How to File a Trademark Application: The Guts of a U.S. Trademark Application (Part 1 of 2)

May 20, 2014

Blogs, Legal Update, IP Law Bulletin

Peter Baylor, and Rory Pheiffer

Our last article in Nutter’s How-to Series on Branding contemplated various territorial considerations that go into deciding where to file a trademark application. Even when a trademark applicant desires protection in multiple countries, or one or more states, most often our readers in this situation will want to first start by filing a United States trademark application. To that end, in our next two articles we address eight of the most commonly asked questions that arise when completing a U.S. trademark application filing.

The four commonly asked questions addressed in this article are: (1) what trademark application form should I use; (2) what classes of goods or services should I include in my application; (3) how do I decide what items I should include in my description of goods and services; and (4) what is an appropriate and acceptable specimen of use? Questions pertaining to color and design features, filing basis, dates for first use, and other considerations that should be made when preparing a U.S. trademark application will be included in our July edition.

U.S. Filing Question Number 1 – What Trademark Application Form Should I Use:
TEAS or TEAS Plus?

When preparing an electronic U.S. trademark application, the first question presented to you as the applicant or filing attorney is whether the application will be filed using the TEAS form or the TEAS Plus form, TEAS standing for "Trademark Electronic Application System." Applicants using the TEAS Plus form save money by agreeing to limit the descriptions of goods and services associated with its trademark to those descriptions (sometimes referred to as "IDs") that have been pre-approved by the USPTO. The list of pre-approved IDs is contained in the U.S. Acceptable Identification of Goods and Services Manual, commonly referred to as the "ID Manual," is actually quite vast and highly articulated. A description of almost any human manufacturer or service can be found in this compilation—except yours! This is a slight and facetious exaggeration, emphasize slight.

If our trademark owner can live with the off-the-shelf description of her product or service, you can file using the TEAS Plus form and save the owner $50 off the regular filing fee of $325 per class, i.e., paying only $275 per class. Further savings may also occur during the prosecution of the trademark application, as the applicant generally should not have to pay you to spend time negotiating with the USPTO examining attorney regarding the exact language of the ID because it is pre-approved. Nevertheless, many applicants prefer to write a description of goods or services that is better tailored for the owner’s purposes, even if it means paying a higher filing fee and some additional money to negotiate language the USPTO examining attorney considers acceptable. While this decision should be made on a case-by-case basis, we generally recommend using the TEAS Plus form if a suitable description of goods or services is contained in the ID Manual because of the cost savings and convenience.

U.S. Filing Question Number 2 – Which Class(es) of Goods or Services Should I Include in My Application:
Making Sense of the 45 Different Options

The U.S. filing fee, as noted, is charged per class of goods and services included in the application. There are 45 options to choose from, with all "goods" being divided, under an international treaty, into 34 classes, and all "services" into another 11 classes. These classes are more general categories under which the previously mentioned IDs fall. The class is the genus to each IDs’ species.

For every one of the 45 classes elected, it costs $325 if using the TEAS form and $275 for the TEAS Plus form. Thus, a trademark application including three classes costs $975 if filed using the TEAS form and $825 if using the TEAS Plus form. A single application cannot be designated as both TEAS and TEAS Plus; the inclusion of even one good or service that is not in the ID Manual requires the use of the TEAS form for each of the classes associated with the application.

If possible, a trademark owner should register her mark in each class into which her goods fall. This is the ideal. But if money is tight, then it is not irrational to file in fewer than all relevant classes. For example, if our owner uses her mark on both exercise apparel (Class 25) and gym bags (Class 18), she can probably get away with filing in only one of these two classes. Classes exist "for the convenience of" trademark-registry administrators and are considered neutral factors in determining whether mark B infringes mark A. The mere fact that A and B are used on goods in the same class has no more bearing than if their respective goods were in different classes.

U.S. Filing Question Number 3 – How Do I Decide What Items I Should Include in My Description of Goods and Services:
Should I Include the Kitchen Sink in My ID?

For an "actual use" application, our trademark owner can and should include all her goods in her identification of goods, or, if she has chosen to file in only one class, all of the goods that fall into that selected class. Why not?

For an intent-to-use (ITU) application, which allows a person with a bona fide intent to use a trademark to protect her rights in the mark even before she begins using it in interstate commerce, the question is one of common sense. Certainly an owner should include all of the goods on which she knows she will be using her mark (same caveat as above if filing in only one class). As for the "maybe" goods, there are two approaches: (a) either file new applications for the same mark as new products come on line or plans for new products firm up; or (b) "throw in the kitchen sink" and as the deadline approaches to identify finally the goods to be included for ultimate registration of the mark, simply let the "maybes" that did not make the cut drop out of the application (and file a new application when they do make the cut).

In other words, our owner can either: (a) be definitive at the outset and file new applications as necessary; or (b) be over-inclusive and pare down the identification of goods as necessary. If the "maybes" are really long shots, then option (a) is likely most convenient, but if the "maybes" are more likely than not, then option (b) should carry the day. Repeat: common sense. Yes, sometimes lawyers do recommend its use.

