Very informative videos. Could you delve a little deeper into the procedures involved like the TMEP and other laws related to procedures? I have seen the videos on maintaining and renewing. But I would like to know more about post-registration documents and other standard trademark prosecution documents other than section 8 and 15. Thanks again for all the information.
The main trademark prosecution document is what you initially file ru-vid.com/video/%D0%B2%D0%B8%D0%B4%D0%B5%D0%BE-H2sXfraq-jk.html but yes some of the other filings I do plan to do videos about, like responses to office actions and filing proof of use.
Gratitude for this data. I'm a comic-book-artist, so if I wanted to Trademark the books-title, I would need to produce a specimine or a physical-copy of the book with the logo? Would I need to show any interior-art of the comic-book?
So physical book titles cannot be trademarked -- but you can trademark a series (as a publisher of that series). But generally when you do the specimen it is a photo of the front where the trademark is, they don't care about the inside
Hey Elizabeth, thanks a lot for this video. It is very helpful. I am currently running into this issue. Was wondering is there any way that I could reach out to you to fix ?
Thank you for your videos! Quick question, If I were to file a trademark for a specific semi-unique word, could I then use that specific name plus another word and still be protected? For example: Word Trademarked: klwzcv Intended uses: - klwzcv construction - klwzcv Parts - klwzcv consulting Given that I would have specified the different classes under the original klwzcv trademark. Or, is it better to submit a trademark for all the variations?
Many times I do just trademark the name without the extra generic words, but it does depend on the USPTO. Sometimes the examiner will look at the specimen and say that we need to add the extra generic word. But really, if it is a generic word like "parts" or "consulting" you'd have to disclaim that word anyway.
I sell clothing & accessories for a fashion brand. Q1. Would my NEW creative designs be protected with my trademark even though they are different looking from my inside tags. The inside item tags attached are identical representations of what's listed for my trademark with the USPTO. Would I need to have more trademarks filed for each new logo, new font, etc, displayed on the item (like a t-shirt)? Some designs would only be made for a collection and maybe never used again. Q2. If I change the design of my main insignia (inside tag, website logo name font, packaging), should I file a new trademark for protection because it will NOT be protected any longer eventhough the name is the same?
Yes a logo trademark only covers that exact design (no changes to font etc). However, a trademark on the words themselves cover any font/design because it is just on the words. Generally you don't trademark a t-shirt design -- you trademark the brand. The idea is the trademark links your products to your business as the source of those products, in the mind of the customer.
So glad I came across your channel! Very clear explanations. I would like to ask about submitting a specimen for class 014 ( jewelry). Can it be a key fob placed in a box with the trademark on the box? Submitted a bracelet in a box with the trademark on the box last time. But was told that I need to do something different this time to prevent being audited. I sell mostly bracelets though. You do not have to sell everything in a class in order to keep your trademark do you? Do you have a video on being audited? Thank you for your help! Going to watch some more of your videos.
Hm I have not had a problem with the trademark being on a box. You could also make a little tag and attach the tag to the product. No you don't have to submit a specimen of everything in the class but you do have to intend to sell all those things
Excellent videos! I know typically a tag/sticker works great as a specimen on goods. But let's say you are going to put the trademark on the side of a drinking glass or printed on the bottom of the drinking glass, will that work as the specimen? Or is that too much like the common tee shirt example where a brand name is giant letters on the front but that is not technically correct use without showing the trademark on a specimen tag or neck label?
Hi, thanks for your informational vedio. I have a question that i am selling on amazon and i sell different products for example dog toy, jacket, juicer and so on. Do I have to register my wordmark for all above products separately?
It depends on what is the brand. Like is your brand name on the product tag/label or is it the store (where it is other company's products)? There is a class for a retail store
If we are planning to start selling our product within the next few months, should we go ahead and file the 1C? We haven't technically made any sales yet, but are close to going to market.
I have some clients who wait until they make a sale so they can file 1A, and others who want to make sure they get dibs on that name and no one else can take it so we file 1B. I think it depends on budget, how committed you are to the name, how impt the name is to the business, etc.
