Thursday, June 25, 2009

Any Requests?

I've slowed down a bit in my blog posting lately because work is a bit busy. I fully intend to continue the International Classification train but I thought it'd be a good idea to devote a post for requests.

Are there any of the trademark classes you'd like to know more about? If so, please comment with any questions.

Thanks! I'll be back soon!

Thursday, June 18, 2009

Trademark International Class:
Class 5 (Pharmaceuticals)



All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 5.

What is International Class 5 All About?


Each class has a short title heading that gives a snapshot of what that class is all about -- IC 5's short title is pharmaceuticals. But, as with anything trademark, there's more to it than that. The USPTO has 955 accepted descriptions that fit into IC 5; check them out
here.

This class contains within it all the normal items you think of when you hear the word pharmaceuticals – antibiotics, antivirals, aspirin (which
used to be a trademark), decongestants, etc. But within this class there also exists other items that have to do with medicating or healing or disinfecting.

If something is anti, it likely resides within class 5 – antibiotic, antibacterial, anti-inflammatory, antifungal, antimicrobial, anticoagulant, antiseptic, antiviral, anti-itch. Vitamins, minerals and supplements are filed in this class as are pesticides, parasiticides, repellents. You're also going to find things like bandages, bath preparations for medical purposes, deodorizers, herb teas for medicinal purposes.

What Else is in International Class 5?


Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 5 is no exception. Here are a few items living in IC 5 that seem a bit weird:


• baby food

• skin care preparations, hair care preparations, lotions, etc. that are medicated

• gluten free food

• fly paper


What's New for International Class 5?


The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 5, good plus date added to the guide:


• Algaecides [chemicals for swimming pool maintenance] 04 Jun 09

• Aromatized beverages based on fruit, protein, cordial, sugar and other fluid nutrients, namely, meal replacement drinks for use as a food fillers 26 Mar 09

• Dental tablets for disclosing plaque and tartar on the teeth 05 Mar 09

• Disposable wipes impregnated with disinfecting chemicals or compounds therefor for use on {indicate items being disinfected, e.g., railings, countertops, toilet seats} 15 Jan 09
• Face creams and cleansers containing benzoyl peroxide for medical purposes, namely, the treatment of acne 19 Feb 09

• Medicated cosmetics 26 Mar 09

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Wednesday, June 17, 2009

Trademark International Class:
Class 3 (Cosmetics and cleaning preparations)
All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 3.

What is International Class 3 All About?


Each class has a short title heading that gives a snapshot of what that class is all about -- IC 3's short title is cosmetics and cleaning preparations. But, as with anything trademark, there's more to it than that. The USPTO has 995 accepted descriptions that fit into IC 3; check them out
here.

Cosmetics of almost all kinds are to be listed in class 3. Now this includes cosmetics in the truest sense of the word (e.g. mascara, lipstick, etc.) but also includes lotions, creams, shampoo & conditioner, perfumes, etc. Basically any non-medicated liquid, creams, powder, gel, etc. that you can apply to your body is going to be in class 3. The one exception to the non-medicated rule is, for some reason, soaps. Soaps whether they're medicated or not fall into class 3. Cosmetic items for your animal friends – pet shampoos, pet odor removers – are also in class 3.


Cleaning preparations include soaps, be they for your body or your dishes, waxes, polishes, detergents, varnishes, removers, etc.


What Else is in International Class 3?


Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 3 is no exception. Here's a few items living in IC 3 that seem a bit weird:

• sandpaper

ambergris
beauty beverages
• fake blood

• temporary tattoo sprays & stencils


How do I file a Trademark in International Class 3?

Let's assume you've had your
comprehensive research conducted and are now at the application stage. The folks preparing your application should help you with compiling a list but here are some guidelines that should help expedite the whole thing.

1) Be specific. For instance, if you're selling a wax indicate what it's used for – the face, body, a car, furniture, etc. If you're selling a line of cosmetics, take the time to really think on your brand and detail all of the items.


2) Stay away from words like products, items, materials, goods, etc.


