Applying for and Registering Trademarks - Without an Attorney

1. Introduction Video 101-1: Welcome to the platform. We are a community focused on trademarks, entrepreneurship, and branding. There are three sections to the platform. The first part is trademarks, one-on-one. This section gives you the basics on how to approach marketing, branding, and selecting the perfect trademark, and how to avoid common intellectual property pitfalls in the process. The second part is trademarks one O2. This section is for when you're ready to file for a federal trademark. It provides step-by-step instructional videos and guidance on filing your entire trademark application. United States Patent and Trademark Office, or USPTO. The third part is trademarks 123. This section provides guidance on how to respond to the USPTO. Most applicants receive responses from the USPTO, known as office actions, which are formal written letters or the receive examiners amendments, which are in formal ways to fix issues with your application. These videos cut through the legal jargon so that you respond to these correspondences with competence. 2. What is a Trademark? 101-2: We hear the word trademark thrown around a lot. But what exactly is it? Puts simply, trademarks are words, logos, or designs that help consumers identify the source of a product or service. So what does that actually mean? Well, what do you think of when you see the golden arches on the highway? You think of McDonald's, right? Well, that M is actually a trademark. That M helps you identify McDonald's as a source of restaurants services, hamburgers, and french fries. A registered trademark helps protect you from other companies infringing on your brand by using similar words or logos that might confuse consumers as the source of your goods and services. It also represents the bulk of the value of a company's intangible assets. With McDonald's brand value measured at $155 billion. You can see the importance of protecting your brand through trademarks. Let's say another burger restaurants store not affiliated with McDonald's starts using a highly similar large yellow M. You can see why consumers might get confused and did thinking they're entering an actual McDonald's and will be disappointed when they soon learn that they were duped. Registering trademarks helps to prevent this confusion so that consumers will only associate your trademarks with your products and services. Or let's say you're a barber with a certain logo on your store. You've developed a great reputation as a high-quality Barbara for decades in your town. Then you find out another person opened a barber shop nearby and is advertising the same logo. Customer strep confusing that bad business with your business. Then they even start writing negative online reviews about your company. As a result, fair to you or your customers. You can avoid these scenarios by filing for a federal trademark. Registering your trademark not only adds value to your brand, but it helps prevent competitors from using your trademark and devaluing your brands. 3. When should I register for a federal trademark? 101-3: A common question for entrepreneurs is, when should I register a trademark? Let's look at five key points to consider. First, you should register a federal trademark when you want to protect the goodwill of your brand. Small business owners spent hard earned money building a brand. By registering your trademark with the United States Patent and Trademark Office, you can protect your companies goodwill from potential infringers. Specifically, you can bring a lawsuit for trademark infringement into federal court. Or you can send a cease and desist letter indicating that you have federal rights to your trademark. By not protecting themselves with the Federal trademark, you risk other companies using a trademark that is identical or highly similar to yours. In certain instances, other companies may argue that you are infringing on their trademark rights, especially if they file for a federal trademark. Before you do federal trademark registration allows brand protection for your trademark across the entire United States. So you should first consider whether there is a trademark, whether be accompanies name and expression, or even a logo that you believe promotes or will one day establish brand value. Which brings us to the second consideration. Once you decide that you want to trademark, when should someone register? Well, there are two ways to register your trademark. When you already are selling products or providing services with the trademark, or when you intend to sell products, provide services with the trademark. The first option means you've already begun using the trademark with your products or services. E.g. you may already have sold t-shirts, are provided bakery services with that trademark. The second option means you have a bona fide intent to sell a product or provide services with a trademark. This means you are making a sworn statement that you have true intent to use a trademark to sell products or provide services with a trademark. The third key point, you'll want to file as soon as possible, even if you're not already using the trademark. Let's say you are planning to use a trademark, but are not yet selling or providing products or services. If you apply for a federal trademark under one b basis, you can get priority date of the date you submitted your application. This priority date is important because it is in nationwide effect and provides notice to others about the trademark. So let's say you have filed a 1-bit trademark application on January 1st. You will eventually provide evidence to the USPTO that you're using a trademark in business, but you won't have to provide evidence in your initial application. Then let's say you start using your trademark in business on June 1st and submit proof to the USPTO on June 1st, then your trademark is registered on the Principal Register on August 1. When your trademark registers legally, your trademark will be treated as if you had used that trademark and business on January 1st. Let's also use an example of how the state establishes your priority to the legal rights of your trademark. Suppose on January 1st, you file the trademark, moon Stuckey for balloons as a 1D application. If another company on January 2 starts using that same trademark with similar goods, you will have party to the rights of that trademark when it registers on the Principal Register with that January 1 priority date. So even though you weren't actually selling your balloons with your trademark on January 1, law will still treat it as if you were four priority purposes. The fourth key point, you should file for a federal trademark after conducting your due diligence. You want to conduct due diligence before spending money on the federal registration. For instance, the USPTO has a database, but lets you search for similar pending or registered trademarks. We also have a video on how to search for direct hits. While a direct hit search isn't exhaustive, it will provide you with any clear examples of similar trademarks. Video five teaches you how to do a direct hit search on the USPTO database. By conducting due diligence, you develop a better understanding of whether your mark will be registered by the USPTO. A fifth point, filing after making a business and personal decision. Filing for a federal trademark is a business, legal and personal decision. It also involves weighing the potential legal and business risks of not filing for a trademark and the impact of not doing so on your brand value. Ultimately, you want to think a great deal about the brand of your business and spend considerable thought on what names, logos, or designs you want associated with that brand. Maybe you hire an artist to help you with a certain logo or workshop names for a company with friends, family, and even focus groups. Remember that this trademark is a long-term decision. You want to make sure you love the name or logo. 4. The 5 TYPES of Trademarks 101-4: Did you know that there are five types of trademarks? Trademarks fall into one of five categories. Generic, descriptive, suggestive, fanciful, and arbitrary. Let's use example to understand each of these categories. We'll start with generic trademarks. Suppose I'm selling candy, and I want my trademark to be candy. This won't be acceptable as a trademark because candy is just the commonly understood name of what I'm selling. The reason generic trademarks can never be registered has to do with the purpose of trademarks. We registered trademarks to prevent other companies from profiting off our hard earned brand. It wouldn't make sense to allow people to register for generic trademarks because everyone in the candy industry needs to be able to use the word candy in advertising materials. The second category is descriptive marks. Descriptive trademarks describe an ingredient, quality, characteristic, function, feature, purpose, or use of what I'm selling. So let's say I'm selling candy and I want my trademark to be sugar. This would be a descriptive mark because sugar is an ingredient in candy. These trademarks are unlikely to get registered though on the Principal Register because they merely describe what you're selling. Unless you can show that your trademark has been in use for the past five years and is widely known to the public. The third category is suggestive trademarks. Suggestive marks hint at what you're selling, but doesn't actually describe what you're selling. Another way to think of this is the trademark takes some imagination for consumers to understand what you're selling. An example of a suggestive trademark for candy is Almond Joy. These words hint at what you might be selling, like candy, but it takes some imagination to get there. The fourth category is arbitrary trademarks. This is a trademark that may have a common understanding for another product or service, but doesn't relate to what you're selling. An example of an arbitrary mark is boat. For selling candy. Boat would be generic if you're selling boats, but has no meaning in relation to candy. Finally, the fifth category is fanciful trademarks. The best way to think of these trademarks is that they have no meaning. An example of this would be Mackey for Candy. Since can Mackey is a made-up word, has no meaning in any language. It's considered fanciful. It because fanciful trademarks are so unique, they are entitled to the strongest level of protection against possible infringers. 5. How to Conduct a Federal Direct Hit Trademark Search 101-5: In this video, we're going to explore how to conduct a direct hit search of the federal database of trademarks in the United States Patent and Trademark Office, or USPTO. But before you conduct your direct hit search, you need to understand why we conduct searches. One of the most common refusals for trademarks is a section 2D likelihood of confusion refusal. A section 2D likelihood of confusion refusal is issued when there is already a registered trademark on the register that the USPTO argues is confusingly similar to your trademark, such as a consumer would get confused. We're now going to walk through how the USPTO decides to issue a section 2D likelihood of confusion refusal. Why? Because we need to understand this process in order to understand how to search for confusingly similar marks on the federal database. There are two parts to this section, 2D likelihood of confusion determination. The USPTO first considers the similarity of marks themselves. There are many ways that trademarks can be similar. They could be identical, such as monotropism versus Sinatra, or they could be phonetic equivalents. Trademarks can also be found to be similar when even though they might not look or sound the same, they create the same meaning to the consumer. An example of this is to cats versus dose. Got those. These trademarks look and sound different, but they have the same meaning. Many consumers will see dose galactose and immediately think of the meaning of two cats. So when we're considering similarly confusing trademarks, we have to keep in mind that there are many ways trademarks can be similar. They might be identical, they might be phonetic equivalents, or they might, through a combination of ways, convey the same meaning. The USPTO than considers the similarity of the products and services between the trademarks. It's not enough just for the trademarks to be similar. They also have to be selling or providing related goods and or services. So let's use an example. Let's say we are considering the trademark of KT shenanigans versus cat shenanigans. The marks are similar because they convey a similar meaning. But what if the trademark Katie shenanigans is for kitty litter? And the trademark cat shenanigans is for website development services. Buying kitty litter feels very different from buying website development services. If I'm buying kitty litter, I'm going towards a very specific aisle at a grocery store. Whereas if I'm looking for someone to help me build a website, I most likely looking online or referrals from friends. It's very difficult to imagine a company that provides both kitty litter and website development services. Even though trademarks seems similar in the first step, it would fail the second step because the goods and services aren't related. Let's use another example with the same trademarks. But kitty shenanigans is for t-shirts, and cat shenanigans is for jewelry. Or t-shirts confusingly similar to jewelry to cause confusion. The best way to check is to use Google. If you Google jewelry and t-shirts, do you see a good deal of companies that provide both? The answer is yes. In fact, a ton of clothing brands also provide jewelry. So consumers that are shopping for clothing will very likely also come across jewelry and that same store. In that case, the trademarks of kitty shenanigans and cat shenanigans are confusingly similar and the goods are related. So now that you have a better idea of how the USPTO determines section 2D refusal for likelihood of confusion. You might be wondering, how do I conduct direct hits for trademarks? When you click on the link below, it should bring you to the USPTO search database. Make sure the combined wordmark is selected below. For a direct hit searches, we should be considering identical wording, phonetically similar trademarks and words that convey similar commercial impression. So let's use an example. Suppose my mark is McDonald's. I would do a direct hit search of spelling. Asterix, McDonald's. Asterisk or the star symbol means the system would also pick up on letters to the left or the right of the word, such as McDonald's. Now I see the total results listed here. The column to the right says whether the mark is live, which means it is either a registered federal trademark or pending, or it could be dead, which means it's no longer a valid application or registration within the USPTO. So I'm going to ignore any of the trademarks that say dead. If there is a registration number, that means that the trademark has been registered. Now you can click on an individual application to see more detail about the application. So if my trademark is McDonald's, I'm selling toys than this application would likely become a problem if it becomes federally registered. But if I'm selling kitty litter or something totally unrelated, there was a less likelihood that this trademark will be a problem for me. Next, you want to consider phonetic equivalent trademarks. Here. Take a look at a trademark and think of all the phonetic equivalents. For instance, if my mark is McDonald's, I would search McDonald's and the other potential phonetic equivalents of that trademark. What about a direct hit for a phrase? Well, let's try just do it. For an identical hit search. You want to search in quotes. Just do it. As you can see, the total results are listed here. Now you also want to search for trademarks that have the same commercial impression. So think about the different ways your trademark can be similar to other trademarks. For instance, if I had the trademark chicken monster, I'd also consider searching boil monster since they have similar meanings. When you consider that boil means chicken in Spanish. Or let's say I'm selling t-shirts and my trademark is mad do well, I can see another trademark that is mad do t-shirts. For t-shirts. Here, the marks are not identical, but the other trademark has the extra word of t-shirts. But since T-shirts is simply the generic word for what I'm selling, does t-shirts word in the other trademark make the mark less confusing? No. This would be a problematic trademark. As a recap, when conducting a direct hit search for federal trademarks, you'll wanna go to this website and search for identical words, phonetically, similar words, and words have the same commercial impression. When you were looking at the results, you want to consider the similarity of the marks themselves, as well as the similarity of goods and services. And remember that dead in the right column means that the trademark is not registered or appending. There are many variables and considerations that go into how the USPTO comprehensively searches its database of over 2 million federally registered trademarks. But by performing a basic federal search with the tools and approach provided in this video, you should be able to find potential identical, phonetically similar, or even marks with similar commercial impressions. 6. What happens if you don't register a trademark? 101-6: Many entrepreneurs ask what happens if I don't register my trademark? Some companies choose to not registered for a trademark. Companies are not required to have a federally registered trademark, but they will lose significant benefits and protections if they do not register. Here are five important considerations on what can occur when you don't file for a federal trademark. First, you won't have broad trademark protection. A federally registered trademark provides you with trademark protection across the entire United States. By not registering for a federal trademark, companies have limited trademark rights, known as common-law rights, which provide narrow protection only in a small area in which you have conducted business. Second, you will not have the ability to sue in federal court for trademark infringement. Third, you might be accused of trademark infringement. Nobody wants to receive a cease and desist letter or worse, go to court for trademark infringement, but not registering for a federal trademark. However, you do not have legal presumption of the validity and ownership of your trademark or the exclusive right to use your trademark nationwide. Therefore, you are more vulnerable to other companies claiming that you have infringed on their trademark rights forth. You cannot use the registered trademark symbol. In addition to receiving a registration certificate from the USPTO, owners of federally registered trademarks have the right to use the trademark registration symbol. If you do not have a federally registered trademark, you can not use the symbol. The registered trademark symbol allows consumers to know that the trademark is federally registered. It means that the owner of the mark has all the benefits of federal trademark protection, including legal presumption of validity and ownership of the trademark or service mark, the exclusive right to use the trademark or service mark nationwide, and the ability to sue in federal court for trademark infringement. 