Important Terms to Know while Filing Trademark Application (Part-I)

Intending to create a unique identity of your product (s), then the best way to achieve this is by filing trademarks.  A trademark, trade mark, or trade-mark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity, trademarks are often displayed on company buildings.  Filing Trademark

A trademark application is a legal and structured document that requires adequate acquaintances with the trademark regulatory norms and clear cut understanding of the lexicons that are being used in a trademark application. It is important to know detailed meanings of these lexicons so that they can be used appropriately in a trademark document. With this article, we came up with some important terms that can help people get acquainted with a trademark application.  Filing Trademark

Important Terms generally used while Filing Trademark Application

USPTO- The term USPTO is the acronym for ‘United States Patent and Trademark Office’ a federal organization that handles trademark related affairs in the United States. The United States Patent and Trademark Office (USPTO) is the federal agency for granting U.S. patents and registering trademarks. In doing this, the USPTO fulfills the mandate of Article I, Section 8, Clause 8, of the Constitution that the legislative branch “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.  Filing Trademark

Trademark- A trademark is a symbol, word, or words legally registered or established by use as representing a company or product. This symbol can be used on trademarks covering products that fall into various classes ranging from 01-34. Once acquired, a trade-mark can last indefinitely as long as you renew it every 10 years.

Service mark- A service mark is a trademark used in the United States and several other countries to identify a service rather than a product. When a service mark is federally registered, the standard registration symbol ® is used to distinguish the source of the service from competitors.   Filing Trademark

Class Codes- Most countries have adopted the “Nice International” class code system, in which all products and services are divided, for trademark registration purposes.  There are 34 classes to cover products (classes 01-34). There are 11 classes to cover services (classes 35-45).

Trade Name- A trade name is NOT the same thing as a trademark. A trade name is actually the term given to a legal business entity “doing business as” (dba). The practical function of registering a trade name is primarily for administrative and accounting purposes, such as filing a corporate tax return with the IRS, separate from your personal income tax return.  Filing Trademark

Intent To Use (ITU)- An Intent-To-Use (ITU) trademark application allows an applicant to apply for a trademark that has not yet been used in commerce. However, until you can show actual use of your mark in the marketplace with specific goods and/or services you will not be able to register your mark. In other words, you will not be able to register your mark unless and until you acceptably and timely convert your ITU application to one based on use in commerce. 

Statement of Use (SOU)- Eventually an ITU must be used in commerce and a “Statement to Allege Use” must be filed and must include a date of first use and a sample showing the mark in use in commerce. It is an official notification based on the review of the application by the USPTO examining attorney, generally requesting some type of additional or restated information, or even a refusal to register the mark.

This is the first part of this article and with the 2nd part we will be coming up with some more terms pertaining to filing trademark.

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