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   The Pitfalls of Filing, Using TEAS
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   Author  Topic: The Pitfalls of Filing, Using TEAS  (Read 1375 times)
Joe Foxworthy
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The Pitfalls of Filing, Using TEAS
« on: Sep 15th, 2005, 9:12pm »
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Hello,
 
    I am filing a TM for the first time.   It is a fanciful mark if I do say so myself.   I was wondering if anyone can give me some hints on what to and not to do when I file.   Are there any common mistakes or problems?   Any advice would be greatly appreciated.   Thanks!
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JSonnabend
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Re: The Pitfalls of Filing, Using TEAS
« Reply #1 on: Sep 16th, 2005, 9:22am »
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The most common mistake, in my opinion, is filing for a TM registration oneself instead of using an attorney.  I can't tell you how many clients have come to me after receiving an office action on a self-filed application, only to learn that they've made unfixable (or costly to fix) mistakes.
 
To put things into financial perspective, I charge a flat rate of $125 to prepare and file and application, and the same service with a registerability search starts at $195.
 
- Jeff
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JimIvey
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Re: The Pitfalls of Filing, Using TEAS
« Reply #2 on: Sep 16th, 2005, 12:24pm »
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FWIW, I think those are competitive fees.  
 
I'd say the following are the most significant pitfalls (and I'm no expert in this):
 
1. ITU vs. already used.  I perceive word marks (e.g. "TRADEMARK") are more valuable than word+design marks (e.g., "Trademark" in a baseball script superimposed over a circle-R).  If you file an Intent-To Use (ITU) application, you can file for the word mark, then use with some design, and you may end up with broader coverage in your registration.  
 
Caveat:  I come from a patent perspective where literal coverage is everything.  In trademarks, coverage transcends the literal, so my point might not be so important.
 
2. Classification.  Picking the right classes might be tricky.  Even if several seem appropriate, you might be tempted to only pick one to save money (most fees are "per class"), but that might be being penny-wise and dollar-foolish.
 
3. Description of Goods/Services.  Again, coming from a patent perspective, I'm tempted to write that the mark will be used on anything under the sun made by man.  But that's not acceptable in trademark applications.  However, you'll still want a fairly broad description on the goods and services in conjunction with which you hope to use the mark.
 
I think those are the major ones.  After filing, you'll have to watch deadlines closely, respond in time and appropriately, and be prepared to deal with any objections the attorney at the USPTO might have (including perhaps legal research and writing a well-argued response).  Oppositions can be like little litigations -- I don't even do those.
 
One last note re TEAS:  it would be really nice if they had a worksheet print-out function so you can give some thought to your answers ahead of time.
 
Regards.
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Re: The Pitfalls of Filing, Using TEAS
« Reply #3 on: Sep 16th, 2005, 12:42pm »
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on Sep 16th, 2005, 12:24pm, JimIvey wrote:
If you file an Intent-To Use (ITU) application, you can file for the word mark, then use with some design, and you may end up with broader coverage in your registration.

The registration is for the mark as registered, so actual use of the mark, legally speaking, has no real impact on the scope of the registration.  Deciding whether to file a composite mark, a word mark or a logo can be difficult, and the decision may have significant impact on enforceability.  Also, Im not sure how the 1(b) vs 1(a) basis of an application would affect the scope of the registration.
 
Quote:
Picking the right classes might be tricky.  Even if several seem appropriate, you might be tempted to only pick one to save money (most fees are "per class"), but that might be being penny-wise and dollar-foolish.

Picking the right class is virtually unimportant, as the examiner will simply re-classify misclassified descriptions.  The real issue -- which I think was what you were driving at -- is the description of the goods or services (as opposed to where those descriptions go in the classification system).  That's precisely where one can be penny-wise but pound-foolish by "under-claiming" the mark, so to speak.  On the other hand, with proper analysis, one can achieve very wide protection at significantly reduced cost by strategically defining the G&S.
 
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However, you'll still want a fairly broad description on the goods and services in conjunction with which you hope to use the mark.

Breadth of G&S should be balanced against potentially conflicting marks and uses -- the TM equivalent of prior art.  Ultimately, the registration will be worthless to the extent it includes G&S not actually covered by the mark in use.
« Last Edit: Sep 16th, 2005, 12:43pm by JSonnabend » IP Logged

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Re: The Pitfalls of Filing, Using TEAS
« Reply #4 on: Sep 16th, 2005, 1:39pm »
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See?  I'm no trademark expert!  Wink
 
on Sep 16th, 2005, 12:42pm, JSonnabend wrote:
Im not sure how the 1(b) vs 1(a) basis of an application would affect the scope of the registration.

The one situation I saw (but didn't handle/create) was an ITU application that ultimately became abandoned (before revival was an option).  The application had been allowed and was awaiting a statement of use.  The application was simply re-filed anew, based on use.  The examining attorney decided that letter case and/or design elements were material and would not allow a word mark (insisted on some lower case letters and/or design elements in the drawing of the mark for capturing the "true impression" of the mark).  
 
They had a word mark in hand through the ITU process but couldn't get the same word mark through the process based on use.  An anomaly?  Perhaps.  Would filing a statement of use in the ITU application have resulted in a similar narrowing of the registration?  I don't know.  But I believe the rights of the client were somehow diminished by the change from an ITU application to one based on use.
 
 
on Sep 16th, 2005, 12:42pm, JSonnabend wrote:
Picking the right class is virtually unimportant, as the examiner will simply re-classify misclassified descriptions.

Good to know.
 
Thanks.
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