7. Amazon Brand Registry - 5 Things to Know 101-7: The Amazon Brand Registry has a lot of benefits for entrepreneurs and small businesses. It gives you greater control over how your product information appears on your page. It keeps other companies from using your logo or brand name. And it gives you access to more marketing opportunities like sponsored brands. But before you get all these benefits, you need to successfully meet all the requirements for the Amazon Brand Registry. One requirement for the Amazon Brand Registry is that you need to have a registered or pending application for a federal trademark. Here are five things to keep in mind if you are considering signing up for the Brand Registry. First, you should apply to the Brand Registry if you are serious about protecting your brand. Let's say you have a clothing brand company called Zulus, that you've invested your blood, sweat, and tears into. You have a loyal customer base and they come to your store because it is known for high-quality clothing. Then another company called Zulus opens up across the street with super low quality clothing. Customers start getting the businesses confused. And now we're complaining to you about low-quality clothing, even though you have nothing to do with the other company. This is clearly unfair. Nobody should be able to open up a store and take all of your companies goodwill. Well, the online space is no different. The Amazon Brand Registry allows protections so that other companies can't use your business name or logo to confuse customers. Second, you can apply if you have a registered or pending federal trademark application. In the US, Federal trademark applications usually take 8-10 months to become registered. Luckily, you don't have to wait that long. Amazon allows you to apply for Brand Registry as long as you have a pending federal trademark application. Third, at the United States Patent and Trademark Office, or USPTO, you will need to show proof that your company is in business in order to get a registered trademark. The USPTO calls this a specimen. Some people use their Amazon page as a way to provide this proof. Well, you can apply for a federal trademark under an intent to use basis, which means you have a genuine intent to use the trademark in business, but are not yet doing so. You will have to eventually provide proof of your trademark in business in order to get the federally registered trademark forth, you may or may not be required to have an attorney filed a federal trademark on your behalf, the USPTO. If you're domiciled in the United States, you do not need to file your trademark with an attorney, although you can choose to do so. What does domiciled mean for an individual? A domicile is the place the person resides and intends to be the person's principal home. For a legal entity like an LLC, the domicile is its principal place of business or headquarters where the entity is senior executives are officers, ordinarily direct and control the entities activities. For people or companies not domiciled than us. You will need to hire an attorney to submit your application to the USPTO. Fifth, you will receive a registration certificate from the USPTO when you successfully registered for our federal trademark. If you're ready to take your business to the next level and protect your brand. Filing for a registered trademark and applying for Amazon Brand Registry is a smart and strategic move. 8. How to pick the perfect brand name 101-8: Katy Perry, Olivia Wilde, Elton John, Little. All these celebrities have in common. Well, they've all changed their names. Katy Perry was born. Catherine Elizabeth Hudson. Olivia Wilde was born. Olivia Jane Cockburn. And Elton John was born Reginald Kenneth Dwight. One celebrities change their name. What they're really doing is re-branding. Maybe they're old name was dull, or maybe it was already used by another famous person. They want to make sure that it provides the right image or meaning and it's already not taken. Similarly, when you choose a trademark, you were choosing one of the most important aspects of your brand. You want to make sure it conveys the right image or meaning for your brand. In trademark law, we call that commercial impression. Ask yourself, what will the average consumer think when they see your trademark? You also want to make sure nobody is already using your trademark. Here are some key considerations. Number one, you want to consider how strong you want your trademark protection to be. Video 4s, the five types of trademarks teach you about the strength of different types of trademarks, including fanciful, arbitrary, suggestive, descriptive, engineering. Danceable trademarks are words that are made up and have no meaning, like Kodak. Fanciful marks have the strongest form of protection for trademarks. So if I'm looking for the strongest form of a trademark protection, I might consider a trademark that would be considered fanciful. Number two, you want to make sure your trademark is not already used. Some ways to do this include Googling new trademark and searching for your trademark on the Federal trademark register at the United States Patent and Trademark Office. You can review the video on doing a basic self search on the United States Patent and Trademark Office database for similar trademarks that are registered appending. Number three, you'll want to consider conducting consumer studies. It is very easy for small business owners to get tunnel vision about their trademark. But sometimes we fall in love too quickly with our first thoughts on trademarks. You should be asking consumers or potential consumers and strangers what they really think of this trademark. This doesn't have to be an overly complicated process, but you should get comfortable getting honest feedback from people. Number four, you want to think about the future of your brand. A trademark is a long-term decision, maybe only selling shirts right now. But your goal might be developing a much larger empire, a selling luggage, jewelry, and household accessories. You should be thinking about short-term goals of trademark protection and how this fits into your potential expansions and future portfolios is the trademark you are considering, something that could be applied to all of your future goods and services or with a trademark only work for some of your goods and services. Number five, you'll want to consider domain name availability. So much of our business is done online. You should consider whether the.com is available for your trademark. You consider even buying other extensions like dotnet. You'll want to avoid cyber squatters pouncing on other extensions. As you can see, begging a trademark is an important business, legal and personal decision for your brand. 9. What is the difference between a trademark and a service mark? 101-9: A common question for entrepreneurs is, what's the difference between a trademark and service mark? So trademarks are words, logos, phrases, or designs that help consumers identify the source of a product or service. Technically, trademarks refer towards logos, phrases, or designs that help consumers identify the source of a product. But it is commonly accepted that trademarks identify sources of products or services. Service marks, on the other hand, are logos, phrases, or symbols that help consumers identify the source of a service. They do not refer to products. E.g. let's say Dr. Jen opens a small dermatology practice. She could use a service mark of derma power to describe her dermatology services. And since it's commonly accepted that trademarks identify sources of products or services. She could also refer to derma power as a trademark for her dermatology services. Now, suppose Dr. Tim cell skincare products. He could use a trademark of wow term to describe these products. That he would not use a service mark in this case because he's only describing products and not describing services. So why do we care about the difference? Well, a lot of companies use the TM or SM designation in connection with their trademark or service marks. Before they become federally registered. Then once the trademark or service mark is registered, they would remove the TM or SM designation and replace it with the registered, our symbol. As background. Tm refers to a trademark, which technically refers to products, but it is actually commonly used to describe both products and services. As some refers to a service mark and only refers to services. Let's say Dr. Jen has applied for federal trademark registration, but it hasn't registered yet. Because she can't use the registered symbol yet, she would have to decide whether to use the TM or SM symbol. So if Dr. Jen is using derma power in connection with their dermatology services. She could use the TM or SM symbol. She could use the TM symbol, but the TM symbol is often used to describe products or services. Or she could use the same symbol because she is using derma power in connection with dermatology services. Let's go back to Dr. Tim using wow term in connection with his skin care products. In that case, he could use the TM symbol because the TM symbol commonly applies to either products or services. And he's selling products. But he would not use the SM symbol because S M symbol only applies to services. And here he is only selling products. To recap, unregistered trademarks designated by the TM symbol are commonly understood to refer to either products or services. On the other hand, unregistered service marks that are designated by the S M symbol, referred to just services. 10. When to use the TM, SM or R symbol 101-10: A common question for entrepreneurs is, when can I use the TAM, SAM, or registered trademark symbol? Well, let's begin with the purpose behind these three symbols. Businesses often use the TM or SM symbols to let others know that they are using particular words. Logos, phrases, or designs is a trademark and service mark. In other words, they are purposely using these words, logos, phrases, or designs as a source identifier. Goods and services. Tm refers to the trademark and S M prefers to a service mark. Trademarks are generally used to refer to goods or services, whereas service marks only refer to providing services. The TM or S M symbol is often used when a company has applied for federal trademark, but it is not yet been registered. It provides notice to others that the company is using a trademark or service mark. Then if the company successfully registered the trademark or service mark with the USPTO and receives federal trademark protection. The TM or SM will be replaced with a registered trademark symbol. Unlike the TM or SM symbol, the registered trademark symbol allows consumers to know the trademark is federally registered. So to recap, here are three important things to keep in mind about TM, SM and the registered trademark symbols. Number one, you can use the TM or SM symbols to let others know that you are using particular words, logos, phrases, or designs as an unregistered trademark. A registered trademark symbol means that you are using particular words, logos, phrases, or designs as a registered trademark. Number two, you cannot use the R symbol if your trademark is not registered. This could actually be considered fraud. If you're misuse of the registered symbol is found to be deliberate and intended to mislead the public or consumers. Number three, I'm registered trademarks or service marks designated by the TM or SM symbol come with different legal rights than a trademark that is federally registered, designated by the registration trademark symbol. The scope of legal protection for unregistered trademarks or service marks. It's quite narrow. Only provides limited common law rights, which means that you might be able to retain narrow trademark protection in a limited geographic area. On the other hand, the scope of legal protection for registered trademarks is much broader. Only registered trademarks indicated by a registered trademark symbol provide federal protection across all 50 states for your trademark. As you can see, it is important to keep in mind the purpose behind each symbol and to be careful to use the correct symbol for your particular situation. 11. Why Twitter Handles are crucial for trademark owners 101-11: A strong online presence is a must for most businesses. For many companies, Twitter is an important part of the overall marketing strategy. That's why it's important to understand how Twitter policies and your marketing strategy may be influenced by whether or not you have a federally registered trademark. By having a federally registered trademark, you can actually reclaim your Twitter handle if it's being held up by a Twitter squatter or infringer. Let me explain. Twitter's policies prohibit people from using your federally registered trademark as a handle if it is being used to confuse consumers. Specifically, the trademark policy states that using a company or business name, logo, or other trademark protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation. Let's break that down. Let's say I have the trademark macro tie for clothing. And I say that there is someone using the Twitter handle at macro tie that is posting about close. It's pretty clear that this person is using this handle in a way that is going to confuse my customers with a federally registered trademark. I can then file a trademark issue report with Twitter at helped.twitter.com slash forums slash trademark. You must have a federally registered trademark in order to file this report. As a real life example, a Twitter user had the handle at Chase and retweeted unfavorable comments about JPMorgan. Banking company filed a complaint. And Twitter agreed that the user with the app chase Handel, was violating the Twitter trademark policies. This is possible because JP Morgan had the Federal trademark rights to at Chase. So as a part of your marketing plan, keep in mind your goals for using Twitter and how federally registered trademark might be needed in order to thwart OFF potential squatters and infringers. 12. Why Lebron James' "TACO TUESDAY" Application Failed (AKA Why some trademarks "Fail to Function) 101-: In 2019, LeBron James filed for the trademark Taco Tuesday, for a variety of goods and services. This application was rejected by the USPTO because it failed to function. Specifically. It failed to function because the USPTO determined that Taco Tuesday was a commonplace message. So why does the USPTO reject trademarks like Taco Tuesday? That conveys a commonplace message. Well, remember the purpose of a trademark is to be a source identifier of goods and services. Trademarks differentiate your brand from other brands. But when words or a slogan are so widely used or commonplace, consumers no longer associate the words are slogans as a trademark. Instead, they'll just view these words as a common expression they encounter often. For instance, customers frequently encountered the words Taco Tuesday, whether at a restaurant, a fundraiser, or in entertainment event. Here, the USPTO argued that the wording Taco Tuesday is a widely used message used by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday. No luck for LeBron James, his trademark application. Ultimately, most abandon. Trademarks can feel the function for other reasons to trademarks can also feel the function when it is just providing general information about goods and services. Let's say I'm selling plates and I apply for a trademark with the word fragile. When you see the word fragile, would you think of a brand? Probably not. Right. You just think of many businesses who put the word fragile to warn you or describe the goods are delicate. And that way it's not functioning as a trademark because it's just providing general information about your goods. Trademarks also failed to function if it is a direct quote, passage or citation to a religious text. So keep this in mind. As you are applying for a trademark, you want to ask yourself, is my wording or slogan a source identifier of my goods and services. 13. How Tom Brady Totally Botched his Trademark Application - 101-13: Let's talk about how Tom Brady totally botched his trademark application and how you can learn from his mistake. This is a lesson for all applicants that you have to be truthful and all of your answers in the trademark application. The reason is that not being honest can compromise your entire application. When you submit trademark applications, you are actually submitting sworn verified statements. This means you are swearing that you are telling the truth to the federal government. Let's say a competitor wants your trademark and they find out you lied about something in your application. If they find out one of your statements were false, they will have grounds to try to invalidate your entire application. So let's examine Tom Brady's blunder. Last year. Tom Brady registered for the trademark Tom terrific. This caused an uproar with Mets fans, as Tom terrific refers to Tom CVA, a legendary Mets baseball player. After this backlash, Tom Brady quickly tried to backtrack. He told reporters that he only applied for the trademark to prevent other people from using the trademark, and that Tom terrific would not be used in commercial or marketing purposes. Well, if that was true, and Tom Brady statements to the USPTO may very well have been untruthful. Remember that there are two ways to apply for a trademark. The first is one, which means you are already using your trademark in business. The second is one b, which means you have a bona fide intent to use your trademark and business. Tom Brady filed for a one-by-one basis, which means he had to make a sworn statement to the US government that he had a genuine intent to use the mark in business. His comments to the press of Sankey had no interest using Tom terrific and business, simply wanted to keep others from using the trademark, contradicts the sworn statement he made to the federal government. That type of untruthful illness can be a basis to invalidate his application. Now is application was rejected for other reasons, including that it had a false connection to Tom CVA. This is a lesson for all applicants to think carefully about each statement in the USPTO application. Lying or providing false information can compromise your entire application. You don't want to let other competitors have any grounds to invalidate your trademark. 14. The Ultimate Trademark Loophole Apple Uses to Protect Trillions of Dollars of Brand Value - 101-14: Let's talk about the ultimate trademark loophole Apple uses to protect trillions of dollars of brand value. You'll probably think the first person to find out about Apple's newest products is some tech blogger on tech crunch, or maybe some die-hard Apple fanatic, or a well-connected investor in Silicon Valley? Well, these guesses are wrong. Besides apples top executives, the first people to get access to information about Apple's newest inventions are government employees in Jamaica. Wait, what? I know, this doesn't seem to make a lot of sense, but it's actually done on purpose by Apple as a strategy. Here's why. When you apply for a federal trademark protection in the United States, your entire application becomes a public record. You have to publicly show your trademark in the specific goods or services associated with that trademark. Even if you are a huge company like Apple, you can't conceal what your trademark is or what you're selling or plan to sell. So anybody with a computer can simply searched the USPTO public trademark database and learn about Apple's trademark applications. This can be a problem for some companies that don't want to let the world know about their future products before they're ready to announce them. Remember when Steve Jobs unveiled the iPod or the iPhone, these iconic moments would have already lost their thunder if the cat was already out of the bag. But a major company needs to protect its intellectual property. And trademarks are incredibly important part of a company's brand value. So how does a company Secured trademark protection while maintaining secrecy? You guessed it. It registers trademarks in Jamaica. Apple strategically registered trademarks for Siri, macOS and the Apple Watch in Jamaica. Then Apple has six months to file what's called a 44 D application in the United States. And the loophole, Apple gets the priority date of when they file the trademark application in Jamaica and not when it later file the trademark in the United States. Why all this effort? Well, the two pika Intellectual Property Office doesn't have a public trademark database like the USPTO that lets people easily search for trademark applications. In fact, you have to go to the Jamaican Trademark Office in person just to show that you have a Jamaican address. This gives Apple a loophole of up to an extra six months of being able to keep nosy competitors in the press are figuring out their future products. And we're getting an early priority date based on the Jamaican application. So you should use Apple strategies and protecting your trademark. The answer is, most likely no. Apples $1,000,000,000,000 company with enormous legal and business resources. It also must be extremely secretive about its products and innovations in order to continually outperform competition. But if you are the next Apple and you have a trademark, you'd like to file for an innovative new product you may want to consider first filing in Jamaica. 15. What is the difference between a “Use in Commerce” and “Intent to Use” Trademark Application? 101-15: Many entrepreneurs ask, what is the difference between a use in commerce, one a, and an intent to use one be trademark application. When you apply for a trademark, you'll be asked whether you are goods and services are in commerce, or whether you have an intent to use your goods and services. Let's talk about the first option, use in commerce. This is referred to as A1A application. This means that you are already selling goods and providing services in a business. Let's say I'm applying for a trademark for my t-shirt business. And I've been selling these t-shirts with my trade work for two years. This would fall into the one, a use in commerce option because I'm clearly already using this trademark in business with my t-shirts. But let's say I plan to use this trademark to sell t-shirts, but I haven't sold any t-shirts yet. In this case, I would apply for the second option, which is an intent to use application. This is also referred to as a one b application. This means that I have a genuine intent to use my trademark to sell t-shirts, but I haven't actually use my trademark and commerce with these t-shirts. When applying for a trademark. Remember that these two options based on whether you are using the trademark and commerce with the goods or services, which is a use in commerce application. Or whether you simply have a genuine intent to use the trademark and commerce with the goods and services, which is an intent to use application. 16. What is the difference between a trademark, copyright, and patent? 