What specimens are needed for this class? Will a business card and website be sufficient? 036 Financial consultancy; Financial information and advisory services
Well it has to be something you still have / are still using / are still selling that way. So for example, if you stlll sell the exact same product w/ the trademark on it, then I don't see why one would need a new picture of that same product. Just need to make sure everything is still the same
You say that if we're selling products we need to include a picture of our product with the logo on it in our application. We are a distributor and do not sell our own branded products, thus we don't have any physical products with our logo on them. How would we go about proving our trademark in this case, would a screenshot of our website where we market our products be sufficient? Apologies if you addressed this later on, I didn't watch the entire video. Thanks!
If your brand is the store and is not on the product tag/labels, then you would likely file in the class for a store (typically class 35 "retail store"), which is a service. Then yes you can submit a screenshot of the website with the products for sale there
I made a mistake by on my application by clicking Maine as my Territory where my LLC was legally organized but it was actually organized in Louisiana how do I change that back to Louisiana?
Hm you might try a voluntary amendment to correct the error (make sure you say that you are correcting an error, not changing the owner) www.uspto.gov/trademarks/apply/miscellaneous-forms
Can 1 trademark their own all caps name under uspto services 036 class and use a business card as a specimen? And if so, what exact verbiage would need to b on the face of the card to satisfy the uspto requirements?
Sometimes business cards can be a specimen -- they need to have enough info about the business such that the examiner can tell what are the services / products
@@ElizabethPW Thanks for the great video! In a related question, would showing your logo on a variety of product packaging where it may be represented in an assortment of colors be any likely cause for issues, or may there be any value of presenting only a single package example with the most basic representation? Thank you for your time!
Hi, I registered my trademark a few weeks ago, and included screenshots of my website, yelp page, RU-vid channel but didn’t include printed date. Since this hasn’t been processed or examined yet, can I reupload the specimens with the correct url and accessed date (will do print as pdf to show)? Or is it too late? How does amending application this early affect me? I been using the trademark to promote my design services already for years, just wasn’t trademarked.
Hm you could file a voluntary amendment www.uspto.gov/trademarks/apply/miscellaneous-forms to correct information missing, like just to add the date in the specimen date field.
what happens when you receive an office action for an unverified proof of current use and the specific clothing item is sold out, how do you submit proof of current use?
Thank you for your great videos on Trademark. I notice that, based on the ID Manual, my Software/Cloud business would come under TYPE = SERVICES. But I have Invoices for my previous sale where I've used TM symbol. Will that be a problem when I submit the Invoice as a specimen of usage?
The trademark office doesn't really consider whether you are using TM/SM -- they are looking at your use on the specimen overall. Most people use TM instead of SM even if a service, since the public is more familiar with TM.
Hi. My class is listed 2, 27, 28, 50 for jewelry. I have a phrase that I use and the phrase is not on the jewelry but more or less I want it to be on the tag. Because it is listed for jewelry in this class does my phrase have to be on the jewelry. I hope I am asking this correctly. And also when I do send the specimen am I to show this along with a sale or can it just be the picture with the phrase? Thank you.
So for a product like jewelry you'd submit a specimen that has the phrase on the tag or label, typically. The phrase does not need to be on the product itself. You submit a photo of the product with the label/tag attached
Hello I wanted to say thank you so much for the great info you give. It is better than the attorney I have on my TM app, lol. I have one question, I have a pending Proof of use statement due and I have 3 classes. My attorney gave me a list of what items to list but it doesn't include items I have for sale but are in the class list. Do I need a specimen for each item in each class. For example I file in class 25 which is a bunch of clothing, footwear, hats and a bunch more of items. Do I need a specimen for everything in the list or one example from the list, am I only covered for what I submit a pic for?
Welcome! So you submit one specimen for each *numbered* class. So if you have class 25 with a t-shirts, hoodies, and hats, then you'd just submit one specimen for the class 25 that is one of those items. But if you also had something in a different numbered class (like class 18 tote bags), then you'd submit another specimen for that numbered class.
