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[tdazz]

I have an on-line service business and I am thinking about advertising it on pens, hats and shirts.  If I apply for a service mark for my on-line business, should I also apply in the classes that cover the pens, hats and shirts (ie, goods)? What's the downside if I don't?

Thanks,
Tdazz

[lyza2855]

I noticed that no one has as yet responded to your question so I'll take a stab.

It is my understanding that you would only want to apply for protection of your mark for the sale of t-shirts, hats, pens, etc. if you are in the clothing and accessories business and are actually selling them.  Since you've stated you will be using the t-shirts, etc. just as advertisements for your services (as give aways?), you probably would not be able to prove correct use for the sale of those goods in interstate commerce.  

However, I am not an attorney and so you should confirm this with counsel, many of whom participate on this blog.  Hope this helps.

[JSonnabend]

It is my understanding that you would only want to apply for protection of your mark for the sale of t-shirts, hats, pens, etc. if you are in the clothing and accessories business and are actually selling them.  Since you've stated you will be using the t-shirts, etc. just as advertisements for your services (as give aways?), you probably would not be able to prove correct use for the sale of those goods in interstate commerce.  

Nope, that's wrong.  

First, there's no requirement that the goods be "sold" in interstate commerce, only that they be used in interstate commerce.

Second, you don't need to be in the business of selling clothing and accessories (nor manufacturing them) in order to have valid trademark rights in their branded use.  Consider college t-shirts and the like.  They're all registered trademark uses, but colleges aren't in the clothing business.  These types of uses are called "secondary source" uses and have long been recognized as valid, protectible TM uses.

- Jeff

[clarklawyer]

Nope, that's wrong.  

First, there's no requirement that the goods be "sold" in interstate commerce, only that they be used in interstate commerce.

I'm not sure you and Lyza are answering the same question.

A service mark registration can be supported by advertising uses, but I'm not sure that a registration for a good can be supported by mere advertising uses of the good.    If the only use of a pen bearing a logo is advertising, I don't think that would allow registering the trademark in whatever class pens are covered under.

[lyza2855]

Thanks Jeff.  Looking forward to the Xmas card.  

Re: the "sale", isn't it implied when presenting specimens showing use in interstate commerce that "interstate commerce" is another way to say offering goods or services for sale across state lines?  

Usually, acceptable specimens for t-shirts and hats in Class 25 would be the mark printed or embroidered on a label sewn inside the garment clothing/hat, or invoices showing the sale of product to an out-of-state buyer under the mark.  I've seen examiners reject Class 25 specimens that were a picture of a t-shirt with the brand on the front of the shirt or sewn into the face of the cap as merely artwork.  I've also seen them reject the use of t-shirts for use related to advertising services.

From what he said, he wants to use those goods as advertisements so I'm assuming (and I know that assumptions are not a good thing to make, but in this instance ...) that he will be wanting the mark on the front of the shirt or hat rather than on the label inside.  What class of goods/services would you pick for that type of use?  I guess you could use Class 40, that already indicates acceptability for "imprinting messages on t-shirts" but would it work to also include "pen, hats" etc.?  I would really like to understand this.  Many thanks.

[CriterionD]

Someone can correct me if I'm off-base here (and I know they will),

But I think the main point here, regardless of what might not be allowable, is that it might not make good sense for the OP to file in the additional classes unless his company planned on deriving a certain amount of revenue directly from the sale of these shirts/hats/etc (or thought there was a realistic possibility of doing so).  College t-shirts – the colleges might not manufacture or even sell them themselves – but they make licensing revenue off of the sales – the goal of the trademark usage here is not only to promote the university, but also to promote the shirts themselves.

Similar to Isaac, I don't think Lyza is very much off-base in what I think she is trying to get across.  

[lyza2855]

Thanks, Issac.  I think we crossed entries and that was what I was trying to say.  You said it better.  Thanks again.

[tdazz]

Thanks to all of you have replied.  It is a very interesting issue/topic, as you can see from the responses.  The advertising on the shirts, hats, pens, etc. is expected to generate activity to the site which will (hopefully) result in generating revenue.

Again, I very much appreciate your responses!

[tdazz]

An after-thought following my earlier reply, I looked at Potbelly Sandwhich Works -- the sandwhich shop chain -- and they have filed in Class 025 for hats, shirts, caps, etc.  I recognize that this is a brick and mortar busines and not an on-line business, but the issue is very nearly the same.  They are using the hats, caps, shirts, etc. to advertise their business.

[clarklawyer]

An after-thought following my earlier reply, I looked at Potbelly Sandwhich Works -- the sandwhich shop chain -- and they have filed in Class 025 for hats, shirts, caps, etc.  I recognize that this is a brick and mortar busines and not an on-line business, but the issue is very nearly the same.  They are using the hats, caps, shirts, etc. to advertise their business.

I don't think the brick and mortar aspect makes things different.  The question I'd ask is whether Potbelly sells the hats, shirts etc. with the logo on it or otherwise makes a non advertising use in class 025?   Universities often do sell sweatshirts, hats, etc. on campus and license the sales elsewhere, so even that example did not resolve the issue in my own mind.

[JSonnabend]

Isaac, the "sale" of hats, shirts, etc. is simply not relevant.  The requirement is "use" in interstate commerce.  You can register secondary source goods even if you only give them away (think radio station promo t-shirts, for example).  Quite simply, "sale" is not required -- it's TM's 101 type stuff here.

Lyza is absolutely "off base" if what she is suggesting is that one must sell these items to qualify for TM registration.  That's simply not true.  She's correct that mere ornamentation on a shirt generally will not qualify for TM protection nor registration, but that's not what we're discussing here.  We're discussing the secondary use of a trademark primarily used for services.

The law of secondary source goods is well established.  All the speculation and discussion here won't change that.

- Jeff

[Isaac]

Isaac, the "sale" of hats, shirts, etc. is simply not relevant.  The requirement is "use" in interstate commerce.  You can register secondary source goods even if you only give them away (think radio station promo t-shirts, for example).  Quite simply, "sale" is not required -- it's TM's 101 type stuff here.

Thanks Jeff.  "Secondary source" stuff is TM 101 material I never learned.  

[Lyza]

OK Jeff, I am duly spanked.  I understand now.  Do I still get a card?

[Lyza]

Actually, I must add in my own defense that use-equals-sales was what I was taught.  I was always told to get the dates of first use by asking for the date of the first sale anywhere and the first sale in interstate commerce.  Since different attorneys within different law firms were saying the same thing, I assumed it was correct, but I see now that use cannot be construed solely as sales since use would be within a volunteer effort or give-away.  Thanks again Jeff.

[Isaac]

Actually, I must add in my own defense that use-equals-sales was what I was taught.  I was always told to get the dates of first use by asking for the date of the first sale anywhere and the first sale in interstate commerce.

That advice is not so bad.   For goods that are going to be sold, those sales dates are often the best dates to use.   But even for goods, dates other than sales might establish use in commerce.

Blue Bell Inc. vs Farah Manufacturing describes a contest between two companies for the same clothing trademark.   In sorting out the mess, the court wades through various activities undertaken by the parties to sort out who was the senior.

http://www.law.uconn.edu/homes/swilf/ip/cases/blue_bell.htm