101-16: What are the differences between a trademark, copyright and patent? First, trademarks are words, logos, or designs that help consumers identify the source of a product or service. It protects the brand of your company. Second, Copyrights protect creative works in fixed forms, like movies or songs. Third, patents protect inventions. There are two types of patents. The first is a utility patent, which protects how something is used in works. The second is a design patent, which protects how something looks. As an example of consumer walking into a McDonald's can show the differences between a trademark or copyright and patent. For instance, the consumer will notice that the big M outside on the restaurant and immediately identify these golden arches as the source of McDonald's restaurants services. That m would be a trademark that consumer might order a happy meal. His child will open a book about Elsa from Frozen. That book would be copyrighted material. Then the same consumer, my order french fries at McDonald's using a novel technology to make french fries in a specific way. The french fry machine could be patented. As you can see, trademarks, copyrights and patents are all around us. Depending on a company's specific business and legal needs, it might even be advisable to seek all three forms of intellectual property. 17. Should I register my business name or logo first? 101-17: Many small business owners ask, should I trademark my business name or logo first? As a reminder, trademarks are words, logos, or designs that help consumers identify the source of a product or service. Trademarks could be a business name, a design element, a logo, or in some cases, even the shape of a bottle. Let's take Starbucks as an example. Starbucks is the name of a business and an important trademark for this billion-dollar company. But that's not their only trademark. The green mermaid logo is also an incredibly strong source indicator of the Starbucks brand. When customers see the green mermaid logo, they immediately think of Starbucks. A billion-dollar corporation like Starbucks, of course, has the resources to file for many trademarks. But that's not the reality for most small business owners and entrepreneurs. Deciding whether to trademark a business name or logo first, an important business, legal and strategic decision. One important question to ask is, if I only have the resources to file for one trademark with the business name or logo be the better source indicator. And my goods and services. For many businesses, the business name is the stronger source indicator. Most small business owners want their business seem to be strongly associated with their brand and investing in a trademark for their business name. It's a smart decision. Then when the company has additional resources, they will often fall for additional trademarks, including logos. For instance, let's consider a small clothing company names inland clothing company opens a small store and puts them Lin prominently on the storefront. The clothing company also sells shirts with a flower logo. Ideally, the company want to file for both trademarks, the business name and a logo. At that store owner only has the resources to file for one trademark. However, they should ask with the business name of Zen Lin or the logo of the flower act as a stronger source indicator of the clothes. In this case, the store owner might decide that they want to first invest in the trademark for the business same Zen Lynn. At this point, the store owner decides that their primary goal is for the customers to know the company's named Zen Lin to tell other potential customers about the location of the store. Then when the company has additional resources, the store owner can apply for the flower logo. In addition, some people have registered their company name as an LLC. That's entirely different from how the business is known to the public. For instance, someone might have registered for an LLC with the name's Johnson Company, LLC. But that same company could market all of its products as Johnny's. In that case, the public doesn't associate any of the products with the name of the LLC. It makes more sense to seek the trademark protection for Johnny's. Applying for trademarks is an individual decision. Some companies may decide that the business name is more important to them than a logo. While others may decide the opposite. The decision is up to the business owner, is based on a variety of Business and Strategy Goals. One important question business owners should consider in this determination is whether the business name or logo acts as a stronger source indicator of their goods and services. 18. Trademarks 102 - Step by Step Guidance of Registering your Trademark: Welcome. In trademarks one or two. You've already done some brainstorming and trademarks one-on-one on how to select the perfect trademark. And you are now ready to begin the process of submitting your application to the USPTO. Applying for a trademark is an important business, legal and personal decision for any entrepreneur and small business owner. Congratulations on deciding to make this important step, the direction of your business. Before you begin the application process, you can watch the next video on how to create an online account with the USPTO. Then there are five steps to this application process. Videos will guide you through each of these five steps. First, the USPTO will ask for information about the type of application you wish to submit and the cost associated with that application. Second, the USPTO will ask about the owner of the trademark. Third, the USPTO will ask about the trademark itself. For the USPTO will ask about the goods and services you are providing or selling, or plan to provide or sell with your trademark. Fifth, depending on your application, the USPTO might ask for proof of what you're selling or providing. If you are not yet using your trademark in business, you'll complete the step at a later stage in the application process. After you submit your application, you'll then be able to submit your application to the USPTO. So let's begin. 19. Creating an Account 102-2: The first step in the Federal Trademark application process is to create an online account with the USPTO. Trademark applications must be completed online as the USPTO no longer accepts paper applications. The link below will bring you to the USPTO account creation page. You can go to www.uspto.gov slash trademarks slash login, and click on, Set up your uspto.gov account. The USPTO will then send you an email to activate your account and to create a password. The USPTO has two-step authentication, which just means that when you sign in in the future, you have to confirm your account via your e-mail address or text message or phone call. Most people just choose to confirm via code sent to their email, which is the default option. Now, you just need to complete the required start contact information, press Save, and you'll have an electronic account with the USPTO. When you're ready to begin your application, click on file an application on the USPTO page. If you have any questions whatsoever about navigating the USPTO electronic system? There is an office within the USPTO that is there to help you with these type of technical questions. If you call 1807869199 and press one, you'll be brought to the trademark Assistance Center. You can also email trademark Assistance Center at uspto.gov. 20. Part 1 - Type of Application 102-3: The first part of the application asks about the type of trademark application you'd like to submit. So let's begin. The first question asks, if you want to submit a tease plus or t standard application. The first difference between these two applications has to do with the goods and services associated with your trademark. With the teas Plus application, you can only choose goods and services that are pre-approved by the USPTO. The USPTO has an identification manual that includes all of the pre-approved goods and services, which is linked below. This is an ideal option if your goods and services are common. With a T standard application, you have greater flexibility with describing your goods and services. Because you can either choose the goods and services already pre-approved by the USPTO, or you can create your own specific language about your goods and services. This is an ideal option if your goods and services are uncommon or require a more detailed explanation. A great way to determine whether to apply for a teas Plus application or tea standard application is to search for your goods and services on the identification manual, also known as the ID Manual, which is linked below. So for instance, suppose I'm selling t-shirts. This is a pretty common good. But I can double-check by searching for t-shirts on the ID manual. As you can see, T-shirts comes up as a search result. So I know that it is already pre-approved by the USPTO or let's say I'm a veterinarian and I searched for the word veterinary on the ID manual. As you can see, veterinary services come up. Since that accurately describes what I'm providing, I could use the teas Plus option will go into deeper detail on how to describe what you're selling in part four. But what if I'm selling something uncommon or that requires a more detailed explanation? Let's say I'm selling headphones that also massage your ears. If I search for headphones and the ID Manual, it does come up. But does that totally describe my product? Probably not. In that case, I may want to provide additional details about my product in order to fully describe it, such as hip bones that utilize novel audio technology to play music and massage the inner ear. Since it's important for me to provide more explanation in a way that does not neatly fit into the pre-approved language in the USPTO ID manual, I would choose the Tea standard application option. The second difference between these types of applications has to do with the price. The teas Plus application is $250 per class and the T standard application is $350 per class. So depending on your goods and services, the teas Plus application allows a cheaper option. It also may reduce the processing time of your application. The reason for that is since you are using pre-approved languages, the USPTO will not have any corrections to your goods and services. The second question asks whether an attorney is filling this application. Since you are filling this application without an attorney, you can click no for this question. A quick note about this yellow box that talks about foreign domiciled owners. This box is saying is that if you do not have a domiciled in the United States, you are required to hire an attorney to file this application. So what's the domicile? Domicile just means that if the trademark owner is an individual, your principal home is in the United States, or if your trademark owner is a legal entity like an LLC, that your principal place of business is in the United States. Those were the US domicile can fortunately file without an attorney and then they check no, for this question, the third question is optional. It only applies if you had previously worked on an application. Most applicants leave this part blank. 21. Part 2 - Ownership 102-4: Part two asks information about the owner of the trademark. It then asks about the mailing and e-mail addresses. You'll want to think about who is the actual owner of the trademark. A trademark can be a legal entity such as an LLC, or it can be owned by an individual. You have to decide who or what will be the actual owner of the trademark depending on your particular business situation. One thing to keep in mind is you can always assign the ownership of your trademark at a later date. What this means is, let's just say John Smith submits a trademark now with John Smith as an individual owner. But then three years from now, John Smith creates an LLC for his company and it's now called Jonathan's car company, LLC. In that case, he can then simply file an online document with the USPTO so that the owner of the trademark becomes Jonathan's car company, LLC. Finally, even though the phone number isn't required in order to submit your application, it can be helpful to include it anyway. The reason is that at a later stage, the trademark examining attorney, reviewing your file might call you to ask permission to change certain things in your application. They'll need to change certain things in order to improve your trademark. This is preferable to receiving a formal written response from the USPTO that requires you to formally respond. So you might want to make it easy for the USPTO to get in touch with you. 22. Part 3(a) - Type of Trademark 102-5: This section asks about your trademark. Specifically, it asks you to select whether your trademark is in standard character or a special form. We'll go through each of these to make sure you understand the differences. A Standard Character form provides the broadest protection for your trademark because it means you can show your trademark in any style, font, size, or color. If your trademark is just a design with no words, or if it is just words and a design, you cannot choose the standard character option. Let's say your trademark is mama beans. By selecting a Standard Character Mark, mama beans can be displayed in any style, font, size, or color. For instance, it can be shown in small blue, cursive writing or huge bold yellow wording. The standard character form affords broad protection to show your trademark in a variety of ways. But let's say you want your trademark to be shown in only one specific way. For instance, you always want to be able to show mama beans in alternating red and green colors. Or let's say your trademark has words and any type of design element or characteristic in your trademarks such as momma beans and a depiction of beans. Or if your trademark is only a design element, like just showing the beans. In these cases, you would choose the special form auction. Special form trademarks are trademarks that you want to show in a specific style, font, size, or color. Trademarks that include words and designs, or trademarks that contain just designs. So to recap, a Standard Character form can be selected if your trademark only includes words or letters. And it provides broad protection to show your trademark in any style, font, size, or color. If you only want your trademark to be shown in one specific style, font, size, or color. Or if your trademark contains words and a design. Or if your trademark is just a design, then you'll apply for a special form character. One important thing to keep in mind is that you are applying for the trademark you actually want. After you submit your application, the USPTO does not allow you to make any significant or material changes to your trademark. For instance, if I submit the trademark application for mama beans, I won't be able to then change my trademark Tu Mama beans for life. So you want to make sure you are applying for the correct trademark. If you are choosing the standard character option, you'll type in your trademark below. Now let's discuss next steps for you. If you choose the standard character option. If you select the standard character option, stay on this USPTO page and open up video three C, which is called Additional statements in our database. But if you're applying for special form trademark, click on the special form option on the USPTO website. Then turn to video three b and our database, which is called uploading your trademark. 23. Part 3(b) - Uploading your Trademark 102-6: Now that you've selected the special form trademark, this section asks you to describe your trademark in greater detail. So the first part asked to enter the literal element of the trademark. What this means is that if your trademark contains any words or letters, you would type those in there. For instance, for mama beans, I just type in Mama beans into the box. But let's say I have the trademark of just beans. In that case, since there's no words or letters, I just leave this block blank. Now, you'll need to upload your trademark. The USPTO refers to this as a drawing. What this means is you need to provide an example of what your actual trademark looks like. What you are uploading is your actual trademark that you will be submitting to the USPTO for trademark protection. Here are four things you need to know in order to upload your trademark. First, this should just be an example of your actual trademark on its own. There should not be any stuff present in this upload that is not part of your actual trademark. Instead, it should just be the trademark. So let's use the mama beans example from before. And acceptable upload for the mama beans trademark is shown on the left here. The upload shows only the trademark, which consists of four black beans above the blue wording, mama beans. There is no additional matter information or background that is not a part of the trademark. Now, suppose you uploaded the following two drawings as shown on the right. These uploads would be unacceptable. Here. There was additional stuff present in this upload that is not part of the claim trademark. First example shows the background of an iPhone, which is not actually part of the trademark. In the second example shows the trademark on a hat, which is not part of the trademark. You want to make sure that your upload contains only the trademark and does not contain additional stuff that is not part of your trademark. Second, before you upload, consider whether you want to apply for a trademark in color or an uncle or trademark. When you apply for a trademark and color, you are claiming protection for your trademark looks in those certain colors. So if I'm applying for a color trademark of this, I'm claiming protection for how the trademark mama beans looks in yellow in that specific cursive style. Maybe I always use my trademark and business and yellow. And so I wanna get protection for that one specific look of yellow. For instance, if you think of McDonald's, the arches are always gold. You'd never see them in red or blue because yellow is their trademark look. On the other hand, when you apply for a non-color claim, you are not claiming any specific colors. What that means is that you can show your trademark in any color. Let's use a similar example in this case, since I'm applying for a non-color claim, I'm applying for protection to show mama beans in any color, such as blue, yellow, or pink. So to recap, a color claim means you are applying for a trademark to be shown in a certain color or colors. In that case, you would upload your trademark in color. But a non-color claim means you are applying for a trademark to be shown in any color. In that case, since you are not applying for a certain color, you must upload a black and white version of your trademark. Third, this should be uploaded as a JPEG file, which is required by the USPTO. Forth. You should only be uploading one trademark. The USPTO only processes one trademark at a time. The next part asks you to describe your trademark. What this means is that you have to describe how the wards or designs look in your trademark. Let's use some examples. Suppose I have a non-color trademark of a coffee cup next to the word mama veins. Since this is a non-color trademark, I check the box that I am not claiming color as a feature of the mark. You also will leave the box about the colors blank since you are not claiming color. Now, you'll have to describe your trademark. The system already has the words the mark consists of, so we don't have to repeat those words. Here. I would type the following in the box. The stylized wording, mama beans. There is a stylized coffee cup to the left of the wording. Now, if you have just a design element for your trademark, such as beans, you would simply describe the design element. So in this case, my mark description could be too stylized. Beans, Let's consider the example of the trademark consisting of a blue triangle, the red mama beans, and a pink triangle. In this case, I type blue, red and pink. And I leave this box unchecked. Since I am claiming color. Then for the mark description, I could write the following. The stylize read wording, mama beans. There was a stylized blue triangle to the left of the wording. There was also a stylized pink triangle to the right of the wording. As you can see, we specify where the color appears in the trademark. We also show where the design elements appear in relation to the wording. Here, we specified that there is a blue triangle to the left of the wording and that there is a pink triangle to the right of the word. For the next example of trademark consisting of two brown coffee beans. You type in brown eyed also leave this box unchecked, since I am claiming color. Then you could describe the trademark as to stylize brown coffee beans. To recap, for all trademarks, you want to describe the words and any design elements in your trademark. If you have a color claim, you want to describe the colors that appear in your trademark and list the colors in the box above. Now, if you don't get this perfect the first time around, don't worry. If there's an issue with your mark description, the USPTO will provide you with an accurate and approved trademark description at a later stage, when you're ready, turned to video three scene. 