3) Don't be specific. Whoa, what? Yes, I know this is contradictory and really this is one of those trademark classes that have contradictions in it. One of the USPTO's approved descriptions for this class is "Cosmetic preparations," which is general as general can be, right? This is where your research & any advice from a trademark attorney is going to come into handy. It may be advisable to use such a generic term to allow freedom of movement within your filing. Again, this is all going to depend on two things – the results of your
comprehensive research and what a trademark attorney recommends.

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Explanation of the Trademark International Classification System


Filing a name, logo or slogan is not all about the mark itself but also what you're doing with it, i.e. your goods and/or services. All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a chart here.

A Bit of History

On September 1, 1973 the USPTO adopted the international classification system as set forth by the Nice Agreement. Prior to that date, the USPTO used their classification system, which was long-winded to say the least.

For instance, let's say you wanted to file a name for clothing, shoes and hats – today you'd file it in 1 class, IC 25 but before 1973 2 classes were filed, 22 & 39. Another example – IC 16 (paper & printed materials) used to be divided across 8 classes, 2, 5, 22, 23, 29, 37, 38, 50. Suffice it to say, the IC system is far easier to wrap your mind around.

What are Goods?

As mentioned before, goods fall into classes 1-34 but what constitutes a good? The easiest way to think about it is to consider if what you're selling is tangible or not. Can you touch it, see it, hear it, wear it, smell it, so on and so forth?

Goods can include items like cosmetics, vitamins, jewelry, backpacks, clothing, cigars, food & beverage items, guitars, chemicals, paints, tools, machines, cars and on and on.

What are Services?

Services fall into classes 35-45 but what is a service? This one tends to be a bit trickier as some services deal with tangible items. One simple way to look at is to bear in mind if you're doing something for someone.

For instance, if you prepare taxes, are a real estate agent, teach something, run a restaurant or a hotel, are a doctor, lawyer, cosmetician then you're offering a service.

Can I be Selling Goods and Services?

Absolutely and these seems to almost always be the case for certain industries. Let me provide a few examples:

1) You have a name that you use for your hair salon as well as an eventual line of hair care products. To trademark the name, you'll want to file in IC 3 (cosmetics and cleaning preparations) as well as IC 44 (medical, beauty & agricultural).

2) You have a name for your retail clothing store where you sell all types of clothing from different designers. Since you are not selling your branded line of clothing, you'd need only to file in IC 35 (advertising & business).

3) You have a name for your line of baked goods, specifically cakes, candies and cookies that you distribute to coffee shops and kiosks. Since another party is selling your goods, you'd need only to file in IC 30 (staple foods).

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Tuesday, June 16, 2009

Coca-Cola: Two New Trademarks

Coca-Cola filed 2 new trademarks this month. Let's take a look at both:

On June 8th, a name and logo was filed for bottles, waters, juices, soft drinks, energy drinks and most interesting, for educational services. The design is pretty neat and gives us some clues about the line.

Based on Coca-Cola's press release, the bottles will be made, in part, from plants. Later this year, Dasani and vitmainwater will be the first beverages to use these bottles. It also looks like there will be an informational site: " Web-based communications will also highlight the bottles' environmental benefits," which is likely where the educational services claim is going to come from.


Yesterday, an application for
Whole Press Squeeze was filed for "
fruit drinks and fruit juices." I wonder if Whole Press Squeeze will be inside of a plant bottle?

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The Imagineers are at it Again

On June 15th, Disney Enterprises filed 5 applications for Where Style Meets Story. The merchandising runs the gamut - from jewelry to clothing to bags & backpacks as well as bed linens and appropriately enough, sewing supplies and hair accessories.

Any guesses out there as to what this tag line might belong to? Possibly the newest Disney movie, The Princess and the Frog? Or something entirely different?

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Wednesday, June 10, 2009

Facebook Getting into the Trademark Game

Jonathan Handel wrote an informative piece about Facebook's new User Name Rights policy. Check it out at The Huffington Post here.

