Guide to trademarks in really plain English. Read it – if everything else fails.

Take your time to read this guide to trademarks. It will answer most of your questions about trademarks.

It’s always cool to own a property. But if the property is a trademark, it is even more exciting, isn’t it?

But do you really know what your trademark is? What you can trademark and what you can’t? What rights and power you get after registering your trademark?

If your answers are negative or you are bewildered when it comes to trademarks, keep reading. This guide to trademarks will help you clear up the confusions and get the answers in really plain English.

Do I have a trademark? What is my trademark?

In general sense, a brand name, a company name, products’ name, a logo or a slogan are considered as trademarks. These are obviously trademarks, but there’s a dealbreaker. In the absence of the dealbreaker, none of these are trademarks.

The dealbreaker is to put the trademark on actual goods and services.

In other words, a trademark is what you put on your products to identify them as yours and to make it easy for your customers to find them later. You may put your trademark on tags, labels, instruction manuals, containers, or on the packaging. A trademark is like a key word or a light-house, it eliminates the necessity of having to remember the company name that makes those products.

In case of a service, a trademark is what you put on your marketing materials, invoices, business card, brochures, photographs of business signage and billboards, and webpages (usually in the header).

So, your company name may or may not be your trademark. Your company name can be a trademark ONLY if it is used in the trading of your goods and services to identify them.

For example, your company name is Elite Apparatus Inc. and you think that your brand name is “ELITE APPARATUS” but you put this logo on your products instead of “Elite Apparatus Inc.” or “ELITE APPARATUS”.

So, your trademark is actually the logo not “Elite Apparatus Inc.” or “ELITE APPARATUS”.

You can find more information here:

• What is a trademark?

What should I trademark?

You spent countless times and lots of money to develop a brand name. You designed a unique and meaningful logo by trial and error. No doubt you want to protect it.

In order to protect the brand name and the logo, the first step is to make sure that you put (or plan to put) the exact brand name and the exact logo on your products & services.

In case you don’t want to put both the brand name and logo on your products, maybe because it becomes crowded or aesthetically unpleasant, your trademark will be the one you put on your products.

Let’s take an example: you sell different kitchen utensils including cold drinks, tea and coffee beans. Your brand name is “THE ABSOLUTE”. You use “THE ABSOLUTE COCOA” for your tea and coffee beans and “THE ABSOLUTE UTENSILS” for your kitchen utensils.

So, which one you should trademark?

You actually have two trademarks here –

1. “THE ABSOLUTE COCOA” for your tea and coffee beans, and
2. “THE ABSOLUTE UTENSILS” for your kitchen utensils.

Although “THE ABSOLUTE” is your brand name, since you don’t put it on your products, it’s not your trademark. An easy fix would be to put descriptive words, like “cocoa” and “utensils” in slightly smaller font and below the words “THE ABSOLUTE”. In this case, your trademark will remain “THE ABSOLUTE” since it is shown prominently and stands out. However, if both “THE ABSOLUTE” and “COCOA” or “UTENSILS” are the same size, then your trademarks will be “THE ABSOLUTE COCOA” and “THE ABSOLUTE UTENSILS” respectively.

Is it possible to file a “generic” trademark?

You have a trademark that you want to protect but you don’t know yet what you will sell under this trademark. Being in the product research stage, you are worried because the products you have chosen now may be replaced with others within a couple of months.

So, your desire is to simply register the trademark without defining any product to keep the brand name open so that you could use it for all products that you may theoretically produce.

But unfortunately, it is NOT possible.

A trademark is always filed for specific products and/or services. You can’t file a “generic” or “umbrella” trademark without identifying certain products and/or services in the application.

So, what should you do since you are unsure about your products?

Well, the general practice is to file the trademark for the most obvious products. Once you come up with different products, you can file for a new application for the same trademark for additional products. But every time, you have to make sure your trademark is registrable for the products you chose to file the trademark for.

For example, you came up with a coined name, DEMA, from the initials of your sons’ names, Dean and Mark. Although you don’t have any idea as to what you will be selling under this trademark, you want to protect the name so nobody else can use it in any way.

But unfortunately, you are not allowed to protect DEMA without identifying at least one product or service.

After researching an array of products, you are now inclined to sell shampoo, conditioner and other hair care products. At the same time, you are hoping to add kitchen utensils to your product line but that’s only a possibility.

Now, what will be your best course of action?

In your case, the best course of action will be to file a trademark application for DEMA for hair care products. Once you decide to add another category to your product line, such as kitchen utensils or supplements, file for another application for DEMA for the additional goods.

For a more in depth reading,

• I am an Amazon seller and I don’t know what products I will sell next year

Exclusive power over the trademark

A common misconception regarding the trademark registration is that it gives the owner an absolute power over the trademark. Unfortunately, this is not correct. Registration of a trademark does NOT give you exclusive power or monopoly over the trademark.

