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[patentologist]

I am a patent attorney who is filing a trademark application for a client.  I haven't done trademark work before (and my client knows that).  I had a few questions from trademark attys regarding the application form.

1.  Selecting a class - my client has terms that he wants to use for "online activities." 

One of them relates to mobile application technology, and may be used for any type of mobile applications. Essentially using ur mobile device to communicate via a mobile application associated with a particular business.

the other two terms are related to selling online advertising online via a phone or a computer.

Should I designate a class or wait for a recommendation from the examiner? Or alternatively, what is the typical practice of trademark attorneys.

2. if the mark includes the word advertisement, does the mark automatically cover ads and advertisements? do we need to protect each mark separately.

4. what other things should I be aware of?

Please respond at your earliest convenience.

[Yak]

1.  First thing I would suggest is looking through the trademark international classes (IC).  There are 34 for goods and 11 for services.  To assist in this and determine some of the possible particular sub-categories within the classes you can us search terms within the classes (http://tess2.uspto.gov/netahtml/tidm.html).  For example if you use the search terms "online advertising" you get 22 search results all within IC 35 which is advertising and business services, including advertising; business management; business administration; office functions. If the client is using the mark or intends on using the mark in commerce for multiple goods or services you may have to file for registration under each of the distinct classes. Keep in mind that the filing fee is per IC.  At some point you will also have to provide evidence that the mark is being used with each of the distinct classes, when will be determined by the basis for filing the application - either under currently in use or under an intent to use. 

2.  The mark will cover the goods and services it is actually used with.  The characters in the name do not in and of themselves protect the class. Keep in mind that if the mark is made of generic words which describe the good or service that the mark may be refused as being merely descriptive.  If the mark includes descriptive words like "advertisement" you may be required to disclaim that word outside of the mark as a whole. 

3.  How many marks do you have?

4.  You will want to determine if the mark is currently in use in interstate commerce or whether the client wants to file the application prior to use. The procedure will differ slightly.  Sometimes clients will want the mark to cover everything under the sun even remotely related to the good or service.  As I mentioned, at some point you will have to provide a statement of use and verify that use in the form of a specimen showing use of the mark with the good or service.

[patentologist]

.  First thing I would suggest is looking through the trademark international classes (IC).  There are 34 for goods and 11 for services.  To assist in this and determine some of the possible particular sub-categories within the classes you can us search terms within the classes (http://tess2.uspto.gov/netahtml/tidm.html).  For example if you use the search terms "online advertising" you get 22 search results all within IC 35 which is advertising and business services, including advertising; business management; business administration; office functions. If the client is using the mark or intends on using the mark in commerce for multiple goods or services you may have to file for registration under each of the distinct classes. Keep in mind that the filing fee is per IC.  At some point you will also have to provide evidence that the mark is being used with each of the distinct classes, when will be determined by the basis for filing the application - either under currently in use or under an intent to use. 

Thanks.

2.  The mark will cover the goods and services it is actually used with.  The characters in the name do not in and of themselves protect the class. Keep in mind that if the mark is made of generic words which describe the good or service that the mark may be refused as being merely descriptive.  If the mark includes descriptive words like "advertisement" you may be required to disclaim that word outside of the mark as a whole. 

At what point do I have to disclaim them? Is it after we get an OA?

3.  How many marks do you have?

Answer: 3 (including a first mark that is "sdadfdfdf ads" and "sdadfdfdf advertisements")  of course the marks should cover the singular form as well. Which leads me to another question, should I file the marks in singular format or with the (s) at the end.  Also, should I file "sdadfdfdf ads" and "sdadfdfdf advertisements" as two separate marks?

4.  You will want to determine if the mark is currently in use in interstate commerce or whether the client wants to file the application prior to use. The procedure will differ slightly.  Sometimes clients will want the mark to cover everything under the sun even remotely related to the good or service.  As I mentioned, at some point you will have to provide a statement of use and verify that use in the form of a specimen showing use of the mark with the good or service.

Is it typical practice to file a TEAS plus form by selecting subclasses? or is it better to write your own description so you can cover your scope more accurately and broadly?

[Yak]

1. Welcome
2. Yes, that is usually something handled in response to an OA.
3.  I would file the marks as they are being used or will eventually be used.
4.  I typically use the sub-classes by checking the boxes provided as options during the TEAS online filing process.  I have gotten rejections from the USPTO EA when I have attempted to add my own language (admittedly I have only done that twice). There is only so much broadness I think you can force and typically once the mark is registered it gets a pretty broad scope within a class when compared to future marks. 

There are a couple of regular posters here who seem to have more TM experience and hopefully one of them will offer some additional input.  JSonnabend usually offers good input and offers corrections when information and responses are not completely accurate.