How to File a Trademark – Part 5

By Drew Stevens - November 9, 2018 - Technology & IP

Whether they’re for your primary business brand name, a slogan for a new marketing campaign, or a new logo for your company, trademarks can be an invaluable part of your intellectual property portfolio. This is part five in our series on how to file a trademark, and picking up from our previous post, we’ll continue to work through an example TEAS RF application. In case you’ve never worked with a Columbus trademark attorney, we’ll run through the types of trademarks, as well as highlighting some notes on specimens.

Page 3: Choose your Trademark Type

The third page of the trademark application will present you with three options for your chosen mark: the standard character mark, the special form mark, or the sound mark.

The key difference between the standard character mark and the special form mark is that the special form mark contains a design or artistic element. In other words, if you’re filing for a trademark for your company’s logo, you want the special form application. If you’re filing for your company name, brand name, or slogan, you probably want the standard character mark application.

If you only have the budget to file one trademark application, it is usually best to file a standard character mark application. With this option, you get broad rights and protection for any use of the mark in various presentations. We’ll continue to work through this example with a standard character mark.

Specimens

In applying for a standard character mark application, keep in mind that you’ll be required to submit specimens—examples—of how you’re using your mark. You generally must submit at least one specimen of the mark being used in commerce, and there are two important things to remember with this.

First, the specimen must be an example of how you are actually using the mark in commerce in public, not just internally. The USPTO frowns upon submitting things like invoices, order forms, brochures, and PR releases as specimens. Instead, tags on products, containers, or examples of packaging are better specimen options.

The second important component is that the specimen(s) you upload must show a connection between the goods and services description, the internal class you’re registering in, and the mark. If you’re filing for multiple classes, your specimen(s) must demonstrate a relationship with all of the classes. Common specimen refusals include the USPTO deeming the specimen to be mere advertising for goods, the USPTO deeming the specimen to be mere material used to conduct business for goods (see the above comments on invoices and order forms), or the USPTO finding that the specimen fails to make a direct association between the proposed mark and the services or goods.

Finally, don’t forget some of the procedural elements of uploading specimens. The specimen must be in .pdf or .jpg format. Your specimen can be in black and white or color, but if you’re claiming specific colors or a color as a part of the trademark application, the specimen must be in color and showing those colors.

Ultimately, in applying for a standard character mark and submitting accompanying specimens, remember that you want to make your application as easy as possible for the examining attorney to analyze and interpret. Basic organization and presentation with your specimens can aid an application, and if you think you need help with your trademark application, reach out to our Columbus business attorney.

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