commerce is a requirement to receive a federal trademark registration. When you file a section 1(a) use-based  application, you must provide a first use in commerce date and a specimen proving your use when the application is filed.

If you file your trademark application as a section 1(b) intent-to-use application, you do not provide the office with a first use date or a specimen because you have not started using your mark in commerce. However, the USPTO will not issue a registration until you provide the office with (1) the date your mark was first used in commerce for the good and/or services specified in the application and (2) a specimen proving your use. TMEP 902. You provide this information in …

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Gov’t Says Prove It: Trademark Application Specimens

Proof_SpecimenProve it! The specimen requirement in a federal trademark application is the government’s way of saying “you said you are using the mark, now prove it.” The USPTO requires that you submit a specimen showing the mark as it is used on or with the goods or services at some point in the trademark application process. The specimen is simply an example of how the mark is used.

The specimen requirements for goods are different from the specimen requirements for services.

Goods

For goods, the specimen must show the mark on (1) the goods, (2) containers or the displays associated with the goods, or (3) the tags or labels affixed to the goods. Trademark Manual of Examining Procedure (TMEP) 904.03. Containers associated with the goods can be the retail packaging …

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What does “Use in Commerce” mean in a Trademark Application?

UseInCommerceTrainWhat if your service business has a location only in one state? What if your business sells goods only in one state? Do such business have the opportunity to obtain a federal trademark application?

The owner of a barbershop attempted to register the name of the barbershop “Shear Perfection,” but the Trademark Trial and Appeals Board refused to register the mark. The Board said that the barbershop was a purely local business and the applicant did not show that it provided services “in commerce.” In re Conti, 220 USPQ 745 (TTAB 1983).

There is a limitation on the federal government’s power to register trademarks based on the Constitution, which can impact the contents of a trademark application. In order to determine the first use in commerce date for a trademark …

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How to Write a Description of Goods or Services for a Trademark Application

TrademarkDescriptionOfGoods_ServicesIt can be difficult to write an accurate and complete description (identification) of goods/services in a federal trademark application. When describing the goods and services you are or want to sell/provide, you want use somewhat broad language, but not too broad.

You cannot broaden the identification after the application is filed. In some cases, if the description is not accurate and the needed changes would broaden the identification, the application may be lost without a refund. However, if the description is too narrow, you could give up valuable trademark protection that you could otherwise obtain.

So how do you draft a description that is just right? I’ll explain that below, but first, why does the application require a description of goods/services?

Why Do I need a Description Of Goods/Services?

Except for …

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Trademark Application Part: The Mark (Drawing)

TrademarkApplication_Mark_and_DrawingFiling a federal trademark application online looks easy. Just fill in the blanks in the online form, right? But it is not necessarily easy. Some errors are uncorrectable and can doom a trademark application. This is the first post in a multi-part series discussing the parts of a U.S. federal trademark application. In this post I’ll discuss the mark (the drawing) portion of the trademark application. Before filing a trademark application you should considered doing a trademark search.

The mark/drawing section of the application is were you specify the mark that you want to register. You will have to choose between a standard character trademark or a special form trademark. If you intend to register a standard character trademark, then you need to know the …

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