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[yeskiweb]

Hi to all!

I'm currently filing an application for a trademark and I'm a bit confused as to what classes I should claim or name in the application.

The trademark I want to register is for pasta (class 30) but the mark will not be specifically used for the goods pasta packaging or at the point of purchase.  I intend to use the mark only in advertising including print, television, online and outdoor signs of pasta products.

So should I file for class 35? The description offered by the USPTO for this class mostly, I think, are for advertising services which is not our case.

I would greatly appreciate any help any of you can give me.

Thanks in advance.

[JSonnabend]

If the mark is not being used for goods, what is it being used for?  You're not an advertising agency, so the advertising ID is not appropriate.  Are you sure you have a mark?

- Jeff

[Yak]

yeskiweb,

It may be helpful for you to read over the trademark basics and FAQ provided by the USPTO. 
http://www.uspto.gov/trademarks/basics/index.jsp.
http://www.uspto.gov/faq/trademarks.jsp

Of particular interest to you might be the topics of use in commerce vs intent to use, what you would need to provide as a specimen showing the mark in use, and what is interstate commerce. 

[yeskiweb]

Thank you both for your answers.
You are right. What I had could not be considered a trademark. It was just a wording that we were interested in protecting. Jeff, as usual you're right.
Again, thank you very much.

[BobRoberts]

You file for registration for the class describing the goods/services, not the class of how you will be advertising the goods/services (unless your services are advertising). 

If your mark is used regarding selling pasta, I would file in the class covering the product 'pasta'. 

"I intend to use the mark only in advertising including print, television, online and outdoor signs of pasta products."  If you are referring more to a tag line, or slogan, that could be a protectable trademark use. Think "Where's the beef" , or "I'm Lovin' it" , "the Quicker Picker Upper", "plop plop, fizz fizz, oh what a relief it is" m, "finger lickn' good" and I'm sure many more.  Though a logo or name, a slogan or tag line could still serve to identify a source for a product/service, and thus could receive trademark protection.  May not be applicable in your particular situation, but thought I'd throw that out just in case.

[yeskiweb]

Thank you BobRoberts,
Actually you're right on the dot on thinking about slogans. I think that IS sort of what the client wants, however, the wording is quite descriptive I'm afraid.
I'm worried that by suggesting to file an application we will encounter one or both of the following problems:

- Receiving an OA for lack of distinctivity
- Not being able to provide sufficient proof of use due to the fact that it's not going to be printed in the packaging.

I've been reading through the online files of some of the famous slogans you mentioned, and "finger lickin' good", for example, became registrable only after arguing secondary meaning. Unfortunately, this is not an option in this case.

It probably would be best to use the sentence/slogan with the TM symbol without federal registration. Maybe one day it might acquire secondary meaning. Who knows.

[BobRoberts]

"It probably would be best to use the sentence/slogan with the TM symbol without federal registration. Maybe one day it might acquire secondary meaning. Who knows."

That sounds like a good plan.

Re: Secondary Meaning- Someone can correct me if I am wrong, but even if it is descriptive (and not suggestive), you still should be granted allwance on the Supplemental Register (provided that the slogan is not likely to cause confusing with another existing slogan).  Though much weaker than the Principle Register, you'll have a placeholder for your mark, and after 5 years of continuous use, you can petition to be moved to the Principle Register. 

For a service, I believe advertisments, brochures, business card/stationary showing the mark (here, the slogan) with the service, and business signs are acceptable. 

For a product (?which may be more applicable for your situation for pasta), I believe a display for the product would be acceptable (in addition to packaging).  I don't think advertising/business cards or stationary would be sufficient for the product. 

Just curious...  Are you affiliated with an advertising agency that is creating advertising for a pasta company?  Or, are you affiliated with a Pasta company that wants to use a slogan in their advertising?  I would say that clarification here is important.  If you are an advertiser separate from the manufacturer (and contracted/hired to create advertising), than I don't believe that you could claim trademark protection in your slogans (as trademark protection is created by use of the mark in commerce in the classes where protection is sought- your ad agency is not in the business of selling pasta, so you are not using the mark in commerce).  In that case, your rights to the slogan(s) you geerate would likely be defined by the contract between your ad agency and the company (and their rights to use the mark would be defined in that contract as well).

 Now,  if you work in the advertising department of a pasta company, then it would seem that your comany would have some sort of packaging to get to the next vendor in the chain (if not the end consumer), and could place the  mark/slogan on the packaging, or ultimately, a product display that is placed by the product at the point of sale to the end-consumers (i.e., supermarket).   Your use in that fashion could be sufficient for the pasta company to aquire trademark protection, provided the mark/slogan is used with the packaging or product display.

Good luck.