Trademark for Ecommerce site/product brand - goods or service?

[sdbewley]

Hi All and thank you for taking your time to assist.

I'm currently working to trademark my brand name for products that will be sold online under the pet product class (grooming products, shirts, bowls, etc).

For example we will call it "Brand A"

The name of my website will be "Brand A" and all my products from grooming products to dog shirts will have "Brand A" on it.

My questions:
1) Do I trademark the website as a "service" or do I choose a broad "goods" under the Pet Product classes.
2) Do I need to select a trademark class every single product type I will be working with? (Pet Shampoo, Pet Shirt, Pet Bowls, etc) because this could add up financially very quickly.

Thank you and I greatly appreciate your time.

 

[quincy]

Hi All and thank you for taking your time to assist.

I'm currently working to trademark my brand name for products that will be sold online under the pet product class (grooming products, shirts, bowls, etc).

For example we will call it "Brand A"

The name of my website will be "Brand A" and all my products from grooming products to dog shirts will have "Brand A" on it.

My questions:
1) Do I trademark the website as a "service" or do I choose a broad "goods" under the Pet Product classes.
2) Do I need to select a trademark class every single product type I will be working with? (Pet Shampoo, Pet Shirt, Pet Bowls, etc) because this could add up financially very quickly.

Thank you and I greatly appreciate your time.

Are you located in the U.S.? If so, in what state do you reside?

In the US, rights to a name are gained through the use of the name in commerce as a company product or service identifier. In the US, the first to use the trademark as an identifier will be the presumed owner of the mark. Federal registration of the name with the USPTO is not necessary, although registration provides benefits.

 

[sdbewley]

Response and additional question

Are you located in the U.S.? If so, in what state do you reside?

In the US, rights to a name are gained through the use of the name in commerce as a company product or service identifier. In the US, the first to use the trademark as an identifier will be the presumed owner of the mark. Federal registration of the name with the USPTO is not necessary, although registration provides benefits.

Thank you for your quick response!

I am in CA.

So to paraphrase - if I am first to market using the name on a product or service - I will have automatic legal protection over the name?

If I do not use the name in commerce - for example - I use it as a social media brand to build a community - do I have or should I have any legal protection over the name?

My first instinct was to register with USPTO as the Brand Name is very crucial to the business.

Would you recommend continuing to register or be first to market (or both)?

 

[FlyingRon]

It appears you are protecting the goods with the mark, so a trademark is applicable. The fact you have a website for selling them, doesn't make it a service. You're not "selling" the usage of the site, if I understand your business model.

 

[quincy]

Thank you for your quick response!

I am in CA.

So to paraphrase - if I am first to market using the name on a product or service - I will have automatic legal protection over the name?

Thank you for providing your state name, sdbewley.

If you are the first to use a name as a trademark - as an identifier for your business and its products or services - you are the presumed owner of the name. This is a rebuttable presumption (someone can challenge your use of the name).

If I do not use the name in commerce - for example - I use it as a social media brand to build a community - do I have or should I have any legal protection over the name?

If you intend to market yourself, your business, your products and/or your services under a name, so that consumers can recognize your brand from all others in the marketplace, but you will not be using the name in commerce right away, you can still file a trademark application with the USPTO to protect the name while you develop your brand.

The application you will want to file is an "Intent to Use" application. The name you have chosen for your trademark will initially be reserved for six months from the date your name has been approved by the USPTO as a trademark. The initial reservation can be extended for good cause.

Even when your ITU application is approved, your trademark will not be a registered mark until you begin to use the mark in commerce - at which time you will need to notify the USPTO that you are using the mark. You notify the USPTO by filing an "Allegation of Use for Intent-to-Use Application" with your evidence of use.

My first instinct was to register with USPTO as the Brand Name is very crucial to the business.

Would you recommend continuing to register or be first to market (or both)?

You will generally need to register your business name with your state and then you can choose whether to file your chosen trademark with the USPTO, either an Intent to Use or a regular application.

You can sit down with an IP attorney in your area for advice specific to you and for help with filling out and filing a trademark application.

Good luck with your business.

 

[sdbewley]

Thank you for providing your state name, sdbewley.

If you are the first to use a name as a trademark - as an identifier for your business and its products or services - you are the presumed owner of the name. This is a rebuttable presumption (someone can challenge your use of the name).



If you intend to market yourself, your business, your products and/or your services under a name, so that consumers can recognize your brand from all others in the marketplace, but you will not be using the name in commerce right away, you can still file a trademark application with the USPTO to protect the name while you develop your brand.

The application you will want to file is an "Intent to Use" application. The name you have chosen for your trademark will initially be reserved for six months from the date your name has been approved by the USPTO as a trademark. The initial reservation can be extended for good cause.

Even when your ITU application is approved, your trademark will not be a registered mark until you begin to use the mark in commerce - at which time you will need to notify the USPTO that you are using the mark. You notify the USPTO by filing an "Allegation of Use for Intent-to-Use Application" with your evidence of use.



You will generally need to register your business name with your state and then you can choose whether to file your chosen trademark with the USPTO, either an Intent to Use or a regular application.

You can sit down with an IP attorney in your area for advice specific to you and for help with filling out and filing a trademark application.

Good luck with your business.

Thank you to everyone who contributed.

I am going to submit a ITU application. My next challenge is to determine the class and whether I want to go with a broader class or multiple classes for all of the products I'm planning to launch.

Is there a "generic" trademark that would cover a range of goods? For instance - If I am manufacturing Pet T-Shirts and grooming products - will it be best to do two separate ones for each Product (one for T-Shirts and one for Shampoo) or is there a generic one that will cover it.

You all are so helpful - thank you.

Best,

 

[quincy]

Thank you to everyone who contributed.

I am going to submit a ITU application. My next challenge is to determine the class and whether I want to go with a broader class or multiple classes for all of the products I'm planning to launch.

Is there a "generic" trademark that would cover a range of goods? For instance - If I am manufacturing Pet T-Shirts and grooming products - will it be best to do two separate ones for each Product (one for T-Shirts and one for Shampoo) or is there a generic one that will cover it.

You all are so helpful - thank you.

Best,

Choosing the correct class can be difficult because many goods/services can fall into several different categories. You need to choose the category or categories that identify what you are marketing and this often means registering the mark for each category that applies.

In other words, you can register your mark in several different classes but each class registration comes with additional cost.

You can make use of the help available at the USPTO website (https://www.uspto.gov) and review carefully the International Schedule of Classes of Goods and Services and the Trademark Examiners Manual (TMEP) and the US Patent and Trademark Office Acceptable Identlfication of Goods and Services Manual.

It helps to have an IP attorney assist in filling out and filing the trademark application but it is not a necessity. It really depends on how comfortable you are with the application process.

Good luck.