24. Part 3(c) - Additional Statements 102-7: Now we need to look at the additional statements section. But listen up. Because depending on whether you applied for a t standard or teas Plus application, you may not have to watch this video. If you're applying as a t standard application, you technically don't have to listen to this video. That's because you're already paying the more expensive option of the $350 class. The USPTO does not require you to consider this section. You can certainly still watch it, but it's okay if you don't. But if you're applying under a teas Plus application, you will have to consider this section. As a reminder, teas Plus means you're paying $250 per class. And also means you will have to choose pre-selected examples of goods and services later on in the application. Unfortunately, if you don't address this section, you could be charged an additional hundred dollars by the USPTO. Nobody wants that. So we'll make sure you know how to handle this section. So first, you want to check the box to display the full listing of additional statements. As you can see, there are several statements that have a red star or asterisks next to them. These are the only parts that you must consider when filing a teas Plus application. You are not required to answer the non red star statements before we begin. One big thing to keep in mind is that not all these statements will apply to your specific trademark. In fact, it's possible that all of these statements won't apply to your trademark. In those cases, you just leave all those red stars sections blank and you move on to the next section. So the first red star statement asks whether you have an active prior registration. This just means you currently have an ownership of another registered trademark at the USPTO. If you do, then you'd put in the registration number of that trademark. That's a seven digit number, such as 6106190. You want to make sure to fill this statement out, especially if you own another registration for the same trademark you are applying for now. And if the name of the owner of the registered trademark differs from the owner of the trademark you are submitting. Now. For instance, let's say I'm applying as an individual for a stylized version of Malvina now. But I also have ownership of an LLC of the standard character form of monoamines. In that case, I'd find the registration number of the previous trademark and put it in here. But if you don't already own another registered trademark, just leave this section blank. The second red star statement asks about a translation. This applies if you have a non English word or words in your trademark. For instance, let's say your trademark is mama beans at, or Mozah. Here at home also means beautiful in Spanish. In that case, I fill in the following. The English translation of it, or Moussa in the mark is beautiful. I'd also capitalize the words and put the words in-between quotes. But let's say there aren't any non English words in your trademark. In that case, just leave this section blank. The third read starts statement asks about transliteration. This is rare and only applies if your trademark has non Latin characters. An example of non Latin characters is your trademark has asian or Arabic characters. Like this trademark. If your trademark does not contain non Latin characters, you can skip this statement and leave it blank. Basically, transliteration here is the process in which the non-line characters, such as Asian or Arabic characters, can be pronounced in English using English letters. So let's say your trademark has the following Chinese characters. To transliterate these Chinese characters, we need to figure out how these characters would be pronounced in English using English letters. So in this case, the character is transliterate to Song Xin Shang, which is how we pronounce the characters using the English alphabet. Then we ask whether there is any meaning in English to the transliterated words. In this case, the transliteration means give fresh raw in English. So in this case, we would type in the following. The non Latin characters in the mark transliterate to Song Xiang Shang. And this means give fresh rock in English. Or suppose Song Shang Shang had no translated meaning. That case, you'd fill in the non Latin characters and the mark transliterate to song she in Shang. And this has no meaning in a foreign language. Remember, if your trademark does not contain non Latin letters, then you can just leave the statement blank. The fourth statement asks whether there is a name, portrait, or signature of an individual in your trademark. Let's use examples to break down what that means. And aim could be the name Mary Smith. In Mary Smith's mama beans. A portrait could be a visual depiction of Mary Smith and a signature could be Hail Mary Smith signs her name as Marie Smith. Now, the most common of the three is the first example. When there is a name and your trademark that could presumably identify a living individual such as Mary Smith. It can also include nicknames or stage names. In this example, we'll use the nickname or stage name of DJ minimise. As you can see, there are two consent options. Let's say you are applying for the trademark DJ minimise, and this is your nickname. That case, you would choose the first option. Then there's one more step. See the Click here to attach less remove consent. You click on that. Here. You would upload a PDF in which you provide your signature under the following statement. I consent to the use and registration of my name, portrait, and or signature as a trademark and service mark with the USPTO. Here's an example of this PDF with the individual signature who has the nickname DJ minimise. What that means is that you are acknowledging to the USPTO that you are a person identified in your trademark and you are providing consent to the registration. This provides protection from people merely trademarking other people's names, such as me applying for the trademark, Kim Kardashian. But let's say DJ minimis is a made-up name and doesn't refer to anybody or yourself. And that case, you choose the second option. The name, portrait, and or signature shown in the mark does not identify a particular living individual. Finally, the fifth Red start statement is whether you have a concurrent use agreement. This is extremely rare and occurs when two parties can simultaneously use the same trademark. In order to fill out this statement, you would have needed to already file a legal proceeding in front of the trademark trial and appeal board, received a legal determination from the board or received a final court determination about your concurrent use rights. Again, this is rare and the overwhelming majority of applicants will leave this section blank. Now you're ready for section for where you will describe what you are selling or providing or plan to sell or provide. If you have filed a teas Plus application, you will watch section for for the teas Plus Applications. And if you filed a standard application, you'll watch section for, for t's standard applications. 25. Part 4 - Goods and/or Services - Teas Plus 102-8: Now onto a more interesting part. Describe what you are selling, are providing or plan to sell or provide. You should be watching this video. If you chose teas Plus in your application. If you chose t standard, you should watch the video for t standard option instead. Before we begin, let's consider three points. The first thing to keep in mind is that you cannot expand the scope of your goods or services at a later stage. For instance, let's say I'm selling clothes. I list my goods as clothing, namely t-shirts and Pants. After I submit my application, I wouldn't be allowed to then add hats to my application. That's because hats is beyond the scope of what I initially applied for. The big takeaway. You want to carefully consider your goods and services before you submit your application. Also, the second thing to remember is that goods and services are organized into classes. Classes one through 34 referred to goods like a hat or a car, and classes 35 to 45 referred to services, like providing therapy services or restaurants services. Each class costs $250 and the teas Plus application. So you want to decide how many classes you are willing to pay for. Third, an important tip is to fully brainstorm your goods and services before you provide the information in the application. So jot down on a Word document or a piece of paper, the goods and services associated with your applied for a trademark? For instance, if I'm providing clothing, I met brainstorm, t-shirts, pants, socks, and pajamas. Additionally, there is a PDF below that provides more information on the 45 classes and examples of famous registered trademarks that will help with the brainstorming. Alright, let's begin. You can click on Add goods slash services to add your goods and services. Because you're applying under a teas Plus application, you are going to use the pre-approved language provided by the USPTO. Now you're ready to search for and select your goods and services using the trademark identification manual, also known as the id manual. We'll start with a simple example of searching for t-shirts. Here you'll see the first results is t-shirts to the left. You'll also see the corresponding class, which is class 25. You'll also see that there are more specific ways to describe T-shirts, such as the second result of graphic t-shirts. Some people will just select t-shirts, since T-shirts is broad and encompasses more specific types of T-shirts, such as graphic t-shirts. But that's up to you to choose which goods you want to apply for with your trademark. Here, I could check the two boxes to include the two goods of T-shirts and graphic t-shirts. Then I can search for another term such as pajamas. The first option is pajamas and shows the corresponding class 25. Both t-shirts and pajamas are in the same class. That means I won't have to pay an additional fees since I'm not adding a new class. Now, let's use another example. Let's say I'm providing horse therapy services. If I search horse therapy, I see the option of therapy for humans with the use of horses in class 44. Even though this isn't the exact wording of what I initially searched for, it accurately describes me services. So I can click to add this service. Now let's say I provide dog therapy, or in other words, I provide therapy to humans with the use of dogs. If I searched dog therapy, the only result is massage therapy services for dogs. This doesn't accurately describe my services since I'm providing therapy to humans with the use of dogs and not providing therapy massage to dogs. In that case. I try to brainstorm another way of describing my services, such as animal therapy. The first result is animal assisted therapy. And below that, it says animal assisted therapy is a type of therapy that involves animals as a form of treatment. This accurately describes my services since dogs are an example of an animal. So I can click this box to add this service. Sometimes the goods or services require you to put additional information. For instance, if I click on animal assisted therapy to indicate a group or individual, e.g. at-risk children, veterans, senior citizens, etc. I have to describe the type of group or individual I'm providing the therapy to. For instance, I could type in college students if that's the type of group and providing therapy for. As you can see, it can take some patients brainstorming and even some flexibility to find the right good or service. Finally, you'll double-check if all of your goods and services are included. If not, you can click on Add goods services to find and add additional goods and services. Once you've inputted all the goods and services you want to include in your application, you're ready to move to the next question. The next question involves choosing section one a or one B. What do these mean? Well, one a means you are already providing your goods and services in business. Maybe you've made one sale already using your trademark with your applied for goods and services. Or maybe you've sold millions using your trademark with your applied for goods and services. Either way, you could click on this option. On the other hand, B means you have a genuine intent to use the goods and services in business with your trademark, but have not yet done so. Let's say I'm already selling both t-shirts and graphic t-shirts with my trademark and business. In that case, I'd make sure each of my goods were selected and I'd click one a. But if I haven't yet used my trademark and business with t-shirts and graphic t-shirts. But I have a genuine intent to do so. I'll click one B. Note that if you are applying under one be, you won't have to show your proof now in order to submit your application. But you will have to provide proof at a later stage in the application process, showing you are using your trademark in business with your goods and services. Also, you'll have to pay an additional hundred dollars when you eventually submit this proof. If you choose one. You will move on to the section five video. Because the USPTO will require proof that you're selling your goods and services with your trademark. But if you choose one B, do you won't be asked to provide proof at this stage. 26. Part 4 - Good and/or Services - Teas Standard 102-9: Now onto a more interesting part, describing what you are selling or providing or plan to sell or provide. You should be watching this video if you choose t standard in your application. If you chose teas Plus, you should watch the teas Plus video for Section four instead. Before we begin, let's consider three points. The first thing to keep in mind is that you cannot expand the scope of your goods or services at a later stage. For instance, let's say I'm selling clothes and I list my goods as clothing, namely t-shirts and Pants. After I submit my application, I wouldn't be allowed to then add hats to my application. That's because hats is beyond the scope of what I initially applied for. The big takeaway. You want to carefully consider your goods and services before you submit your application. Also, the second thing to remember is that goods and services are organized into classes. Classes one through 34 referred to goods like a hat or a car. And classes 35 to 45 refer to services like providing therapy services or restaurants services. Each class costs $350 and a t standard application. So you want to decide how many classes you're willing to pay for. Third, an important tip is to fully brainstorm your goods and services before you provide the information in the application. So jot down on a Word document or piece of paper, the goods and services associated with your applied for a trademark. For instance, if I'm providing clothing, I might brainstorm t-shirts, pants, socks in pajamas. Additionally, there is a PDF below that provides more information on the 45 classes and examples of famous registered trademarks that will help you with brainstorming. Alright, let's begin. Since you're applying under a t standard application, you have two ways of inputting your information. The first option is searching the trademark identification manual, also known as the ID Manual. This means you will search for and select goods and services that are already approved by the USPTO. To use the ID manual option, you can click on Add goods slash services to add your goods and services. Now, you are ready to search for your goods and services. We'll start with a simple example of searching for t-shirts. Here you'll see the first result is t-shirts. To the left. You will also see the corresponding class, which is class 25. You'll also see that there are specific ways to describe T-shirts, such as the second result, graphic t-shirts. Some people will just select t-shirts. Since the T-shirts is broad and encompasses more specific types of T-shirts, such as graphic t-shirts. But that's up to you to choose which goods and services you want to apply for with your trademark. Here, I could check the two boxes to include the two goods of T-shirts and graphic t-shirts. Then I can search for another item such as pajamas. The first option is pajamas and shows the corresponding class 25, both t-shirts in pajamas or in the same class 25. That means I won't have to pay an additional fee since I'm not adding a new class. Now, let's use other examples. Let's say I'm providing horse therapy services. If I search horse therapy, I see the option of therapy for humans with the use of horses in class 44. Even though this isn't the exact wording of what I initially searched for, it accurately describes my services. I can click to add this service. Now let's say I provide dog therapy, or in other words, I provide therapy to humans with the use of dogs. If I search dog therapy, the only result is massage therapy service for dogs. This doesn't accurately describe my services since I am providing therapy to humans with the use of dogs, not providing therapy to dogs. In that case, I try to brainstorm another way of describing my surfaces such as animal therapy. The first result is animal assisted therapy. And below that it says animal assisted therapy is a type of therapy that involves animals as a form of treatment. This accurately describes my services since dogs are an example of an animal. So I can click this box to add this service. Finally, the goods or services sometimes require you to input additional information, e.g. at-risk children, veterans, senior systems, et cetera. I have to describe the type of group or individual I am providing therapy to. For instance, I could type in college students. If that's the type of group I'm providing therapy to. As you can see, it can take some patience, brainstorming, and even some flexibility to find the right type of good or service. Finally, you'll then double-check if all your goods and services are included. And if not, you can click on Add goods slash shirts. 27. Part 5 - Specimen 102-10: You now need to submit proof that you are selling products or providing services in connection with your trademark in business. The USPTO refers to this proof as a specimen. What that means is you need to show your trademark in connection with a product or service. What I'm about to say is important, no matter what type of proof you provide. One thing is always true. Your applied for a trademark has to match your trademark shown on the specimen. What does that mean? Well, let's say I'm applying for the trademark mama beans with design elements of a flower to the left of the word. And I'm selling t-shirts. But then when I upload the specimen, the trademark has the wording mama beans on the T-shirt, but the flowers to the right of the word. Do these trademarks match? No. Also, remember that if you apply for a Standard Character mark, your trademark can be shown in any font, style, size, or color. Standard character marks also never have design elements. Let's start with showing proof for selling products. There are several ways to show this proof. I can show the trademark on the product, which is a t-shirt, or on a tag connected to the T-shirt. I can also show the trademark on the packaging of the t-shirts. I could just take a picture of any of these examples or screenshot showing any of these examples and attach the specimen. Finally, let's say how the trademark mama beans and I sell the t-shirts on a website like Amazon. I can also use my website as a proof that I'm selling the t-shirts, even if I don't have an example of the trademark on the T-shirt. This type of proof requires three things. It must, one, contain a picture or a written description of the goods to show the mark and association with the goods. And three, provide a means for ordering the identified goods, like a shopping cart or Add to Cart button. Here, I first have a picture of the product or good, which is the t-shirt. I also have a description of the goods because it says cotton T-shirts. Second, the trademark of Mala beans is shown on the webpage. Third, the Add to Cart button clearly shows the ability for consumers to purchase the goods directly. So when I submit this type of specimen, so long as I meet the three standards above, it will be acceptable even if the trademark is not also on the product itself. Here, the mama beans trademark is not shown on the T-shirt itself, but it's still acceptable because it met the three conditions. You can take a screenshot of the website and attach the specimen. If you're using a webpage for your specimen in the URL and the date you access the webpage isn't already shown somewhere on the webpage. You will input this information. So for instance, if I'm going to my website, www.mamabeans.com on March 17, 2021 to take the screenshot, I'd put in the URL of www.mamabeans.com and the date of 317 2021 as the data access the webpage. This is the date you access the website to take the screenshot, not the date you created the website. Now, what about if I'm providing services? In that case, you have to show your trademark as used in the sale or advertising of services in your application. You also have to show a direct association between your trademark, at least one of your services in your application. For this, you can ask yourself, does my specimen provide a direct link or connection between my trademark and my applied services. It's very common to submit a website for your specimen. Now remember that the specimen needs to show the trademark and have a direct association with at least one of your services and your application. Let's say my trademark is Jimmy Rama. And I'm providing a service like barber services. If I provide a webpage and it only references selling lawnmowers, would clearly not be a direct association. But now let's say I have a website that's actually advertising barber services. You can see the trademark Jimmie Rama, and a picture of a man getting a haircut. You can also see how it references inexpensive hair cuts and the phrase, best haircuts in Boston. All of that makes it pretty clear that I'm providing barber services. Doesn't it? Just like before, when providing a website for your specimen, remember, you need to provide the URL and the date accessed. But if this information is already shown somewhere on the web page specimen, you don't need to provide that information again. For services, you can also provide advertisements and marketing materials for specimens, for surfaces. Let's use some other examples of specimens with the yellow and the white flower trademark. Some examples include brochures, newspaper or magazine ads, and even menus for restaurants. If you don't get this proof done perfectly the first time, let's okay. The Patent and Trademark Office will give you a second chance to submit the proof at a later date. The next step is to give two dates. The first question you were asked is what date you started using your trademark at all with your products or services listed in your application. The second question you were asked is, What did you started using your trademark with your products or services in business? So what does that mean? Well, let's use an example. For the first question. I put the date that I first use the trademark at all with my t-shirts. So let's say May 15, 2021 is the first time I place this trademark on a t-shirt. Even if I didn't make any T-Shirt sales on this date, it's the first time I use the trademark in connection with my T-shirts at all. In that case, I put 515 2021 as the first day I use my trademark anywhere. For the second question, this is the date that I first use my trademark in business. Let's say I sold a t-shirt with the flower trademark to the first customer on June 15th, 2021. In that case, I put 615 2021. Since this is the first time I used this trademark in business with my t-shirts. Here are two final tips. First, for many people, these two dates will be the same. And that's totally okay. As an example, let's say I started a restaurant called Mary's yummy bytes, but I hadn't used my trademark at all. Then on June 15th, 2021, I put my trademark on my restaurant storefront for the first time. A customer zeta my restaurant for the first time. That means I'd put 615 2021 as the answer to both questions. Second, a lot of people have trouble remembering the exact date and that's totally okay too. Let's say I know I sold my t-shirts in June of 2021, but I forgot which exact day in June. That case, I could put 62021. If you do that, note that the USPTO will end up putting the final date of the month you provide it. So if I only put in June of 2021, the USPTO will enter that as June 30, 2021. Since the 30th is the last possible day in the month. 