@@ElizabethPW just so I understand, I have class 25 and I sell t-shirts, hoodies, and hats will I need to choose one of the 3 I sell to represent the whole class list of items or have a specimen of a t-shirt a hoodie and a hat and any anything i sell in that class. Thanks for such a quick response.
Thank You for your videos, they are very useful. I have a new amazon store, no sales yet. I want to applied for a trademark to sale curated jewelry, I have the good with me, and I can take a photo with logo or tag, It it an intent specimen? or is already in use? TY
When you renew you just provide a specimen -- the date of first sale is in the past and it would be in the publicly available trademark file already anyway
hola, gracias por tus videos, son muy útiles. Tengo una pregunta, voy a registrar mi marca para la venta de accesorios para perros online (collares, arneses, cuencos, etc.) Para registrar mi marca es necesario que mi marca esté en los productos y en el embalaje o puedo poner una etiqueta con mi marca? No fabrico mi producto, lo compro en China y lo revendo online, necesito registrar mi marca para vender en Amazon, pero no estoy seguro de cómo tengo que enviar las fotos con mi marca en los productos, un collar de perro es muy difícil imprimir la marca en el collar, en ese caso puedo añadir una etiqueta externa por ejemplo. ¡¡¡Gracias!!!
Question: I’m filling out my app for trademark, say “xxxxx’. And one specimen, web page has that. Plus another screen shot of code I wrote with it used in comments. The other category is a online marketplace store and the specimen label says ‘xxxxx store’. I added store because it’s a store and I didn’t know better at the time when I started the store. Sounds like my specimens are solid except for the word “store”. I’m doing a specimen crash course tonight.
Yeah that's a hard distinction because examiners tend to be inconsistent about extra/obvious words like "store" -- some examiners may find the specimen to not work because it is in conjunction with another word. You could just file that class as a separate trademark application for "xxx store" instead of being part of the "xxx" application -- the fees are the same anyway.
@@ElizabethPW I watched about 5 more of your videos and it dawned on me, that I can just split my app in 2 for both versions at the same price. And increase my chances of getting both approved while getting what I want out of it. Thanks for the videos, they are helpful for me and not many are really publishing on this topic. The fluidity video was interesting as well.
Question about mistake #2: Let's say you want to trademark a phrase you're putting on goods. Here's a made up example (I am not submitting this): Have a special day? On all your goods the phrase has this specific punctuation but you also own the domain name associated, which obviously doesn't include punctuation. What do you submit to the trademark office? Include the punctuation or no?
The trademark office does not care about the domain. They want to know what brand you use in conjunction with the goods. With goods, you submit a specimen of (usually) the tag/label that's on the product -- that is what you must match, the specimen pic to the trademark
Do you mean that another company changed the ownership to them, or another company filed the registration? You'd probably need an attorney to help you figure out how to fix that
Just in my case Brand website domain starts with "the" is that going to be causing a confusion (I have rejected with an office action) Should I go with amazon brand screenshot? If not what do you recommend me to do so? Can I access to you via e-mail to have a 1-1 session?
The trademark needs to match exactly with the specimen, so if the amazon store would match up exact (and it was also up at the same date) then that might work.
Building a mobile app thats not ready yet. We however have UI designs and look to release the app in august. Problem is we have two weeks left for our app and we're on our last extension. What do you recommend?
Obviously the more straightforward solution is to launch some preliminary version asap (maybe a beta version at a low intro price?) and make a sale, but you may not be able to do that. Hm I don't know of a way to get around the 36-month requirement, but I'd recommend speaking with a trademark attorney about your exact situation to see if there is something else that can be done.
Hi there! Quick question: I have a main logo I want to trademark but from that main logo I was able to make let's say an icon or shorten version of that logo. For example the name McDonald's has the "M" as the "Golden Arches" but they have used just the "M" alone on their products, packaging, etc. When uploading the jpeg of my logo, should I include that icon/short version of my logo too? Or do I have to make a completely new filing just for that short logo? Thanks in advance for any advice!
