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[concerned001]

I own a domain.com using two words no space between them.
Doing an availability check for those two words at USPTO, those two words whether together (no space) or apart with a space are available.

Must I request for two trademarks?  One with a space and other without a space both words.  Or what about one with a hyphen between both words making it 3 trademarks for same two word combination.

It appears I have a choice of IC codes and there are a whole lot of them.   

Can I file without a code?

Thanks.

[OMG IP]

you file for registration, submitting your application with the mark as used in commerce.

You will need to designate at least one class.  The cost of an application is per class.

Sent you PM.

[Zonath]

Generally speaking, registering a two-word phrase will provide some protection for most permutations of that phrase, since anything too close to the registered phrase would most likely be seen to be confusingly similar.  So, if you had the phrase "LaborPolka" registered, and someone tried to use or register "Labor-Polka" for a line of products similar to your own, it's very likely that there would be some likelihood of confusion found, and you could presumably put a stop to that use or registration.

You cannot file without choosing one or more classes.  One reason for this is that your trademark will only protect against uses of the mark which are confusingly similar to your own, and a big part of that calculation will be the classes of goods for which the mark is registered.  So, if your "LaborPolka" mark is used on a brand of aftershave, another business could possibly use "LaborPolka" for a brand of computer equipment, since aftershave and computer equipment are unrelated and not necessarily found in the same marketplaces, and so the likelihood of confusion between the two brands is likely to be very minor.  Once your mark receives enough notability that it could be considered a famous mark (like "Coca-Cola" or "Nike"), then additional protections may apply, but until that point, other users are free to use similar marks in unrelated lines of business.

[concerned001]

Thanks Zonath,
I tried to file but when it came to clicking boxes in 68 pages of IC codes I nearly went blind reading most of them.  None applied

So I made up my own description and sent it to
"If you do not find a listing that accurately identifies your goods/services, you may e-mail TMIDSUGGEST@uspto.gov to request that your identification be added to the IDManual, and then wait for the addition before filing using TEAS Plus."

I'll wait and see what they say.

[concerned001]

Below is their reply.
I'm thinking to apply according to last sentence in second paragraph.
 

Thank you for your inquiries. We cannot opine or provide advice regarding identification and classification.   The purpose of this mailbox is to facilitate the submission of specifically worded suggestions for possible inclusion in USPTO ID Manual.  Please consult the Trademark Manual of Examining Procedure (TMEP), Chapter 1400, for information about general office policy concerning identification and classification of goods and services.  You may also wish to consult the ID Manual for more specific guidance on this issue.  Both of these resources are available online at the Office's website www.uspto.gov.   For general trademark information, please telephone the Trademark Assistance Center, at 1-800-786-9199, or e-mail your question to  TrademarkAssistanceCenter@uspto.gov.

 

If you are making a suggestion for the Acceptable Identification of Goods and Services Manual, the nature of the goods must be further clarified in order to understand their exact nature and to be able to classify them. If it is not your intent to propose this for inclusion in the Manual, you may use that language as your identification in a non-TEAS Plus application and the Examining Attorney assigned to your application will work with you on finding acceptable language to describe your goods.

 

[OMG IP]

One consideration to keep in mind is that Examining Attorney's are pretty easy going when it comes to switching IC's.  Thus, if you file an application and pick the wrong/inappropriate IC, you should be able to change to the proper IC.  The important part is really the description of the mark, and the description of the G/S.  That's where you want to make sure you've done your homework and got it right.

[BobRoberts]

It was unclear whether you were looking to apply for Registration of a service mark, or a trademark, and whether your use in commerce (only having a domain registered) is sufficient to file a "use" application, vs. an "intent to use" application.

If a trademark for goods, you should have at least one bona fide across-state-lines sale before your mark is considered a use in commerce, and that is if the mark is used .  If you provide a service, I believe that advertising the service, or rendering the service across state lines is sufficient for a use in commerce (if your mark is used in conjunction with the service).

Regarding clearance, it is always best to have an official clearance opinion done for your mark.  The reason for a clearance search and opinion is to make sure that you are not infringing on anothers' Trademark rights.  The determination for whether you are infringing on another's mark is based on the likelihood that your mark is confusingly similar to another that has been used in commerce longer than yours.  'Likelihood of confusion' (likelihood that your mark is confusingly similar) involves many different considerations, inclluding not just directly identical marks, but sound-alikes (or the dominant part sounds-alike), similar connotation/meaning even if different words used, the areas of commerce where the mark is used (i.e., the type of goods and services), channels of trade and other considerations.  For a design mark, the analysis can get more complicated.