To register your trademark with Facebook, click here. Be sure to have your registration number handy.

And, yes I practice what I preach - TradeMark Express has been registered.

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Tuesday, June 09, 2009

Swine Flu in the Trademark World

The swine flu is still making news around the world. Any hot button topic in the news is, more often than not, quickly followed by trademarks. Check out these H1N1-tinged filings:


On May 27th, this logo was filed for a t-shirt line







Sixteen days earlier, this mark was filed, also for clothing, though I can say right now the USPTO is going to take issue with the wording in the goods description area.


So who gets it? Swine Flu Sucks filed first BUT Swine Flu! has claimed a first use date of May 12th. I'll revisit these marks in a few months once the applications have been reviewed. The decisions made by the USPTO will make for an enlightening post, I think.

Also filed in May were two marks by the health care products company, Novartis for "vaccines for human use." Swinflunov and Swineflunov certainly imply that they're connected, somehow, to the swine flu.

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Sunday, June 07, 2009

NameMedia Partners with TradeMark Express

We here at TradeMark Express are pleased and excited to be offering premium domains through BuyDomain's premium domain name inventory. Check it out here. Read the press release at NameMedia's site here.

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Wednesday, June 03, 2009

Here Comes a New Font

On June 1st, Apple filed a Federal trademark for Menlo in International Class 9, specifically for "typeface fonts recorded on computer software." Typography fans are sure to be all over this whenever Apple decides to premiere it. MacNN noted that Apple also has a European Union filing for Menlo. A helpful comment on that post leads here.

I am not a typographic whiz at all. Anyone care to comment on how big a deal, if any, this is to the font world? Will it be the new standard? Or just one of many?

Recession Trademarks


You can always count on enterprising folks to take those proverbial lemons and turn them into lemonade, even in a recession. And with new enterprises come new trademarks. Check out the newest recession focused trademarks:

The Recession Cookbook

Anna Watson's blog The Recession Cookbook has been around since March 2nd of this year but on May 1st, she filed a trademark for the name for "on-line journals, namely blogs, featuring recipes and cooking tips." Congratulations Anna!


"you might be in a recession if..."

This future line of calendars was filed on April 15th aka Tax Day in the US. I'm betting that the applicant has plans for a more lighthearted, tongue in cheek take on the recession. And there's certainly nothing wrong with having a few laughs, especially when you're down.


The Great Recession

This play on the Great Depression was filed on April 6th for an eventual athletic apparel line.

Kudos to these enterprising folks and my best wishes for success!

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Tuesday, June 02, 2009

Filing a Trademark: Standard Characters vs Stylized/Logo

When filing a trademark, the USPTO gives you two options: Standard Characters or Specialized Form (Stylized and/or Design). Let's look at each one in detail and that should help you decide the best way to file for your mark.

As with any discussion about filing for a trademark, it is always assumed that you've done your due diligence and had comprehensive research conducted. That being said…

Standard Characters

This option is selected to register "word(s), letter(s), number(s), or any combination thereof, with no design element and when you are not claiming any particular font, style, size, or color, and absent any stylization or design element." In essence the USPTO is talking about plain text.

To qualify for this claim, the mark entered must fit within the standard character set. This includes letters and numbers but also some symbols, such as the ampersand (&), the dollar sign ($), the asterisk (*), etc.

To see the entire standard character set click here.

Special Form (Stylized and/or Design)

This option is selected to register marks that are "comprised of stylized word(s), letter(s), and or number(s), and/or a design element." For example, if your business name is shown in a certain font and that font is an important element to your overall brand, it might be a good idea to file it as such. This is also the selection you'll make if filing a logo/design. A logo can be filed on its own or with your name. If you're not sure if you should file your logo and name together or separate, read here.

Can you File for Both?

Technically, yes though not at the same time. Two separate applications (meaning double the fees) would have to be filed if you wanted to choose the standard characters and the special form.

Why Would I File for Both?