How to characterize the goods or services is another question a trademark applicant must consider. While it is prudent in both an "actual use" application and an ITU application to include in the ID all goods or services with which the trademark is being used, to the extent an ID can be kept relatively broad without specifically identifying every single individual good, trademark owners should aspire to use the broader description. For example, one off-the-shelf approved ID for International Class 10 is "operating room apparel." Our trademark owner who sells scrub tops, scrub pants, caps, and shoes should prefer the description "operating room apparel" over the other off-the-shelf approved IDs: "medical wearing apparel, namely, scrub tops; medical wearing apparel, namely, scrub pants; medical wearing apparel, namely, caps; and medical wearing apparel, namely, shoes." The reasoning is two-fold.

First, by relying on the broader description "operating room apparel," our trademark owner gives herself room to expand her offerings and still have them covered by the description. Thus, if our trademark owner stops selling scrub tops, scrub pants, caps, and shoes, and instead starts selling aprons and gloves, the description of "operating room apparel" is still appropriate. If the more specific off-the-shelf approved IDs were used, the failure to no longer use the mark in conjunction with scrub tops, scrub pants, caps, and shoes would prove detrimental.

Second, trademark owners are expected to keep their descriptions of goods and services up-to-date. While the Federal Circuit did overrule the Trademark Trial and Appeal Board’s decision to cancel a registration when the Bose Corporation filed a Section 8 affidavit of continued use and a Section 9 renewal application that includes various goods with which the mark was no longer being used (e.g., audio tape recorders and players), a failure to keep descriptions of goods and services accurate can be evidence of an attempt to commit fraud on the USPTO. Thus, in our earlier example, if our trademark owner had relied on the more specific off-the-shelf approved IDs but had stopped selling caps and shoes, she should be diligent when filing affidavits and renewal applications to cancel the portion of the ID related to caps and shoes. However, if our trademark owner had relied on the broader off-the-shelf ID, no such diligence would be needed when she stopped selling caps and shoes.

If a broader description of goods and services is not included in the off-the-shelf approved IDs, an applicant can use the TEAS form and supply her own description of goods, but the applicant will likely face large prosecution costs as the USPTO examining attorney will likely require that the goods and services be more specifically identified. The applicant is really at the whim of the particular examining attorney in each case, although most applicants will find that a description of goods and services for "sports apparel" would be rejected, and instead the applicant would be required to include "sports apparel, namely…" and then the applicant would be required to include examples of the various apparel with which the mark is used. In providing such examples, just as in choosing an ID more generally, the applicant should select terms that can be construed as broadly as possible. For example, the application should try to use the term "baseball tops" rather than "button-down jersey," assuming the examining attorney finds the broader term acceptable.

U.S. Filing Question Number 4 – What Is an Appropriate and Acceptable Specimen of Use:
Can I Use Any Document or Website I Publish that Includes the Trademark?

Many a client walks the cold, rainy streets of Manhattan trying to figure out why her specimen of use did not satisfy the trademark examining attorney. It only seems complicated.

If it is a specimen of use for goods, a trademark owner should stick it on the goods if she can, like TIMEX on a watch face, the apple design on a laptop top, the LAND’S END label inside a shirt collar; if not on the goods, then as close as possible to them, like WHEATIES on the box in which the flakes of rolled and baked wheat are sold. The idea is for the mark and the actual, physical goods to be seen at the same time. If our owner sells men’s shirts, she can saturation-advertise them in any medium or all media she wants, but if she does not sew a label into the collar, she will not have a specimen of use.

Many applicants ask whether a screenshot of a website is an acceptable specimen. Although it can be, often times it is not. The USPTO states that "a website is an acceptable specimen if the mark appears near a picture of the goods (or a text description of the goods) and your customers can order the goods from the website. A website that merely advertises the goods is not acceptable." Thus, to the extent you want to rely upon a website to demonstrate use for goods, it must be clear that the use of the mark is in conjunction with a sale of the goods so that the use demonstrates use in interstate commerce.

Services are intangible; you can’t sew a label into or onto the advice that, say, a lawyer gives you. A suitable specimen for a service mark is anything that: (a) displays the mark; and (b) nearby gives some idea of the services associated with the mark. If a TV screen at an airport displays the single word AVIS in red letters on a white background, that is not a "specimen of use;" if the screen displays

AVIS Rental cars,

then it is a specimen. Specimens that would not be considered acceptable for goods, such as a website advertising the service or a brochure about the service, are generally considered to be acceptable specimens for services. More details about what is considered an acceptable specimen for goods and services is provided in a publication by the USPTO that provides Basic Facts about Trademarks, with the section about specimen for use-based applications being found on pages 17-19.

Conclusion

These four questions will get you on your way to completing the guts of your U.S. trademark application. However, for additional tips for you filing, stay tuned to the July issue, where we answer four more of the most commonly asked questions that arise when completing a U.S. trademark application filing.

This update was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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