Please help, trademark question

[laylaazure]

What is the name of your state? Texas
I applied for a trademark (standard character) for a slogan that I want to put on t-shirts, etc. However, I just applied using the standard character mark and did not pay too much attention to whether the letters were all caps or just some caps, etc... my questions???????
Is it better to use typed message or drawing instead? I only applied recently, is it better to try to appeal and draw/type the mark instead? If the mark gets registered, do I have to use the exact font in the standard character mark or can I use any font with any combination of caps and lowercase or different lettering designs as long as the slogan is unchanged?
I am becoming more and more confused as to which types of slogans actually get registered, and once the slogan is registered how narrowly do you have to stick to the specific lettering... Thanks a bunch... Layla

 

[divgradcurl]

Is it better to use typed message or drawing instead? I only applied recently, is it better to try to appeal and draw/type the mark instead?

For a standard character application, it probably doesn't matter. If you send in a typed message, the USPTO will create the drawing for you.

If the mark gets registered, do I have to use the exact font in the standard character mark or can I use any font with any combination of caps and lowercase or different lettering designs as long as the slogan is unchanged?

No, you don't have to use the same font -- that is the whole point of getting a standard character mark. Instead of s single stylized representation of the words, you get to own the words themselves, in ANY font or color.

From the USPTO website, at http://teas.uspto.gov/V2.0/bas211/teahelp.htm:

"Standard Characters: Use this option to register word(s), letter(s), number(s), or any combination thereof, without claim to any particular font, style, size, or color, and absent any stylization or design element. The application must also include a statement that "The mark consists of standard characters, without claim to any particular font, style, size, or color." The electronic form will automatically generate the correct statement. Registration of a mark in standard characters will provide broad rights, namely use in any manner of presentation."

I am becoming more and more confused as to which types of slogans actually get registered, and once the slogan is registered how narrowly do you have to stick to the specific lettering...

Well, if you get a standard character mark issued, you don't have to be "narrow" at all -- you can use ANY font, color, style, etc., to present your mark -- your mark is actually the words themselves, at least for the subject areas you are claiming.

All that said -- it can be pretty tough to get a standard character mark, unless your phrase is really unique. If you have a more common phrase that ight be unlikely to issue as a standard character mark, and you have a specific design you want to use, you might want to switch to registering the specific design.

But you can try to get the standard word mark first, and then use the specific design as a fallback if the standard character mark doesn't issue.

If you do register a mark with a specific design, you will be limited to pretty much exactly what you sent the USPTO.

 

[laylaazure]

Thank you

Thank you so much, I have been obsessed with this and your analysis helped a lot!!! I appreciate it. If the mark happens to get approved, do you know if someone else can apply for the same exact phrase for different products, (classes). I have been eating and sleeping trademark rules for about 1 month, and from what I have read, the answer would be yes, but I have a hard time believing someone could take the exact phrase and use it on other products. Layla I'm sorry, one more question. If in the description of goods and services, one says tshirts, how picky are they??? Do I have to (appeal) and say long sleave t-shirts and short sleave t-shirts or will tshirts suffice?

 

[divgradcurl]

If the mark happens to get approved, do you know if someone else can apply for the same exact phrase for different products, (classes).

In principle, yes. The more "widely known" or "famous" the mark is, the less likely it is that someone else could register the same mark for a different class.

I have been eating and sleeping trademark rules for about 1 month, and from what I have read, the answer would be yes, but I have a hard time believing someone could take the exact phrase and use it on other products.

Why is that hard to believe? The purpose of a trademark is not to stake out a place and keep anyone else from using something -- the purpose is to give you the incentive to create a "mark" that will then "identify" the products you sell as coming from you.

If all you are using your mark to identify is, say, t-shirts, then why shouldn't, say, a concrete company be able to use the same mark to identify their products? It's not like anyone is likely to be confused as to whether you made the t-shirts or the concrete company made the t-shirts, and since that's what trademarks are designed to promote, it makes sense that you can only protect your trademark for products (or classes) where such a "likelihood of confusion" would exist.

Now, once your mark reaches the status of being a "famous" mark, then you have more power to enforce it even over classes that may be further removed from the class for which the mark is registered. You could probably not open ANY retail establishment with the name Amazon, or even a service establishment, because of the strength of the mark. However, it is theoretically possible that you could still, say, trademark Amazon as the name of a railroad or something. As long as there is no likelihood of confusion, then there is no reason that someone else can't also use the mark.

If in the description of goods and services, one says tshirts, how picky are they??? Do I have to (appeal) and say long sleave t-shirts and short sleave t-shirts or will tshirts suffice?

Here's how the clothing classes break down: http://tess2.uspto.gov/tmdb/dscm/dsc_09.htm#0903

It appears that "t-shirts" are a seperate class from "shirts," but t-shirts isn't limited to short sleeve or long sleeve. Now, whether your mark will also cover shirts (not t-shirts) as well, that will depend on the context, and if someone is trying to establish the same mark for regular shirts, then there will be a "likelihood of confusion" test to see if the new applicant can register the same or a similar mark for a nearby classification.

 

[divgradcurl]

In my other post, I wrote:

Why is that hard to believe? The purpose of a trademark is not to stake out a place and keep anyone else from using something -- the purpose is to give you the incentive to create a "mark" that will then "identify" the products you sell as coming from you.