So when you file a trademark application on a logo it is only on that exact logo. If you wanted a different version, you'd file a second application on that other version
So for the specimen you need a photo of the product w/ a tag/label having the logo, but yes you'd also need to give the date of first sale in the U.S. so that requires a sale
You just need to know the exact date. Yes you'd want some kind of proof in case it came up later (receipt, invoice, etc.), but you don't submit the proof.
Hi, i have a question on LABOR LAW POSTER, can any one have a labor law poster? what are the requirements to have a labor law poster? can i just buy one online? for example a website called ( Laborlawposterscalifronia ) would that count as having a required law poster? I just established an LLC for my business but i am aware of having a required labor law poster in my shop. But i am not sure what ci need to do in order to have one or can i just buy onlin ? I'm lost :( -Thank you!
If you have employees, you need to post the labor law info for your employees (usually done in the break room), as required by your state and the U.S. federal government. You don't need to buy them (but you can). You can download the PDFs from the government websites (see here for the federal ones: www.dol.gov/agencies/whd/posters ) or you might get them for free from your worker's compensation insurance (mine sends me them each year).
Elizabeth, for a musical performing artist. Ive found class 09 (Audio and video recordings featuring music and artistic performances) and 041 (Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings) to be the 2 classes we need. Do you know what are acceptable specimens for these 2 classes?? Any insight would be SO helpful! Thx!
So for the 09 it is a product, so you'd have a photo of the CD/record with the branding on the label (or a screen capture of the mp3 download location with the label), and then for 041 it is a service so typically I'd put a screen capture of a web page that has the services offered for sale to others, with a call to action
There are specific rules for stage names of artists www.uspto.gov/learning-and-resources/ip-policy/musicians-and-artists-profile - depending upon what class you are in -- for example, for a product class you have to have the name on at least two recorded works (aka a series of works).
Hey there! Soooo I’m in a weird position, I have 5 logos and I’m at the stage to provide specimens all in class 25. Can I put all 5 logos on one garment? Or should I make 5 separate paper hangtags and place them on 5 separate garments. The reason I have so many logos is because my brand is a minimal clothing brand but I wanted to trademark different symbols that all relate to the brand as a whole so like a family of logos under one brand. I’m doing an intent to use but have no specimens ready as of yet but wanted to make and create the right specimens on the first attempt. I’m willing to get on a phone call with you as well for consultation if it’s a question you prefer to answer that way. I like your delivery and I know for a fact you would steer me in the right direction ☺️
I’m just looking for a solution to this problem because 2 logos are word marks and 3 are design marks. I’m trying to find the best way to pass the specimen portion of this journey
Hm so one aspect is that to file the proof of use, you must make a sale of it to someone (you have to give the date of first sale). You can have more than one on the same garment, since that can make sense to have a design and a word for example. But, if there are a bunch of logos/designs, it dilutes the effect, such that a customer does not associate your product with any particular one of those logos. Usually we go with having the logo on the label or tag.
@@ElizabethPW I went to the USTPO RU-vid and seen that acceptable specimens would be acceptable if I had each logo on separate shirts made small and on the left chest part. So what I did was go and get my logos made small and pressed onto separate shirts individually just like in the video. Would this work?
So let me ask this if I'm tradmarking my ebay stores name can a picture of that ebay storefront be sufficent? Or adding the link to the website of my sellers page? The page username is what I'm tradmarking and it shows it right there, and my logo I made has my name in it again. Would that work for the specimen ??
Depends on what class you are in. In a service class (like 35 for stores) then a screen capture of the page where products are offered for sale (with a call to action) is the specimen. If you are in a class of products, then you'd take a photo of the products with a tag/label.
Hi! Thank you for this very informative video! if I am only registering my brand name for now, let say "Marco", and on my product I have my logo affixed to it that says "Marco" with the letter "o" being a picture of the sun, would that get rejected? I am not concern about other image or font, just filing for standard mark. Thank you!
Assuming that a consumer would see/understand the regular word as the brand (vs just the logo/design), then it may work fine. The trademark office examiners will look at the specimen you submit as evidence of use, from the perspective of potential consumers.
