Common Terms Used in Trademark Law?

It is not lost on us that discussing legal topics can be intimidating. To make matters worse each specialized area of law has their own terms of art. It is understandable that sometimes you may feel like you are reading a foreign language if you are unfamiliar with that area of law. So, we wanted to break down some common concepts or items used in trademark law to make this area a little more user friendly.

What is a Description of Goods or Services?

Goods are tangible products your customers purchase from you. Services are activities performed for the benefit of someone other than you or your company. Thus, a good would be a bicycle for sale. While the offering of bicycle repair is considered a service.

Why are the description of goods or services important? Because when you are filing a trademark application you must identify whether your trademark applies to a good, service, or both. Therefore, your description of goods and services must provide use identifications that are clear, with concise terms that the general public would easily understand and that accurately and completely describe your goods or services. You should avoid using vague terms that do not clearly identify recognizable goods or services. For example, you would want to describe your good or service as a “miscellaneous services.” If you used this type of language on your trademark application it could lead to denial.

What is Use in Commerce?

Use in commerce means you are using your trademark in the selling or transporting of your goods or services to out of state. For example, you might manufacture auto parts in Ohio and sell it to car dealerships in Michigan. Or you might provide IT services from your office in Texas to customer is California’s Silicon Valley.

The reason why use in commerce is important is because this is one of the filing basis you can use to submit for a trademark. The use in commerce basis requires you provide evidence that you’re using the trademark in commerce. You will need to submit a specimen showing how you use your trademark. You will also have to provide the dates when you first used your trademark anywhere and when you first used it in commerce. Then you will need to attest that all of the above information is true and correct via an affidavit or signed declaration.

What is First Use in Commerce?

The first use in commerce date is determine by when:

1)    The goods were first

a.     sold or transported, or

b.     the services were first rendered; under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress, and

2)    Such use was bona fide and in the ordinary course of trade.

Please note the date of “first use in commerce” is different from the date of first use. This distinction is important for trademark applications and in the event of any claims of infringement. The United States Patent and Trademark Office (USPTO) often views that only if a sale has taken place can that good or service be in actual use. Thus, the proof that a good or service has been sold and there has been a continuous attempt to sell such goods or services, should be sufficient to establish actual use of the mark.

What is a trademark drawing?

 A trademark drawing is the visual snapshot of your mark submitted with your application.

Two types:

    •    Standard Character Drawing – plain text only (no styling), offering maximum flexibility

    •    Special Form Drawing – includes logos, fonts, color, or design elements

Your drawing defines what the USPTO will protect—so make sure it accurately reflects your brand!

What is a Specimen?

A specimen is a sample of your trademark as used in commerce. It is real-life evidence of how you are actually using your trademark in the marketplace with the goods or services in your application or registration maintenance filing. Essentially, it is the representation that you put forth in commerce to connect the consumer with your goods or services you provide in connection with your trademark.

A specimen shows your trademark as actually used in commerce with your existing goods in a way that directly associates the trademark with the goods or services. Examples of a specimen of a “good” includes but is not limited to the product itself, labels, packaging, and e-commerce web pages where the good can be ordered. Examples of a specimen of “services” includes but is not limited to an advertisement, brochure, TV commercial, business card, website printout, or service vehicle, business signs, and promotional material showing your trademark used for the services.

Specimens are generally submitted to the USPTO electronically when filling for a trademark.  Therefore, specimen submissions whether physical or electronic should be photographs, scanned copies, screen captures, or printout of the physical specimen of use.

What is a Statement of Use?

 A statement of use (SOU) is a sworn declaration that you file with the U.S. Patent and Trademark Office (USPTO) where you attest to using the trademark commercially in interstate commerce. Therefore, the SOU serves as proof to the USPTO that your trademark has been used in connection with goods or services across state boundaries.

The Statement of Use requires enclosed fees, a sworn declaration, and at least one example of the trademark in use (aka specimen in use). The fee for an electronic SOU filing is $100. The fee for a paper filing is $200. There are also separate fees for each “class” of product or service connected with the trademark. An SOU must include a sworn statement affirming that the mark is in use that is typically signed by the owner but may be signed by the owner’s agents in certain limited situations. Specimens can include labels, tags, packaging, brochures, advertising materials, or other examples that demonstrate the mark’s actual use.

It is important to note that you do not need to file a Statement of use trademark applications require a Statement of if your application is based on actual use of the mark in commerce from the beginning. In this case, you would submit e/vidence of use with your initial application.

And that is where our law office comes in. If you have any questions on how to file a trademark application where it is on an in-use or intent-to-use basis we have you covered.  If you have any questions we are here to help.