A better way to describe this is that a trademark is to give you the incentive to create a "mark" that will identify your product in the marketplace -- a trademark is NOT designed to help you limit competition by "staking out" a claim to keep others from competing in that area.

Further, even if you do obtain a trademark, if you don't use it in a consistent manner to identify goods sold by you (basically, your "phrase" should be associated with your products, and not simply be a phrase that is ON some of your products), you can lose it.

If you don't intend on using the phrase on all (or a significant number) of the products you sell, then it is not a trademark, but is instead just a design, and that is not a proper subject for a trademark.

 

[laylaazure]

Just to be clear, tshirts, include short sleeve and long sleeve shirts, as well as any other types of tshirts, so there would be no need to ammend it to specify (short & long sleeve) or would it be wise to ammend?

Also, the slogan I chose, I hope can be used to identify a mind-set, not only a phrase to put on tshirts. Is there any way to get this through when applying for the trademark b/c in the class of goods section all I did was list the types of products.. tshirts, tank tops, etc...

 

[divgradcurl]

Just to be clear, tshirts, include short sleeve and long sleeve shirts, as well as any other types of tshirts, so there would be no need to ammend it to specify (short & long sleeve) or would it be wise to ammend?

If you specified t-shirts, you should be fine. You can always call the USPTO to make sure, if it will make you more comfortable.

Also, the slogan I chose, I hope can be used to identify a mind-set, not only a phrase to put on tshirts. Is there any way to get this through when applying for the trademark b/c in the class of goods section all I did was list the types of products.. tshirts, tank tops, etc...

You should just wait and see. If the office allows your mark as is, then you've done enough already. More likely, they will reject your mark for one reason or another, and you will need to "traverse" those rejections in order to get your mark issued -- one way to "traverse," or argue around, the examiner's rejections may be to describe your "mindset." It will depend entirely on if the examiner rejects your mark in an office action, and why the examiner makes the rejection (if any). But that's somewhere down the road, no need to worry about it now.

 

[laylaazure]

You have helped me so much, thank you for that. One last question (hopefully)

If I do decide to make an ammendment by clarifying and adding more types of goods, like night shirts, and other types that fall into the clothing classification, will that hold up the process?

 

[divgradcurl]

"If I do decide to make an ammendment by clarifying and adding more types of goods, like night shirts, and other types that fall into the clothing classification, will that hold up the process?"

It depends on where you are in the process. Remember, it takes on average 18-24 months to get a trademark registered, so don't expect overnight results!

 

[laylaazure]

I am in the very beginning of the process. I actually have the ability to start printing the slogan on t-shirts or bumper stickers very soon. Do you think the sooner the better or is it safer to wait a little while to see how the trademark app. is going?

 

[divgradcurl]

Do you think the sooner the better or is it safer to wait a little while to see how the trademark app. is going?

Well, you could wait until, say, the first office action, to see how the examiner generally views your mark, that should only take 6 months or so.

However -- and this is the important part -- you have to actually USE your mark in commerce for a period of time (6 months if memory serves) before you get your registered mark even AFTER the examiner approves it. If you've already been using the mark for 6 months or more when the mark becomes allowed, it'll go onto the principal register immediately.

So, it's up to you what you want to do. You will need to use the mark at some point anyway. You might want to talk with an attorney who is experienced in trademarks to figure out 1) how likely it is your mark will get approved, and b) the upsides and downsides of waiting or not based on the specific facts of your situation.

 

[laylaazure]

Again, thanks so much for your help. I can't really afford an attorney right now. My brother has a t-shirt shop and can help me out by doing some shirts for free, however, I don't want that to jeapordize anything. If they don't approve the mark, I can still sell the shirts if no one else claims the slogan, correct?

 

[divgradcurl]

If they don't approve the mark, I can still sell the shirts if no one else claims the slogan, correct?

Yes. And even if someone claims the mark, you can still use the slogan as long as it doesn't infringe on the other's mark. But no need to worry about that now.

 

[laylaazure]

Do you think it would be smart to print t-shirt and bumper stickers (since I could then claim a common law trademark for the bumper stickers if the same slogan gets approved for t-shirts) at the same time with a TM or just do the t-shirts for starters since I applied for that class only. If they deny my slogan, is it fair to say that no one will get that exact slogan?

 

[divgradcurl]

Do you think it would be smart to print t-shirt and bumper stickers (since I could then claim a common law trademark for the bumper stickers if the same slogan gets approved for t-shirts) at the same time with a TM or just do the t-shirts for starters since I applied for that class only.

That's a business decision you'll have to make. Common-law trademarks can be pretty hard to prove sometimes unless you have built up a history of consistent use of the mark.

If they deny my slogan, is it fair to say that no one will get that exact slogan?

Not necessarily. It depends on why they deny the mark to you, and how and how hard you tried to get the mark allowed. Trademark practice oftentimes results in an initial rejection; it then becomes up to you to justify the registration. Sometimes your arguments will sway the examiner, sometimes they won't. However, if you fail to sway the examiner and give up, that doesn't mean that someone else can't try and register the mark -- maybe they have a better argument, and can get the mark allowed. You just never know.

But, like I mentioned earlier, standard character marks can sometimes be very hard to get registered, so it is likely that if you can't do it, nobody else can either.

Of course, it also doesn't mean that someone else hasn't already tried and failed!