28. Signature - 102-11: You're almost there. Now you just need to provide a signature. The first page gives you the option of adding a docket number, which is helpful if you are filing for a lot of applications and neat and organized way to keep track of all your applications. But for most applications, this docket number is not necessary. In that case. This section can be left blank. Next, it provides you the opportunity to add another email address. But if you've already submitted a primary e-mail address previously in the application. This part is not required. If you don't want to provide a secondary email address, you can leave this section blank as well. Finally, you're ready to provide your signature. When providing your electronic signature, you have to type your name between two forward slashes. E.g. if your electronically signing the name John Smith, you would type forward slash John Smith, forward slash. 29. What Happens Next - 102-12: Congratulations on submitting your trademark application. So what happens next? Well, the USPTO is currently experiencing a backlog. So it'll be about five months until your application is initially reviewed. It used to take more like three to three-and-a-half months before your application was reviewed. But the USPTO is currently experiencing an unprecedented surge of applications. Once your application is reviewed, three things can happen. The first outcome is rare, but if your application is completely perfect, it will be published. That's great news and means your application has been approved for the next stage, which involves being published in a gazette that lets other people and businesses know about your trademark. If no third party objects to your trademark during that time frame, your trademark will become registered. But it's not common dab, a totally perfect application. It's totally normal to have an issue or an outstanding issue with your application. The second outcome is receiving an examiners amendment, which is simply an email or phone call from the trademark examining attorney reviewing your file. Generally, this involves seeking clarification on something on your application or agreeing to some type of change such as amending the description of your trademark. If you agree to the examiners amendment, your application will eventually proceed towards publication. If this is your outcome, you can watch the video on examiners amendments. The third outcome is the most common and involves perceiving a non final office action, which is a formal correspondence sent via email. It will specify any issues with your application, such as an unacceptable specimen, a translation statement for non-English wording, or a refusal based on your trademark being confusingly similar to another registered trademark. If this is your outcome, the trademarks One O3 section will guide you through responding to the office actions. One final thing, be on the lookout for any correspondences with the USPTO, especially three to five months from now, makes sure that the correspondences from the USPTO come from an e-mail address of at uspto.gov. Unfortunately, there are a lot of fraudulent businesses that attempt to impersonate the USPTO. The USPTO is cracking down on these businesses, but make sure to not get duped by an impersonator. 30. Trademarks 103 - Responding to Office Actions: Welcome to trademarks 103. Trademarks 103 contains instructional videos on how to respond to office actions. Before we begin, let's briefly review what happens after you submit your trademark application. There are three potential outcomes. The first outcome is rare, but if your application is completely perfect, you'll be published. The second outcome is receiving and examiners amendment, which is simply email or a phone call from the trademark examining attorney reviewing your file. This usually involves fixing something minor with your application. The third outcome is the most common and involves receiving a non final office action, which is a formal correspondence sent via email from the USPTO. Now, an office action will likely have a summary of issues section which specifies all the outstanding issues in your application. Then as you scroll down in an office action, you will see a larger, more detailed explanation for each issue. Each of these issues is usually underlined or in bold. So once you know what the issue or issue is with your application, you can then search for corresponding educational videos on these issues and trademarks 123 database. So let's say your summary of issues lists disclaimer required. I can then search for disclaimer in the trademarks one or three database, and I'll find the disclaimer video. I'll then be able to watch a video and learn all about what a disclaimer means and how to respond to this requirement. The how to read an office action video will be very helpful to review. After reviewing that video and learning how to identify the issues with your application, you can search the database for videos on how to resolve your specific outstanding issue. 31. How to Read an Office Action 103-2: For many small business owners, it can feel overwhelming to read an office action, which is a formal correspondence sent via email from the USPTO. Some people initially feel like it is written in a different language. Here are the steps to break it down how to read these correspondences. The first step is to determine whether this is a non final office action or final office action. The non final office action is your first opportunity to respond to issues with your application. Applicants provide a response to the office actions that hopefully resolve all the issues. If these issues are not resolved in your first response and no new issues are raised by your response. You'll receive a final office action from the USPTO, which we'll explain why your response wasn't sufficient. You will have an opportunity to respond to the final office action through a request for reconsideration. The non final office action and final office action have two things in common. First, both of a strict deadline in which you must respond. If you don't respond within these deadlines, you whisk your application, abandoning. Second, both will provide you with the name, phone number, and e-mail of the examining attorney who is reviewing your file. This information appears on the bottom of the office action in the signature line. While this attorney cannot provide your legal counsel, he or she can answer basic questions about your file. This information is included at the bottom of both office actions or the trademark examining attorney signs his or her name. So let's start with a non final office action. Some office actions specify search results in the beginning. If your office action states that the search found no conflicting trademarks, that means the trademark examining attorney did not find any registered trademarks or prior pending applications that are confusingly similar to yours, which is a great sign. If it doesn't have this section, it will likely mean you have a section 2D refusal to overcome. Other office actions might mention a prior filed or pending application Advisory. This means that there's another trademark that might be confusingly similar to yours that was filed before your trademark, but has not yet been registered. What that means is the trademark examining attorney will make that determination later on if and when the other trademark registers. The office action will then list all the issues of your application. Office actions will often have a summary of issues section which clearly lists all the issues. Other office actions. We'll jump into the issues by immediately listing the first issue which is often underlined or involved with this particular office action, you will see that there are three issues to resolve. Section two, E1, refusal, merely descriptive profile the application specimen refused mirror advertising for goods. When you scroll down, you will see each of these issues is outlined and bolded. Each section provides an explanation of the issue. Then at the end of the office action is information on how to contact the trademark examining attorney on the file, who you can contact with non-legal questions. Now, let's move on to a final office action, which is what you will receive if you respond to a non final office action and the trademark examining attorney determines that you have not resolved all the issues. The final office action will clearly show that it is a final office action. The introductory paragraphs often specify which issues are unresolved, in which issues were resolved or withdrawn. You'll likely see a summary of issues at the top of the final office action which lists the unresolved issues. Let's pause here. Because this section is very important. It's important because the summary of issues lists the particular issues with your application. Then once you know the issue, you can search for the corresponding educational videos on these issues in the trademarks 123 database, you'll see a larger, more detailed explanation for each issue. Each of these issues is usually underlined or in bold. The trademark examining attorney will often provide an explanation as to why the response to the non final action did not satisfy the requirements or overcome the refusals. And just like non final office actions, the end of the final office action provides information on how to contact the trademark examining attorney handling your file, who you can contact with non-legal questions. You can also review the response to guidelines video for more information on contacting the trademark examining attorney that's reviewing your file. 32. How to Contact the Attorney Reviewing your Application 103-3: Many applicants wonder how they can get in touch with the trademark examining attorney handling their file. At the bottom of your office action, there should be information listed about response guidelines or assistance is extremely important not to procrastinate this deadline and to respond within this time-frame. Then you will be able to see the contact information of the USPTO trademark examining attorney, reviewing your application, specifically in the signature line, it should list the name, phone number, and email address of the attorney that is responsible for handling your application. You have the right to reach out directly to this individual and ask questions about any refusals or requirements and your trademark application. While the trademark examining attorney cannot provide substantive legal counsel, they should provide additional information about the office action. When you call the trademark examining attorney, you should have your serial number ready to provide. This is the eight-digit number listed on your office action that starts with an I. 33. How to Electronically Respond to an Office Action 103-4: Most applicants will receive an office action, which is a formal correspondence from the USPTO that lists outstanding issues with your application. So how do we actually electronically respond to an office action? Well, the office action should come to you via e-mail from the USPTO. You'll then click on the Read the official letter, Lincoln, the email. Now when you open the official letter, you should scroll to the bottom of the office actions that lists the response guidelines. For instance, when you scroll to the bottom of the non final office action, you'll see an option to click to file a response to this non final office action. Or if you received a final office action. When you scroll to the bottom, you will see click to file a request for reconsideration. Or you can click to file an appeal with the trademark trial and appeal board. When you click on the link, you will be brought to the USPTO Trademark Electronic response system. Now you're ready to provide a response to the office action. You'll type in the serial number of your application, which is the eight-digit number that begins with nine. You'll then provide a response to all the outstanding issues specified in your office action. You want to carefully read the office action to make sure you're responding to all of the issues. 34. How to Read and Understand a Non-Final Office Action 103-5: Receiving a non final office action is generally the first official response and applicant receives from the USPTO. It can also happen when you respond to a non final office action and your response creates a new issue. So what does a non final office action mean? Well, just like the name sounds like it's not a final office action. In other words, it is your first opportunity to fix all the issues in your response. If you don't sufficiently address all the issues, you receive a final office action which provides another opportunity to address the issues. It will explain why your previous response was not sufficient. In order to respond to the non final office action. Click on the link at the bottom of the office action that says, Click to file a response to this non final office action. 35. How to Read and Understand a Final Office Action 103-6: Applicants receive a final office action when they've already responded to a non final office action. It means that when you responded to the non final office action, you did not satisfy all of the requirements or refusals that were previously specified in the non final office action. The final office action should specify if any previously referenced refusals where withdrawn or if any previously referenced requirements were satisfied, and it should list the refusals or requirements that are not satisfied. There are two ways to respond to a final office actions. First, the most common response is to file for a request for reconsideration. Just like it sounds like you are requesting to the USPTO to reconsider your application. So let's say you have one issue on your final office action, like an amendment identification of goods that was not satisfied in your first response? In the request for reconsideration, you'd want to make sure that you satisfy this requirement. Or let's say you have a substantive refusal like a section 2D refusal for a likelihood of confusion in the request for reconsideration, you would present arguments why you don't think your trademark is similar to the site of trademarks and the final office action. Keep in mind that you have to satisfy all refusals and requirements in order for your application to move forward. For instance, let's say you had two requirements to satisfy in your request for reconsideration, such as a disclaimer requirement and an amended identification of goods requirement. If you only satisfy the disclaimer requirement, but do not satisfy the amended identification of Goods Requirement, your application will not move forward. Why? Because you have not satisfied all of the outstanding issues. The second response is less common and involves filing an appeal with the trademark trial and appeal board. Here, you would have to file a notice of appeal and appeal fee. Here are some things to keep in mind. First, both of these options have a strict deadline. Second, if you want, you can actually do both. You can make a request for reconsideration and file a notice of appeal with the trademark trial and appeal board. So long as you respond within the strict deadline. 36. How to Respond to an Examiner’s Amendment 103-7: This video examines how to respond to an examiners amendment. The trademark examining attorney assigned to your trademark file might reach out to you via phone or e-mail for an examiners Amendment. That's great news. And examiners amendment generally means that there is some clarification needed on your end, such as satisfying a requirement that can be finalized via email or phone. If you agreed to the examiners amendment, your application will proceed to publication without you even having to file an official response to an official office action. For instance, the trademark examining attorney might be reaching out to you for a disclaimer or an amended identification of goods and services. If you give your approval to what the attorney specifies in the e-mail or on the phone, then your application will reach the next stage of publication. There are two considerations to keep in mind with an examiners amendment. First, make sure the e-mails from the USPTO, because your contact information becomes public when you apply for a federal trademark application. Applicants often receive many unsolicited offers from businesses. To ensure this is a legitimate correspondence. Check that the examiners amendment email comes from an individual with a uspto.gov e-mail account. Second, the examiners amendments are time-sensitive. If you do not respond promptly, the trademark examining attorney will instead issue a formal office action, which then means you have to formally respond to an office action. In examiners amendment can save you time and energy. So if you agree to what is requested in that email, you want to provide your approval as soon as possible. 37. I received a Priority Action or a Examiner’s Amendment Priority Action 103-8: This video provides contexts on what it means to receive a priority action or an examiners amendments last priority action. If you are consulted by USPTO trademark examining attorney, such as having an e-mail or phone communication, you may receive a priority action. This means that the trademark examining attorney has explained the outstanding issue or issues about your application, and you now must formally respond to these issues. This is different from an examiners amendment. In examiners amendment, you also will communicate with the trademark examining attorney via phone or e-mail. Generally provide your authorization to make a change to resolve the outstanding issue with your application. For instance, let's say you have a disclaimer requirement and you agree to the disclaimer via e-mail, the USPTO will then issue and examiners Amendment. Now your application is ready for publication as the outstanding issue has been resolved. On the other hand, with a priority action, your applications still has an outstanding issue or issues which require you to formally respond. Party actions are also different from a non final office action or final office action, which can be issued without consulting the applicant with a priority action, the trademark attorney must reach out and consult with the applicant about his or her application. Finally, you may also receive a combined examiners amendment slash priority action. This means that you have agreed to resolve some issue or issues with your application via the examiners amendment, but there is still an outstanding issue or issues that you must formally respond to. So for instance, let's say your application needed a disclaimer and also had an unacceptable specimen. The trademark examining attorney called you on the phone and you discuss these issues. You agree to a disclaimer. That issue was resolved via the examiners Amendment. However, your applications still has an outstanding issue of needing to submit an acceptable specimen. 38. Need Help Navigating the USPTO electronic system? 