Most small business owners would not but as with anything in the trademark world it is going to depend on your overall plans for the brand. Let's say you have a name and a logo – easy enough, you use the special form. But let's assume that your name is going to be shown without the logo in a variety of fonts. Perhaps you have several product lines or your product line is geared towards different types of consumers and you have different font styles for each. Then it may be a good idea to also file the name as standard characters so as not to claim any one distinctive look to the mark but rather protect the name overall.

If you're not sure about how you should file, feel free to email me directly at Shannon@tmexpress.com.

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Monday, June 01, 2009

Trademark Monitoring


After you've had your trademark application filed, it's absolutely necessary that you monitor your trademark in some way. The USPTO does conduct a search of their own files so if someone does file for a Federal trademark after your registration it typically is rejected. However, relying on the USPTO to protect your trademark is a mistake for several reasons.

First and foremost, the USPTO is going to operate by their guidelines, which are strict to an extent. However, they may not be strict enough for your own liking. Let's look at a real life example:


• Norcross Safety Products has a registered Federal trademark for
Ladybug for "garden clogs and garden boots," which is in International Class 25, the clothing class

• TSP Fashion has a pending Federal trademark for
Lady B. for clothing of all types in International Class 25 and specifically mentioned "shoes, sandals and slippers"

On the surface they look different except in looking at the record for Lady B. you can see that there is also an inclusion of a design of a ladybug. Again, the names are different but the message of the name is similar as is the industry, namely clothing. This is not to say that the USPTO is wrong in not refusing Lady B's filing but it does prove my point.

Let's just assume that Norcross would take issue with this mark. Unless they're monitoring their mark in some way, Norcross would not have a clue that Lady B. is close to becoming registered.

Second, it can take the USPTO almost 6 months to conduct a search of their records. This means that a competitor can be using the same or similar name that whole time, which means you're likely losing customers and if so, you're definitely losing money.


Third, the USPTO only searches their records, which consist of the Federal trademarks. Yes, that's a large number of records however State trademarks are going to be relevant to your business as well.


Let's say your business primarily does business on the West Coast but you have plans to expand to the East Coast. A Federal trademark does give you the right to the entire country, however, if someone has a New York trademark you'll have new hurdles to deal with in expanding that can be time consuming and costly.


Those are three important reasons why monitoring your registered trademark is a necessary part of your business plan. There are a couple of different ways you can go about monitoring your mark – 1) hire a trademark monitoring service OR 2) have comprehensive trademark research conducted every 2-3 years.

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Trademark a Name and Logo: Together or Separate?


Trademarks can be names of products or services, logos, slogans, packaging and even sounds and smells. In essence, a trademark can be almost anything that is used to identify a particular product or service. Registering a trademark grants the owner exclusive rights to the mark within the specified industry. Of course, it's necessary to research the mark comprehensively prior to filing to ensure that there is no possibility of infringing upon another party.

Let's assume you've done your due diligence, had comprehensive research conducted and your name and logo are legally available. The next step is filing for a Federal trademark.


Now when it comes to filing, a big question is should the name and logo be filed together or separately?


This decision is going to depend on a number of circumstances, as with most things in the trademark world. Let's take some time to go through a few different scenarios:


1) Your comprehensive trademark research on the logo shows that it is legally available whereas the trademark research on the name shows a similar, not the same, name within a related, not the same, industry. Your trademark attorney may then advise you to file the name and logo together to ensure registration.


2) In showing your mark (e.g. advertising, web site, tags or labels, etc.), the logo is ALWAYS shown with the name but the name is sometimes shown without the logo. In this case, you may want to file two applications – the name and logo together AND the name alone.


3) The logo you're using is the crux of your brand and the name you're using is entirely descriptive of your goods/services. You may want to trademark your logo only OR trademark your logo alone AND trademark the name & logo together.


An important thing to keep in mind regardless of your particular situation is that whatever is filed with the USPTO is exactly how you should be using the mark. The USPTO wants to see your mark as you present it to your customers.

If you're not sure about your own name and logo, feel free to email me directly at Shannon@tmexpress.com.

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