It may sound absurd but that’s the truth!

It obviously gives you the legal right and protection but legal rights are only limited to products and services that were included in your trademark application. Other people are allowed to use and register the exact trademark for completely different and unrelated goods and services.

Let’s say, my trademark CELULAP is registered in the US for clothing and footwear. You may also be able to register CELULAP for a completely different line of goods and services, such as, cosmetics, or consultancy services in the field of advertising as these are not related to clothing.

However, you cannot register a trademark for CELULAP for socks or hats as these are similar to clothing. Check:

• When I register a trademark for one type of goods or services, do I get exclusive rights to use that trademark for all goods and services?

Importance of selecting specific products and services

By this time, you already know why we have to choose specific goods and services while filing a trademark application.

Now, the question is whether you should select all the products that you are planning to sell because you don’t know which specific product(s) you will be selling in the future.

The answer is “yes” you can but it’s not advisable to include all products you are planning to sell.

It may sound tempting to include plenty of products in the trademark application to get maximum coverage. But in reality, it brings some long-run problems, such as –

a) It will lead to a longer registration process. This is the case especially with the US where using the trademark with the products and services is mandatory for registration. If you include goods which you are not going to sell in the near future you may delay the registration process. Your trademark will not register until you sell ALL the products listed in the application with the trademark on them (or until you delete those products that you decided not to sell).

For example, you sell WEEPAL branded cellphones in the US and you have the plan to sell watches sometimes in the future. In this case, while you can file your trademark application for both the cellphones and watches, your trademark will not register until you actively start selling your WEEPAL branded watches in the US.

So, the decision how many products to include is yours.

b) Adding too many products may lead to more objections. Your trademark may have good chances of achieving registration for certain goods and services, but it could be problematic for others. Your desire to add a range of products may trigger objections, even oppositions from 3rd parties.

Take a hypothetical example of one of our clients who filed an application for this logo for several categories of products including cosmetics, kitchen utensils, toys and clothing. We received a notice of opposition from the owner of  against the kitchen utensils class. If we hadn’t included the kitchen utensils in the first place, we would not have had this problem later.

c) Non-use Cancellation

If you do not use the mark on all the products that the mark was registered under, for a certain period of time, in many countries any interested party can file a Non-use Cancellation against your mark. If proved, the registration may be canceled for those products.

Also, if you are unable to file a mandatory affidavit of use 6 years after registration (in the US), your trademark will also be automatically cancelled.

How to select correct products and services

Now that you know that it’s important to select specific products and services in your trademark application and not been tempted to include a huge list of products that you may or may not offer in the future, it is time to learn how to select “CORRECT” products and services.

Here are some tips from the trademark point of view –

a) First and foremost: do the research. Determining the appropriate goods and services is equally important as selecting a great trademark. This is why you may like to start product research even before developing a trademark.

b) After brainstorming a few ideas, you may come up with a list of 10-15 products that you may possibly sell. These 10-15 products may belong to the same trademark class depending on their homogeneity or they could fall in 10-15 different trademark classes.

Each class of products and services comes with the Trademarks Office filing fees (government fees). The more classes you include, the higher the filing fees. This is another reason you may not want to include many classes in your application.

c) Based on your financial and other capabilities, you should develop a mini business plan and itemize the products you may be selling in the next 24 months.

d) Now you have the final list. This is the list of products that you would like to file your trademark application for.

It is perfectly normal to change your plan and line of business down the road. Admittedly you can’t change the goods and services that you initially included in your application, but you can always file for a new application for the same trademark for the additional goods and services. You can always delete unwanted goods and services from your existing trademark application though.

You may be thinking how on earth the giant retailers out there have only one trademark but selling thousands of products? You may be surprised but in fact, they have hundreds of trademarks to cover all of their products. For example, Walmart alone has more than 400 active trademarks.

In nutshell, you start trademarking with a narrow range of goods and expand it as you grow.

We invite you to check our articles on this topic:

• 11 Trademark Tips: how should I list products and services in my trademark application?
• What Every Business Should Know about Trademarks Registration?
• Why should I file my US trademark application in a single class?

 7. I know what my trademark will be and have decided which products to sell, what’s next?

Once you determine potential product(s) that you plan to sell under your trademark, the next step is to do a trademark search; in other words, to make sure that your trademark can be registered for the products that you’ve selected.

What a trademark search does is that it reveals the possible threats that could hinder the registration of your mark.

Please read this article about the importance of trademark searches:

• Why conduct a trademark search?

It’s worth remembering that only an expert in trademarks can help you to identify the threats. Because while the existence of a similar mark may suggest a possible problem, it may not be one in reality and vice versa. Similarly, you may think changing the spelling of a trademark makes it different from the previous similar marks, but actually, it does not.