103-9: It is very common for people to feel initially overwhelmed by the USPTO electronic system. If you have any questions whatsoever about navigating the USPTO electronic system, there is an office within the USPTO that is there to help. If you call 1807869199 and press one, you will be brought to the trademark Assistance Center. You can also email trademark Assistance Center at uspto.gov. Here, a representative from the USPTO can help you with any questions you have about how to navigate the system in order to submit your materials, such as submitting your response to an office action. You should call this number if you have any questions about navigating the electronic system. If you have a specific question or need clarification on the information contained in your office action, you should call the trademark examining attorneys number listed at the bottom of your office action. Be sure to have your serial number ready for this phone call. The eight-digit serial number begins with nine. And as listed on the top of the opposite sex. 39. Disclaimer Requirement 103-10: Many office actions contain a disclaimer requirements. This is very common. Let's hit the legal language out of the way. Your office action should state that the USPTO believes a word or a designing your trademark describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicants goods, and or services, and thus is an unregistered able component of the mark. So what does that mean? Let's use an example. Let's say that I'm selling t-shirts and my trademark is Zulu man cotton t-shirts. The luma is a random word and does not mean anything in relation to the t-shirts I'm selling. But what about cotton T-shirts? Cotton is a feature of the t-shirts and T-shirts is the literal product that I'm selling. So I would definitely be required to disclaim cotton t-shirts in order to successfully registered my trademark. Another way to think about disclaimers is to ask yourself, would it be unfair to have a trademark protection for these words in my industry? If you Google cotton T-shirts, you will see that almost every clothing business will need to be able to use these words in order to advertise. It wouldn't really be fair for me to receive trademark protection over the cotton T-shirts wording. After all, other clothing companies clearly need to constantly use that wording. Let's use another example. Suppose I'm a restaurant owner and my trademark is mama tias meatballs, Mommy, tell me what word do you think would need to be disclaimed? Here? Meatballs, we need to be disclaim because the wording is simply describing a feature of the restaurant that sells meatballs. Similarly, you should ask yourself, would it be unfair to have trademark protection for the wording meat balls in my industry? Yes, because the restaurant industry as a whole would need to constantly be able to use the wording meatballs to describe their goods and services. Your trademark will still be read as momma tears meatballs, mommy Tell me. But you will not have trademark protection for the word meatballs. If you received a disclaimer requirement, the USPTO is stating that you need to disclaim the word or design in order for your trademark to be registered, your office action should have provided the specific word or design that needs to be disclaimed. It may also include dictionary evidence or third-party examples of this wording or design in your industry. So you will need to respond to the USPTO that you agree with or consent to the disclaimer. Alternatively, if you disagree with the disclaimer, you would need to write a response to the USPTO arguing why you do not believe that the wording merely describes an ingredient, quality, characteristic, function, feature, purpose or use, or your goods and services. 40. Entity Clarification Requirement 103-11: An entity clarification requirement is a common requirement. The basic idea here is that based on the ownership information you provided in your initial application, there was some confusion about the owner of your trademark. As background, trademarks can be owned by a variety of owners, ranging from an LLC to an individual. More specifically, when the owner of the trademark is listed as an LLC, that LLC and not the individual owns that trademark. Here, the USPTO simply needs clarification on who owns your trademark. First, you need to consider who is the actual owner of your trademark. For instance, let's say you are an individual and you also own an LLC with the company's name of Barbara's barbershop. You have to decide whether you, as an individual, wants to own the trademark. Or you can decide that the company's barber shop, which was organized as an LLC, as it's legal entity, actually owns the trademark. Second, you need to provide this clarification in your response to the office action. For instance, if the owner of the mark is an individual, I'd write the name of the individuals such as Barbara Smith, and then specify that the owner of the mark is an individual. You also need to then specify the citizenship of the individual. Now, there is no confusion as to who owns the trademark because I've listed an individual's name and then I specified that the trademark belongs to an individual. Or let's say that I want the owner of the trademark to be the company which I've registered as an LLC. In that case, I'd list the owner of the mark as the name of the company, which is Barbara's barbershop, and specify the legal entity as an LLC. I'd also then specify the state in which I registered the LLC, such as New York. But if I had submitted in my application that the owner was Barbara's barbershop, and then I listed the legal owner as an individual. You can see why the USPTO will be confused since Barbara's barbershop is not the name of an individual. So in your response, think about who owns the trademark and then make sure the owner of the trademark is consistent with the legal owner or legal entity, such as an individual or an LLC. 41. Amended Mark Description and or Color Claim 103-12: It is common to receive an amended mark description or color claim requirement. And amended mark description requirement means that there is a correction or another way to describe the appearance of your trademark. In order for an application to be published, you will need to satisfy this requirement. For instance, if your trademark is in color, you may not have described all of the locations of color in your trademark, in the mark description. Or maybe you didn't accurately describe the appearance of the words or designs in your mark. So in the office action, the USPTO should have provided an example of an acceptable mark description for your trademark. Look carefully at this proposed language and then look at your trademark. And ask yourself if the proposed language accurately describes your trademark. If you believe that it does, you will simply copy and paste the language that the USPTO recommended to use to describe your trademark. Since that language had already been pre-approved by the USPTO trademark examining attorney as acceptable. You will know that you are satisfying this requirement. The USPTO might also provide two examples of acceptable mark descriptions for you to choose from. This often occurs when unclear whether you are claiming white as the color in your mark. Let's use the example of this Trader Joe's trademark. Let's say in my application, I only listed the color red in the color mark and describe my trademark as the mark consists of the stylized wording, Trader Joe's. Above this wording is a stylized red wine bottle, bread and cheese. All of this wording and designs are in two red concentric circles with the top of the red wine bottles spanning slightly above the top of the outer circle. Well, the USPTO might have a question about this description. In looking at the trademark, there were a lot of white parts in this trademark that are covered in red. For instance, the cheese looks white and it's enclosed by a red outline. The USPTO might wonder, did you mean to claim white as a part of your trademark? In this case, the USPTO would provide you with two examples. I'm an acceptable mark description and color claim. Option one will make it clear that you do not want to claim white as a color of your trademark. In that case, you could use the same mark description, but you would add one sentence at the end. The color white represents background and is not claimed as a part of the mark. In this case, your color claim will remain the same of just specifying the color red. That additional sentence. The color white represents the background and is not claimed as a part of the mark, makes it clear that you do not want to claim white. So what does that mean? Well, it means you have abroad trademark protection to show the whitespaces in any color. Maybe you want to have the white background of this trademark to be in blue or yellow. With this description, you still could by stating that the color white is merely background. You still have the opportunity to show those whitespaces in any color. The second option will specify that you are claiming white as a feature of your trademark. As you can see, it specifies where red and white occur in the trademark. In this case, your color claim would also then need to be amended to claim both the colors red and white. What does that mean? Well, it means you can only show your trademark as it looks like red and white. Your trademark would not be able to show the white parts in other colors because you are specifically stating that you have claim those areas as white. So if your situation requires clarification of whether to claim Why are not, think carefully about which option better suits your needs. Fortunately, the USPTO should have provided you with an appropriate mark description or mark descriptions to tubes from carefully review those examples. If you believe one accurately describes your trademark, you can copy and paste this language and your response. Then you will have satisfied this requirement. 42. Amended Identification of Goods and or Services Requirement 103-13: Receiving an amended identification of goods and or services requirement is extremely common. The basic idea here is that the USPTO needs to clearly understand what you are selling are providing. If they don't fully understand what you are selling, they will ask for an amended identification of goods or services. Here are five tips in responding to this requirement. First, the office action likely has recommendations on specific wording that is pre-approved by the trademark examining attorney. For instance, Let's say I included clothing and my initial application in class 25. You can see why clothing might be a little confusing to the USPTO. After all, it could refer to so many articles of clothing ranging from hats to bathing suits. So the USPTO would respond with an amended identification of goods requirement, which might specify the following pre-approved language, class 25 clothing, namely T-shirts, jeans. Here the USPTO has provided you with two examples of pre-approved language in the brackets. So you know that if you responded with clothing, namely t-shirts and jeans, or just one of the specific goods like clothing, namely t-shirts. It would be acceptable by the USPTO. Also, you would not include the actual brackets in your response. To conclude the first tech. If the USPTO provides you with recommended language and you find that language to be acceptable and accurate, you can simply use that pre-approved language in your response. Second, there is a trademark identification manual or ID Manual that might assist you with coming up with an acceptable identification of goods or services. Let's say that the USPTO does not provide you with recommended language to amend your goods or services or you do not agree with the recommended language provided in your office action. In that case, you can turn to the ID Manual for some guidance on coming up with specific language that describes your goods and services. The link to the ID manual should be included in your office action at the end of the section on the amended identification of goods and or services, like it is here. Or if you click on the link provided on this page, you will be brought to the ID Manual, which provides pre-approved language by the USPTO. Now let's try searching clothing. As you can see, there are a lot of results. One column describing the goods, which is the pre-approved language by the USPTO. And to the left of that is the class column. Here, I'd like my goods to stay only within class 25. So I want to make sure the recommended language is in class 25. So for instance, you'll see that doll clothing would not work because that is in class 28. If you keep scrolling down, you will see specific examples of goods in class 25, such as gloves, as clothing, jackets, and belts. If those goods accurately describe what I'm selling, I could use all of those examples in my response. Or you can search for specific articles of clothing. Let's say I'm selling bathing suits. I've searched bathing suits. I would see that this is a pre-approved description for class 25. Now, keep in mind that these are just examples of acceptable language. The ID Manual is only meant to guide you with some specific examples of pre-approved language. It is not a comprehensive list. There are many ways to write acceptable identifications of goods and services that are not part of the ID Manual. Your goods and services might be unique and not fall within the ID Manual, and that's okay. Third, you can call the trademark examining attorney for clarification on an amended identification of goods or services requirement. Suppose you receive an amended identification of goods and services requirement. You've completed the first two steps. First, you've considered the trademark examining attorney is recommended language, but it doesn't seem to totally fit with what you're selling or providing. Second, you've done some searching on the ID manual, but it hasn't been helpful. At this point. You can call the trademark examining attorney and ask for clarification on this requirement. Remember that the trademark examining attorney cannot fully understand every good and service provided in the United States. If you have a good or service that is unique, for instance, you might need to speak with the trademark examining attorney to fully explain to them what you are selling. The trademark examining attorney's phone number is listed at the bottom of the office action in the signature block. Be sure you have your serial number, which is the eight-digit number that begins with nine. Ready, before you call forth, you cannot broaden the scope of your goods and services. What does broaden the scope mean? It means that in your response, you can't expand what you're selling from what you previously specified in your application. Let's use an example. Suppose in my application, I listed the following goods in class 25. Swimsuits, hats, and footwear. I've clearly identified three specific articles of clothing. I cannot then add umbrellas in my response because that would broaden what I specified in my initial application. Or let's say my initial application stated that I'm selling polka dotted brown shoes for women in class 25. I can then respond with footwear. In my response to the amended identification of goods requirement. After all, I provided a very specific example of polka dotted brown shoes for women in my initial application. And footwear can be many different things, such as men shoes, slippers. Responding with footwear therefore would be broader than the good I listed in my initial application. So to recap, make sure your response to an amended identification of goods does not broaden the scope of your goods and services. Remember that you should only include goods and services that you are actually selling or plan to sell or provide. Remember that if you are applying under A1A basis, You were saying that your goods and services are already in commerce. So you only want to list the goods and services you are actually selling with your trademark. If you're applying under one V basis, you are saying that you have a genuine intent to sell the goods and services with your trademark. If you do not have a genuine intent to sell goods and services, you should not include them in your application. Your statements to the USPTO must be honest. 43. Amended Classification and Identification of Goods and Services Requirement 103-14: Receiving an amended classification and identification of goods and or services requirement is extremely common. As a recap, there are 45 trademark classes. What amended classification of goods and services means is that at least some of the wording in your initial applications, identification of goods and services could fall within multiple classes. And the basic idea behind amended identification of goods and services is that the USPTO needs to clearly understand what you are selling or providing. If your goods and services aren't sufficiently described, the USPTO will not be able to understand what you are. Even selling. Additional information is required for the USPTO to be able to get that clear understanding of what you're selling. Here are five tips on how to respond to an amended classification and identification of goods and services requirements. First, the office action likely has recommendations on the correct classes and specific wording that is pre-approved by the trademark examining attorney. Under this requirement, the USPTO has likely responded with pre-approved language for describing the goods and services, as well as the additional classes where your goods and services might fall under. Let's use an example. Let's say I applied only for baskets in class 26. Well, it turns out baskets is a very broad term. It could be classified in class 26 for sewing baskets, or in class 21 for flower baskets. In such cases, the application might even provide a recommendation to help me, such as recommending the following two examples of acceptable classes and identification of goods for baskets. The USPTO is telling you that your language of baskets too broad because it could fit within multiple trademark classes and is then providing two instances of acceptable language for baskets in two classes. For class 26, for instance, it provides recommended language of specifying sewing baskets to enable the USPTO to both classify and understand the goods. It also provides an example of baskets in class 21 by showing an additional class of class 21 and the specific description of flower basket. Now this doesn't mean I have to add class 21 to my response. If you are only selling sewing baskets, you can simply respond with the identification of sewing baskets in class 26. That way, you are providing additional information to the USPTO to understand your goods and making it also clear that you are only selling goods in class 26, and then you are not selling goods in class 21. Or if you are selling both flower baskets and class 21 and sewing baskets and class 26, you could respond by saying, We're selling sewing baskets in class 26 and adding class 21 in your response and specifying that you were selling flower baskets as well. That's totally up to you. And based on what you are actually selling or plan to sell. If you are adding classes, make sure to review the multi-class application requirements video, which explains how you will have to pay fees if you haven't already paid for additional class or classes. You may also have to provide a specimen for the additional class as well. Let's use another example. Suppose I applied only for clothing in class 25. You can see what clothing might be a little confusing to the USPTO. After all, it could refer to many articles of clothing, such as hats or bathing suits in class 25, to doll clothing in class 28. So the USPTO would respond with an amended classification and identification of goods requirement, which might specify the following pre-approved language as Recommendation. Class 25, clothing, namely T-shirts, jeans, pants, class 28, dark clothing. Here the USPTO has provided you with three examples of pre-approved language in the brackets for class 25, T-shirts, jeans and pants. If you wanted to add another class. It has also provided you with acceptable language for class 28, dark clothing. So you know that if you have responded with clothing, namely T-shirts, jeans, pants, or just one of the specific goods like clothing, namely t-shirts. It would be acceptable by the USPTO in class 25. Also, you would not include the brackets in your response. Instead, you would respond with class 25 clothing, namely T-shirts, jeans, pants. Now suppose I'm not selling to all clothing. That case. I would just ignore the recommendation for dark clothing in class 28, and instead, provide additional specificity for the clothing that fits within class 25, such as t-shirts and jeans. To conclude the first tip, if the USPTO provides you with recommended language and you find that language to be acceptable and accurate, you can simply use that pre-approved language in your response. Second, there is a trademark identification manual or ID Manual that might assist you with coming up with an acceptable identification of goods and services that is properly classified. Let's say that the USPTO does not provide you with recommended language to amend your goods and services or you do not agree with the recommended language provided in your office action. In that case, you can turn to the ID Manual for some guidance on coming up with specific language. The link to the ID manual should be included in your office action at the end of the section on the amended classification, identification of goods and or services like it is here. Or if you click on the link provided on this page, you will be brought to the ID Manual, which provides pre-built language by the USPTO. Now let's try searching clothing above. As you can see, there are a lot of results. One column describes