Good luck!

[concerned001]

Your Trademark/Service Mark Application, Principal Register Was Submitted Successfully

I'm not sure what I've done, I do know it cost me $325.00 however I'm glad I did because I don't want to say some day I should have done it.

I'll let you all know if I get it and what on earth I will do it.

Goodbye 325 dollars.

[concerned001]

it took 5 seconds to purchase domain name for trademark I am applying for and

In approximately 3 months, an assigned examining attorney will review your application to determine if all legal requirements are met. Currently, your mark is not registered and is considered a "pending" application. The overall process from the time of initial filing to registration or final refusal can take 13-18 months or even longer, depending on many factors; e.g., the correctness of the original filing and the type of application filed. It is CRITICAL that you check the status of your application at least every 3 - 4 months and promptly contact the Office if a letter (an "Office action") or notice has issued for your application that you did not receive or do not understand.

One has to wonder or at least I do...........

[JSonnabend]

Concerned, it sounds to me like you didn't file a proper trademark application.  Only time will tell, but I bet you run into a use in commerce problem.  What was the ID you ultimately settled on?

- Jeff

[concerned001]

You could be correct I did'nt file a proper trademark application.  One thing I do know my CC was charge for a filing fee. 
As of this morning mark or words I choose, there are two of them, separated by a space is still available.  If you is an IC# I didn't pick one.
"In approximately 3 months, an assigned examining attorney will review your application to determine if all legal requirements are met."

I'll check every month to see if there is some action.  I described how those two words should be used in a specific use for some inventions I have.   
In mean time I applied, received and will soon put into use an EBay ID using those two words with no space between them to offer for sale products described by those two words.
Nothing I can do now except I guess wait.  USPTO has my email and phone should Agent want to ask what am I trying to do.
thanks

[JSonnabend]

An examiner will not ask what you're trying to do.  The examiner will assume you are trying to register a trademark.  The examiner will review the application and then issue a refusal if the application has errors or if there are conflicting prior registrations.

- Jeff

[concerned001]

you are talking about what may or may not happen in future.

Right now there is no trademark using my two words with or without a space in order those words were submitted.  meaning first word beginning with an S is in front of second word beginning with a A.

There is a trademark for those same 2 words in reverse order.  Meaning their first word begins with an A and second word with a S.  Thing is my use is totally different.

Not too worry.   I'm sure it will be given some correct IC # by examiner for my use. 

Otherwise it would seem, if there is no refund something is wrong with system.

If 80 people watching news a few weeks ago think to file a trademark on "Seal Team 6" for same uses and government accepts 80 application fees at $350 bucks each and awards trademark to a first time stamp to file then USPTO in all fairness should refund 79 of those application fees.  Otherwise something is wrong big time with filing an application.

[JSonnabend]

First, the test under section 2(d) is likelihood of confusion, not identity of marks.  Your analysis therefore falls a bit short (although in the end your conclusions may hold true).

Second, the "IC #" is besides the point.  If you don't have use under section 1(a), your application will be refused (subject to amendment to ITU status and later submission of a statement of use).  My concern is larger, though.  I fear that you may not be using the "mark" as a mark at all.

Finally, there is no refund.  The "system" does not check anything other than making sure you have the proper fields filled-out.  The examiner does the substantive review.  TEAS expressly warns you that your application may be refused and there are no refunds if it is.

- Jeff

[Kaitlin]

"When all else fails, read the directions."

If 80 people watching news a few weeks ago think to file a trademark on "Seal Team 6" for same uses and government accepts 80 application fees at $350 bucks each and awards trademark to a first time stamp to file then USPTO in all fairness should refund 79 of those application fees.  Otherwise something is wrong big time with filing an application.

It seems you would have been well served to know more about trademarks before beginning the registration process. 

Trademarks are not bought from the government.  In the US, trademark rights are only acquired from using the mark as a brand for goods or services.  Period.  Registration of a mark helps you protect it, but does not grant you rights in the mark itself. 

And the government won't do the work for you of figuring out whether you've chosen a good one for free.  The PTO will *reject* ones that examiners find to have problems, but they've already done the work your application fee covers by that point.  You're supposed to have done the research regarding your mark before you apply. 

This site has a succinct and pretty good summary of the trademark basics which anyone applying for registration should understand.  (A couple of problems I saw, in a quick review of it, is that they might have been clearer in pointing out the limited scope of state registration as compared to federal and they muddle the distinction between generic and descriptive marks, but not in a way that's of great concern.)