Take an example from one of our clients who applied for “RAY’S TOYS” in the games and toys category. It was refused registration on “confusion ground” because of “RAY’S FIRE STATION” for similar products as our client’s. Since “TOYS” is a descriptive word, the only strong word in the proposed mark is “RAY’S” which is the same as the registered mark’s first part.

You can learn more from here:

• What are confusingly similar trademarks?

 8. Useful Links:

a) Why do you need to bother about a trademark? Read about the benefits of trademark registration in this post:

• What are the benefits of registering a trademark?

b) Watch this cartoon to get some idea on

• How to select a GREAT TRADEMARK for your business

c) You developed a brand name but not sure if it’s unique enough?

• What is a distinctive trademark?

Or perhaps you are concerned that your trademark may be weak or descriptive?

• What are clearly descriptive trademarks?

d) Would you like to file for a trademark which is dead now? Check out this to get your answer:

• Can I use a trademark if it has been cancelled, abandoned or expunged?

e) You have a nice brand name, a unique logo and a catchy tagline. Are you wondering how to protect them? This post is for you:

• Should I file my different trademarks separately?

f) Not all trademarks are registrable. Check out this short cartoon:

• What kinds of trademarks aren’t registrable? and read this article
• When should I not file a trademark?

g) An important reading:

• How not to invalidate your trademark: proper trademark usage rules

h) Are you unsure when and how to put trademark symbols? Check this cartoon:

• When and how can I use my trademark symbols?

Glossary:

Trademark classes:

All goods and services are categorized into 45 classes according to their homogeneity. These classes are not the same as the product categories on Amazon.

For example, “Pet supplies” on Amazon can fall into multiple trademark classes, like, class 5 for pet supplements, class 18 for pet clothing, class 31 for pet foods, class 20 for pet beds and so on.

If you want to learn more, please read this post:

• Taking Advantage of the Trademark Classification & the Trademark Class Systems

Government fees:

Each trademark class comes with a govt. filing fees. In the majority of countries, govt. fees are paid for each class of goods and services. Check out:

• What are government filing fees?
• Will the Trademark Office refund the government fees if my trademark is refused?

These fees go straight to the trademark office, hence there’s usually no refund for them.

Approximate timeline for registration

US: Usually 8 – 10 months; longer if there are any office actions (objections from the Trademarks Office).

UK: 3 – 3.5 months.

EU: 4 – 5 months (with Fast-track examination).

Canada: Usually 18-20 months; longer if there are any office actions.

Australia: 8 – 10 months.

Germany: 1 – 3 months; 10 days to 3-4 weeks with an accelerated examination request.

China: 12 months.

India: 12 months.

Mexico: 4-8 months.

Check this post for more details:

• How long does it take to register a trademark?

Statement of Use

In the US, a trademark application can be filed on several bases. Two of them are very popular: “actual use”, aka applicant already sells its own branded products in the US or “intent to use” basis, aka future sales in the US.

If the applicant is yet to use the mark in the US, the application needs to be filed based on the “intent to use” basis. But as the trademark won’t registered until it is used in the US, we have to change the basis from “Intent to use” to “actual use” later down the road. To do this, we have to file a Statement of Use and submit relevant proofs of use, otherwise known as “Specimens of Use”.

Read these posts to learn more:

• What is a Statement of Use in a trademark application?

In many other countries where we file statements of use are not required, US being unique in this case.

Specimens of use

“Specimens of use” show how you use the mark in association with your products & services.

Examples of acceptable specimen of use for products are:

1. Photographs, labels, tags, instruction manuals showing the trademark on the actual goods or on the packaging.
2. Webpages that contain the mark and a photo or description of the products and the means to purchase the products.
3. For clothing product – hang tags, collar tags, inside labels or on the breast area (for t-shirts) or inside of a cap.
4. The followings are not acceptable specimen of use for products: handbills, business card, advertising circulars, leaflets, flyers and other advertising materials.

Examples of acceptable specimen of use for services are:

1. Photographs of business signage and billboards, brochures, advertising and marketing materials, invoices, business cards etc.
2. Webpages that show a direct link between your trademark and the services offered under the trademark

An important note: Photos taken of your trademarked goods or services should not be digitally edited or have filters applied to them. The Trademarks Office will reject specimens of use that have been altered using a computer program. In fact, something as simple as a photo taken with a mobile phone can suffice.

If you’re unsure about which specimens of use are acceptable, or you’d like to know what they constitute, please check the following links:

• What is a specimen of use?
• When do you need to submit specimens of use? and
• How do I find an acceptable specimen of use?

6. What does registration process look in different countries? Why is it important to file in other countires?

Check these links:

• What is the Canadian trademark registration process?
• Steps to US trademark registration
• Please explain trademark registration process in Mexico
• UK Trademark registration process
• Trademark registration in Australia: how to register a trademark in Australia?
• Trademark Registration Process in Germany?
• Please explain trademark registration process in China.
• Why you should file your trademark in China now?