the goods, which is the pre-approved language by the USPTO. And to the left of that is the corresponding class. Here, let's say I'd like my goods to stay within class 25. In that case, I want to make sure the recommended language is in-class 25 and not within other classes. So for instance, you would see that the doll clothing would not work because that is in class 28. If you keep scrolling down, you will see specific examples of goods in class 25, such as gloves, as clothing, jackets, and belts. If these goods accurately describe what I'm selling, I could use all these examples in my response. Or you could search for more specific articles of clothing. Let's say I'm selling bathing suits. If I search bathing suits, I would see that this is a pre-approved description for class 25. Since bathing suits fit within the initial broad language of clothing, that would be acceptable. Now, keep in mind that these are just a few examples of acceptable language. By d manual is only meant to guide you with some specific examples of pre-approved language. It is not a comprehensive list. There are many ways to write Acceptable Identification of goods and services that are not part of the ID Manual. Your goods and services might be unique and not fall within the ID Manual, and that's okay. Third, you can call the trademark examining attorney for clarification on an amended classification and identification of goods or services requirement. Suppose you receive an amended classification and identification of goods and services requirement. You've completed the first two steps. First, you've considered the trademark examining attorneys recommended language, but it doesn't seem to totally fit what you're selling or providing. Second, you've done some searching on id manual, but it hasn't been helpful. At this point. You can call the trademark examining attorney and ask for clarification on this requirement. Remember that your trademark examining attorney cannot fully understand every good and service sold or provided in the United States. The trademark examining attorneys number is listed at the bottom of the office action. Be sure to have your serial number, which is the eight-digit number that begins with nine. Ready before you call forth, you should know that you cannot broaden the scope of your goods and services. What does broaden the scope mean? It means that in your response, you cannot expand on what you're selling from what you previously specified in your application. Let's use an example. Suppose my application, I listed the following goods in class 25, swimsuits, hats, footwear. I clearly identified these three articles of clothing. I cannot then add umbrellas and my response because that would broaden what I specified in my initial application. Or let's say my initial application stated that I'm selling polka dotted brown shoes for women in class 25. I cannot then respond with footwear in my response to the amended identification of goods requirement. Why not? Because I provided a very specific example of polka dotted brown shoes for women in my initial application. And footwear can mean many different things, such as a man shoes, slippers. Responding with footwear, therefore, would be broader than the good I listed in my initial application. So to recap, make sure your response to an amended identification of goods does not broaden the scope of your goods and services. Fifth, remember that you should only include goods and services that you are actually selling or plan to sell or provide. Remember that if you are applying under A1A basis, you are saying that your goods and services are already in commerce. You only want to list the goods and services you're actually selling. If you're applying under H1B basis, you are saying that you have a genuine intent to sell the goods and services. If you do not have a genuine intent to sell goods and services, you should not include them in your application. Your statements to the USPTO must be honest. 44. Multi-Class Application Requirements 103-15: Multi-class application requirements are included in office actions when your applied for goods or services could fit within additional classes and you haven't paid for those additional classes. So what does that mean? As background, there are 45 classes for goods and services. Suppose in your initial application, you submitted the wording clothing and class 25, and you only paid for one class. While clothing is a broad term and it fits within multiple classes. For instance, it could mean t-shirts in class 25, or it could mean all clothing in class 28. So that's the problem. The USPTO might recommend to potential classes, like class 25 clothing, namely t-shirts, and class $28 clothing. Or let's say you applied for the following two goods, all in class 25 t-shirts, doll clothing, and you only pay for one class. Well, Dahl clothing should have been placed in class 28. So that's a problem to the USPTO will respond by showing how these goods are in two different classes. In these cases, where the words of my goods or services could fit within multiple classes and I haven't paid for the additional class or classes. The USPTO will issue multi-class application requirements. What this basically means is that your application actually falls within multiple classes and you have some decisions to make. Specifically, you need to decide whether you want to add and pay for another class. Well, I can't just add another class without fulfilling all the requirements for that class. First, I would have to pay an additional fee for adding class 28 s. If I'm already selling or providing those services or goods, I would also have to provide proof in my response. For instance, if I'm already selling doll clothing and I hadn't already provided a specimen or proof in the initial application that showed I'm selling doll clothing with my trademark, I would now need to provide that specimen in my response. You can review the video on specimens for appropriate specimens. But if you are not already selling or providing those goods or services, you won't need to provide that proof at this point. If I am not yet selling doll clothing, I wouldn't provide that proof at this stage, although eventually you will have to do so in order to register a trademark. But what if I don't actually want to include doll clothing and my application? That's totally fine. You would just move forward then with the class or classes you already paid for. You would just want to make sure that you respond by correcting the issue. So in the first example, which had broad language of clothing and class 25, you'd want to make sure to respond with more specific examples of clothing that only fits within class 25, such as T-shirts. Other more specific examples can include genes or pants. That way, there's no more language that could also fit within class 28 in your response, such as doll clothing. Now let's discuss the second example where you included t-shirts, dark clothing in class 25. Even though dark clothing should be in class 28. If you don't want to add and pay for class 28, you'd simply delete that problematic warning from your application. You delete dark clothing and move forward with the remaining language in class 25 of t-shirts. You can also review the amended classification and identification of goods and services video or amended identification of goods and services video for more tips. 45. Translation Statement 103-16: A translation statement requirement means that the USPTO believes that at least some of the wording in your mark is in a different language. Your office actions should have provided a recommended translation statement. For instance, let's say my mark is dominoes POJO. If I did not include a translation statement in my initial application, the USPTO would require a translation statement for the word foil, which means chicken in Spanish. The English translation of the word boil in the mark is chicken. Since I agree with the translation statement, I would simply copy and paste this translation statement in my response to the office actions. 46. Name Inquiry 103-17: A name inquiry generally occurs when there is a name in the trademark and the USPTO needs additional information as to whether that name identifies a living person. The reason behind a name inquiry is to protect individuals right of privacy and an individual's right to make money off of their name. For instance, Let's say I applied for the trademark, came card aschenes celebrity makeup. Well, you can see why this trademark clearly identifies a living person. Can pedestrian. And you can also imagine that Kim Kardashian wouldn't be happy to have another person making money off of her name and identity with this trademark. So this name inquiry is the USPTO is way of asking additional information to prevent people from registering trademarks that identify other living individuals. Now Kim Kardashian was a pretty obvious example, but name inquiries can extend to a wide variety of examples. For instance, name and queries can be issued for pseudonyms, nicknames, or even stage names. So how do you respond to a name inquiry? Let's begin with responding to a name inquiry when the trademark does identify a living individual. For instance, let's say my nickname is Lisa Mac and my trademark is Lisa max, flip and hot dogs. Well, the nickname Lisa Mac refers to me. In that case, I would need to inform the USPTO that Lisa Mac refers to meet a living individual, and then I give my consent to use this trademark. Here, I could respond with the following two steps. First, on the USPTO response form under the name, portrait and signature section, I choose the first option. Then there's one more step. See the part that says, Click here to attach slash remove consent. Click on that. Here. You'll upload a PDF in which you provide your signature under the following statement. I consent to the use and registration of my name, portrait, and or signature as a trademark and service mark to the USPTO. Here's an example of the PDF. Now let's say you made up the name Lisa Mac and it doesn't refer to a living individual. If Lisa Mac is simply a fictional name that doesn't identify an actual living person. I would need to inform the USPTO that this name does not identify an actual living person. Here you would respond with just one step. Name, portrait, and or signature shown in the mark does not identify a particular living individual. That way, you're simply letting the USPTO know that the name and your trademark does not identify a living person. 47. Request for Information 103-18: You may see a request for information in your office action. This might occur when the USPTO has additional questions about your specimen, your goods and services, or even the location of where you're selling your goods and services. The requests for information should consist of specific questions that you must answer in your response. For instance, suppose one of the requests for information questions asked my goods originate in Los Angeles, California, I would then clearly respond that, yes, buy goods originate in Los Angeles, California. Or no, my goods do not originate from Los Angeles, California. If there are multiple questions and requests for information, make sure to answer all of these questions. Consider each of these questions and answer them truthfully in your response. Now, if you're confused about any of these questions or aren't exactly sure what is being asked. You have every right to call the trademark examining attorney handling your application. To ask for clarification, this number is listed in the signature block on the office action. Remember, when you call the trademark examining attorney, you should have your serial number ready to provide. This is the eight-digit number listed on your office action that starts with mine. 49. Can I get an extension to file a Statement of Use? 103-20: A lot of applicants ask, is it possible to get an extension in order to file a statement of use at a later time? The answer is yes. So let's say you applied for a trademark under a one B, intent to use basis, and you received a notice of allowance. The good news. The notice of allowance means that your trademark was published by the USPTO and it survived the opposition period. The bad news. You won't have a registered trademark until you successfully provide a statement of use. As a reminder, when you apply under a one B basis, you have a truthful intent to use your trademark with your goods and services. But now you have to show that you are in fact using the trademark and commerce with your goods and services. You do this by providing a statement of use, which is evidenced or proof of using your trademark with your goods and services. You can review the specimen video for how to submit acceptable proof and extension request is a sworn statement that you still have a truthful intent to use your trademark in commerce, but you need additional time. Finally, you will have to pay $125 per class. 50. Submitting a Statement of Use 103-21: If your application has been published by the USPTO, be haven't yet provided proof that you are selling your goods or services, then you still have another step before your trademark can become registered. You now need to provide a statement of use. This is the word that simply means you are providing proof in the form of what is called a specimen, that you are actually selling goods or providing services with your trademark in business. For information on how to submit a proper specimen for this important step, watch the next video on submitting a proof to the USPTO. 51. Unacceptable Specimen or Statement of Use 103-22: In order for your trademark to become registered, you need to provide proof that you are selling products and providing services. You should first review the video on submitting a specimen, which provides an explanation of how to submit proper specimens. Now, it's common to receive a refusal in an office action that your specimen or statement abuse wasn't acceptable. Let's go over seven common mistakes about why the specimens might be unacceptable to the USPTO. Number one, you didn't include your trademark on the specimen. Let's say my trademark is Jimmy Rama. I'm selling t-shirts. If I submit a specimen of the t-shirt without the trademark on it, then that wouldn't be acceptable. In that case, I would submit a new specimen with the trademark. Number two. Your specimen wasn't legible. This just means that your specimen couldn't actually be read properly. Perhaps it was too blurry that the USPTO couldn't make out the wording or designs and your trademark. Number three, you didn't show your trademark with your applied for goods and services or your apply for class. Let's say my trademark is Jimmy Rama, and I'm selling t-shirts for my specimen. I submitted a toaster with my trademark on it. This does not show the trademark with my applied for goods because I didn't apply for toasters. To fix this, review your identification of goods and services. If you did not apply for toasters, you shouldn't provide a specimen with a toaster in it. Also makes sure you include a proper specimen for each of the required classes. For instance, if I'm selling t-shirts and class 25 and jewelry and class 14, I would need to provide a suitable specimen for t-shirts and glass 25 and for jewelry in class 14. Number four, you didn't show a direct association with your services. Your specimen for providing services should show potential consumers a direct association between the trademark and the services. Make sure there are words or pictures that make it clear what you are providing. If you receive this refusal, the USPTO believes there is not a proper nexus or connection between your trademark and your services. Number five, you didn't provide the required URL slash date accessed on your application. Remembering that we're submitting a website, you need to list the URL and the date that you accessed the URL. If you provided a screenshot or image of your Amazon page, you can copy and paste the website shown on the specimen. The date access is the day I went on my website and took the image or screenshot. If I took the screenshot on March 12th, 2022, I'd put down March 12th, 2022. Remember, it's not the date you created the website. If this was the only basis for your unacceptable specimen, it generally means that everything else about your specimen was fine. It was simply missing the information for the URL and or the date accessed. This one should be an easy fix. Number six, your website didn't show a proper electronic point of sale display associated with your goods. What does this mean? Well, a point-of-sale display is when a consumer can view the trademark with your goods and immediately purchase those goods. For electronic point of sale displays, we look at a three-part test. First, if it contains a picture or textual description of the identified goods. Second, if it shows the mark in association with the goods. And third, if it provides a means for ordering the identified goods. A common specimen for an electronic point of sale display is providing your Amazon page. Here you'll see a picture of a written description of the goods being sold, the trademark next to the goods, and the Add to Cart button, which allows consumers to immediately purchase those goods. That case, I provided a proper point-of-sale display. But what if I provide it a website that shows my trademark and the goods I'm selling, but it doesn't show the ability to immediately purchase those goods. In that case, it would not be an acceptable electronic point of sale. Display. Number seven, your specimen was digitally altered or a mock-up. The USPTO wants to see your trademark used in actual commerce or business. Receiving a digitally altered or mock-up refusal means the USPTO does not believe you have shown actually use in commerce. For instance, the USPTO does not want a computer-generated image. Or when it looks like you used a computer to digitally add a trademark to your product. Why? Because it doesn't then look like your goods are actually in commerce. And said It looks like you had to use a computer to make it seem like you are providing your goods and services. E.g. this is a digitally altered specimen because the image of Jimmy Rama was clearly digitally place over another company's product. The purpose behind this refusal was heightened when the USPTO received a lot of fraudulent specimens. So they have been more proactive with making sure specimens are legitimate. If you had used a computer to alter your specimen as opposed to showing your actual product with the trademark on it. Make sure your new specimen only shows your actual goods and services. When you receive this type of digitally altered or mock-up refusal, you should also have received a request for information about your trademark. These are simply questions about your specimen and you should answer them fully and truthfully. 52. Mark on Specimen and Drawing Do not Match 103-23: In your office action, you may have received the following refusal that your marks on specimen and drawing do not match or defer or specimen drawing do not match or defer. Before we begin, let's do a brief overview of what a specimen and a drawing is. When you submit a specimen, you are submitting proved to the USPTO that you are using your trademark in connection with your goods and services. A drawing is just the name for how your trademark is depicted. When you receive this refusal, the USPTO is simply saying that the drawing or description of your trademark in your application does not match the trademark shown on your specimen. Let's use some examples. Let's say I applied with the applied for a trademark or drawing of Ptolemy's green cars in a Standard Character forum for t-shirts. But on the specimen, I've only included the word Tommy's with no reference to green cars. Here, the drawing and the trademark and the specimen do not match because the trademark in the specimen does not have all the same words shown in the drawing. Or let's say I applied with the applied for Mark or drawing of a stylized pink Cindy's ice cream with a stylized pink ice cream cone to the right of the wording. And I'm selling t-shirts. But on the specimen, the wording, Cindy's ice cream is in blue. And the ice cream cone is blue. And to the left of the wording, in this case, the drawing and the application and the trademark in the specimen do not match because they are not only in different colors, but the placement of the ice cream cone in relation to the wording is different too. So what can you do to fix this refusal? Well, you can submit a new specimen so that the drawing does match the specimen. For instance, I can include a new t-shirt with the wording Ptolemy's green cars on the shirt. Now they match. Or in some cases, I can change the drawing to match the specimen. So let's use the same Cindy's ice cream example. Instead of providing a new specimen, I can provide a new drawing to match the specimen. In this case, the new drawing would be the blue stylized wording, Cindy's ice cream with the stylized blue ice cream cone to the left of the wording. Now, you can only do this if the new drawing isn't a significant or what the USPTO calls a material change. If you choose this option, you will have to provide a new mark description in your response to your trademark is not in standard characters. After all, you're submitting a new drawing. So the old Mark description needs to be changed so that it describes the new drawings. 53. Sections 1, 2, and 5 Refusal - Merely Ornamental 103-24: Let's start with what an ornamental refusal is. When you submit a specimen, your trademark might have been shown in a way that did not actually act as a trademark. How does that happen? Well, let's remember that a trademark acts as a source indicator of your goods and services. For instance, when you see the small Nike Swoosh symbol on this pair of socks, you associate Nike as a source of these socks. As you can see, the symbol is put where trademarks are commonly put on socks. When you receive an ornamental refusal, the USPTO is arguing that apply for Mark is merely a decorative feature and not acting as a source indicator. Let's use another example. When you see this t-shirt, you see the polo symbol on the T-shirt where trademarks are commonly seen. For instance, if you go Well, they're T-shirts. You'll see that many brands put their trademark in this area on the top right portion of the shirt. Here it is clear that polo is a source indicator. But let's use this example of this t-shirt. As you can see, the wording, don't run to me, is sprawled across the center of the entire t-shirt. When you see this wording, dissociate this as an actual source indicator. Does it tell you that a certain brand made this t-shirt? No. But the placement of the trademark just looks like a decoration. It isn't really acting as an actual trademark. There are a few ways to respond to this refusal, but we'll go through five common approaches. The first option, which is very common, is providing a new specimen where the trademark on your goods and services is not ornamental. With a T-shirt example, I've been submitted a new specimen with the trademark use in a non ornamental way. For instance, I could submit a specimen with the trademark on the T-shirt shown in a non ornamental way, like in the corner, and not spanned across the entire t-shirt. I could also show the trademark on the packaging of the T-shirt, like on a box. Or I could show the trademark on a tag connected to the T-shirt. Google is your friend with figuring out examples of non ornamental usage that is acceptable. For instance, let's say I'm selling shirts and I got an ornamental refusal. If I'm not sure of an example of a non ornamental usage, I searched Google to see what is common in the industry for the placement of trademarks on the goods or services. Here I see that Lacoste, Nonaka and polo shirts all have an example of trademark in a small area at the top right part of the shirt. The shirts all act as a source indicator. And so if I had a similar example of my trademark on the top-right portion of a t-shirt. This would be likely acceptable. When you submit a new specimen that shows not ornamental usage. Remember that you still have to meet all the requirements for an acceptable specimen. For a more detailed look at specimen issues, you should look at the specimen video. The remaining four options are much less common, but we'll go through them. The second option is much less common than the first option. Suppose you already had a registered trademark for the same trademark or another pending application with the same trademark that shows an acceptable non ornamental specimen for other goods and services. In other words, let's say you're currently applying for the trademark. Johnny Tim's in class 25 received an ornamental refusal, but also have a pending application for Johnny Tim's in class 18 that shows an acceptable non ornamental specimen. Or you have a registered trademark, Johnny tins in class 14. Well, in that case, you can overcome the ornamental refusal in class 25 by saying you have a secondary source. So to recap, if your trademark is already the same as a registered trademark you own, or if you have another application with the same trademark that is pending that shows an acceptable non ornamental specimen. You can choose this as an option. A third option is amending to the Supplemental Register for information on Supplemental Register and the protections that provides review the supplemental video. The fourth option is to amend your application to a 1D, intend to use spaces instead of the current basis of one, which means your goods or services are in commerce. However, if you do pursue this option, you will be required to provide an acceptable non ornamental usage on a specimen at a later date. Also, if you've already submitted a statement of use, you unfortunately can no longer a men to a one be. The fifth option is to argue that your trademark has acquired distinctiveness under this section to F. This can be established in a variety of ways, including if you use your trademark for a long time in commerce, such as over five years, have evidence of advertising, sales and consumer statements. And evidence that shows that consumers associate the applied for goods and services with your trademark. For additional information on the fifth option. You can also review the video on to acquired distinctiveness. Most people will likely have to choose the first option to overcome this refusal. 54. Section 2(d) Refusal - Likelihood of Confusion 103-25: One of the most common refusals for trademarks is a section 2D likelihood of confusion refusal. A section 2D likelihood of confusion refusal is issued when there is already a registered trademark on the register that the USPTO argues is confusingly similar to your trademark. Let's first begin with how the USPTO decides to issue a section 2D likelihood of confusion refusal. There are two parts to this determination. The USPTO first considers the similarity of the marks themselves. There are many ways that trademarks can be similar. They could be identical, such as Google versus Google, or they can be phonetic equivalents. Trademarks can also be found to be similar when even though they might not look or sound the same, they create the same meaning to the consumer. An example of this is to cats versus dose ghettos. These trademarks look and sound different, but they have the same meaning. Many consumers will see those ghettos and immediately think the meaning is two cats. So when we are considering similarly confusing trademarks, we have to keep in mind that there are many ways that trademarks can be similar. They might be identical, they might be phonetic equivalents, or they might do a combination of ways convey the same meaning. The USPTO then considers the similarity of products and the services between the trademarks. It's not enough just for trademarks to be similar. They also have to be selling or providing related goods and or services. So let's use an example. Let's say we're considering the trademark of kitty shenanigans versus cat shenanigans, the marks are similar because they convey a similar meaning. But what if the trademark Katie shenanigans is for kitty litter? And the trademark cat shenanigans is for website development services. Buying kitty litter feels very different from buying website development services. If I'm buying kitty litter, I'm going towards a very specific aisle at the grocery store. Whereas if I'm looking for someone to help me build a website, I most likely looking online or for referrals from friends. It's very difficult to imagine a company that provides kitty litter and website development services. Even though the trademarks seems similar in the first step, it would fail the second step because the goods and services aren't related. Let's use another example, but the same trademarks. But kitty shenanigans is for t-shirts and cat shenanigans is for jewelry. Or t-shirts confusingly similar to jewelry to cause confusion, the best way to check is to use Google. If you Google jewelry and t-shirts, do you see a good deal of companies that provide both? The answer is yes. In fact, a ton of clothing brands also provide jewelry. So consumers that are shopping for clothing will very likely also come across jewelry in the same store. In that case, the trademark of kitty shenanigans and cat shenanigans are confusingly similar and the goods are related. So now that you have a better idea of how the USPTO determines section 2D refusals for likelihood of confusion, you might be wondering, how do I respond to a section 2D refusal. The first part is to carefully consider the USPTO arguments and decide whether you agree with the refusal. Remember that the trademarks don't have to be identical to be found similar. There are many ways for the trademark to be similar, including if they create the same meaning to customers and the goods or services also do not have to be identical. Rather, you look to see if the goods and services are similar or related. So take a step back and objectively look at the refusal. There will usually be some differences between the trademarks, but are they meaningful differences? Like I mentioned previously, when you are considering whether the goods and services are related, google is your friend. When you Google the goods and services, do you see a lot of examples of businesses or brands that sell or provide your goods and services, as well as the registrants goods and services. If the trademarks are confusingly similar and the goods and services are related, it will be very difficult to overcome this refusal. Now, assuming you don't agree with the USPTO, you can respond with arguments against the refusal. Remember, the two-part tests at the USPTO uses to determine whether trademarks are confusingly similar. Here you use the same test, but you would make arguments against the similarities. So let's begin with the first part of the test, the similarity of the trademarks. Carefully consider the trademarks and ask yourself, what is different about these trademarks. Some questions to ask. Do they have different meanings? In other words, when a consumer looks at your trademark, then looks at the registered trademark with the consumer have different interpretations of the meaning. Do they look or sound differently? Are there a lot of similar registered trademarks with the same wording or designs selling related goods or services. In that case, you can argue that the marks are diluted. In other words, you're saying that the USPTO has allowed many similar trademarks with similar wording or designs to co-exist as registered trademarks with related goods and services. So yours should be allowed to co-exist as well. Does your trademark have a prominent design? Does the registered trademark have a prominent design? These are some of the questions to ask yourself when arguing that the trademarks are not similar. Then you will go to the second part of the test. Here you'll carefully look at the goods and services in your application. And the goods and services in the registered trademark. Ask yourself, did the USPTO show that these goods and services were similar? To help answer this, look at the evidence provided by the trademark examining attorney. Often, the trademark examining attorney will attach evidence from brands that purportedly sell both the applicant and registrants goods and services. Now ask yourself, does the evidence show persuasive examples of brands that sell both your goods and services and the registrants goods and services. If the USPTO use evidenced from a big box store like Walmart, which sells many goods and services. This would not be persuasive evidence. After all, Walmart sells almost everything. On the other hand, brands that specialize in selling both your goods and services as well as registrants goods and services would be more persuasive evidence. You should also consider how many specific examples they provided. For instance, let's say I'm selling t-shirts and class 25 and light bulbs and class 11. And the registrant is selling LED light fixtures in class 11. Well, let's say the USPTO provides a few examples of the LED light fixtures being related to light bulbs, but no examples of the LED light fixtures being related to the t-shirts. That's something I'd point out in my response. In that case, you'd be arguing that the refusal shouldn't apply to the unrelated goods of t-shirts in class 25. So you want to ask herself whether you can argue that the USPTO didn't provide persuasive evidence that the goods and services are related. One final note, some applicants receive a partial refusal for a Section 2D refusal, likelihood of confusion. This means that the USPTO is only applying the section 2D refusal against certain goods and services or certain classes in your application. Here, The Office action should clearly specify which goods or services or which classes through refusal applies to. What that means is that the refusal will not apply to the goods and services or classes that are not referenced. To recap, a section 2D refusal is a common refusal and unfortunately acts as a complete bar to registration. You have to objectively consider whether you agree with the USPTO based on the two-part test described above? Depending on the trademarks, This can be a very challenging refusal to overcome. If you disagree with the USPTO determination and choose to respond to this refusal, you should use the same two-part test to consider the ways in which you believe the trademarks, as well as the goods and services, are dissimilar. 55. Advisory - Prior Pending Application(s) Filed 103-26: Before we begin talking about prior pending application advisories, let's remember that one of the most common refusals is a section 2D refusal likelihood of confusion. A section 2D refusal likelihood of confusion means that the USPTO believes another registered trademark for related goods or services is confusingly similar to your trademark. Note that this refusal is based on a registered trademark. But what happens if somebody already applied earlier than you? And their trademark might be confusingly similar to your trademark, but their application hasn't yet been registered. In other words, suppose you submitted the trademark Jubilee for t-shirts on June 1, 2021. But a month earlier, another applicant submitted the trademark Jubilee for t-shirts on May 1, 2021. That applicant filed their trademark before you. And it is clearly confusingly similar to your trademark, but it hasn't yet been registered into a trademark. What that means is that the USPTO has identified a pending application that might be confusingly similar to your trademark. However, it is only when that application actually registers that the USPTO will decide whether to issue a section 2D refusal based on that trademark. A prior pending application advisory does not automatically mean that this prior pending application will eventually become a section 2D refusal applications or refused for many reasons. So it is possible that the prior application might become abandon or the pending application might register, and the USPTO might determine that a section 2D refusal shouldn't be issued because the trademarks are not confusingly similar. Or the pending application could register and the USPTO might determine that the now registered trademark is confusingly similar to yours, and it will then issue a section 2D refusal. So what do you do when you receive a prior pending advisory? If you received a prior pending advisory in your office action, you can choose whether or not to specifically respond to this advisory in your response, similar to a section 2D refusal, you can submit a response as to why you believe your trademark is not convincingly similar to the pending application. You can review this section 2D refusal, likelihood of confusion video for more information on submitting responses for confusingly similar trademarks. Or you can simply choose to not address this prior pending application advisory when you submit your response to the office action. Why? Because if and when that application does register and it becomes an actual refusal, the USPTO will issue another non final office action. At that point. Prior pending application will become a section 2D refusal and you'd have the opportunity to provide a response then, however, you must provide a response that addresses the other refusals or requirements listed in the office action, even if you choose to not address the prior pending advisory in your response. So to recap, a prior pending advisory is simply the USPTO stating that it has determined that there is a trademark that was filed before yours, but has not yet been registered. That might be confusingly similar to yours. When you respond to your current non final office action, you can provide arguments as to why you believe the prior pending application is not confusingly similar to yours or when you respond to other issues in your office action, you can choose to not respond to this advisory. Then if that pending application becomes registered at a later date and the USPTO argues that it is confusingly similar to yours. You will receive another non final office action with that section 2D refusal. At that point, you'd have the opportunity to respond to that non final office action with why you don't believe that the trademarks are confusingly similar. 56. received a Suspension Notice about a Prior Pending Application(s) 103-27: This video discusses what to do when you receive a suspension notice from the USPTO that specifies a prior pending application. But before we begin talking about suspension notices that specify a prior pending application, remember that one of the most common refusals is a section 2D refusal likelihood of confusion. A section 2D refusal likelihood of confusion means that the USPTO beliefs than another registered trademark for related goods or services is confusingly similar to your trademark? Nope. That this refusal is based on a registered trademark. But what happens if somebody applied earlier than you and their trademark might be confusingly similar to your trademark, but their application hasn't yet been registered. In other words, suppose that you submitted the trademark Jubilee for t-shirts on June 1, 2021. But one month earlier, another applicant submitted the trademark Jubilee for t-shirts on May 1, 2021. That applicant filed their trademark before you. And it is clearly confusingly similar to your trademark, but it hasn't yet been registered as a trademark. What does that mean? What that means is that the USPTO has identified a pending application that may be confusingly similar to yours. However, it is only when the application actually registers that the USPTO will decide whether to issue a 2D refusal based on that trademark. A suspension notice that specifies a prior pending application does not automatically mean that this prior pending application will eventually become a section 2D refusal applications or refused for many reasons. So it is possible that the prior application might become abandoned or the pending application might register and the USPTO might determine, then that is Section 2D refusal shouldn't be issued because the trademarks are not confusingly similar. Or the pending application could register and the USPTO might determine that the now registered trademark is confusingly similar to yours, and it will then issue a section 2D refusal. In that case, you will receive a formal correspondence from the USPTO as a non final office action that explains this refusal. When you receive a suspension notice regarding a prior pending application, it means that the USPTO is awaiting the outcome of that prior pending application before it makes the decision on whether it is confusingly similar to your trademark. Think of it like a pause. So what do you do when you receive a suspension for our prior pending application? Well, you can choose whether or not to respond to this suspension notice. You may simply choose not to respond to this suspension notice. Why? Because if and when that application does register and it becomes an actual section 2D refusal, the USPTO will issue another non final office action. At that point, the prior pending application will become a section 2D refusal and you'd have the opportunity to provide a response, then no response is necessary for you to provide at this point. However, if you do want to respond, you can by selecting response to suspension inquiry or letter of suspension. Here, you can make arguments about why you do not believe the prior pending trademark is confusingly similar to your trademark. You can review this section 2D refusal, likelihood of confusion video for more information on submitting responses for confusingly similar to trademarks. So to recap, a suspension notice with a prior pending application is simply the USPTO stating that it has determined that there is a trademark that was filed before yours, but has not been registered yet. That might be confusingly similar to yours, but an actual determination will be made if and when that power pending application becomes registered, no responses required from you at this point. If that prior pending application becomes registered at a later date, and the USPTO argues that it is confusingly similar to yours, you will receive another non final office action with the section 2D refusal. At that point, you'd have the opportunity to respond to that mom final office action with why you don't believe the trademarks are confusingly similar. 57. Section 2(e)(1) Refusal – Mark is Merely Descriptive 103-28: Section two, E1 refusal that your trademark is merely descriptive, is a relatively common refusal. Before we discuss this refusal, we need to briefly review the five categories of trademarks. Generic, descriptive, suggestive, arbitrary, and fanciful. Three of these categories can always be registered, suggestive, arbitrary and fanciful, and generic marks can never be registered. And descriptive marks have the potential to be registered. Okay, Let's go through examples to better understand that. We'll start with generic trademarks. Suppose I'm selling candy and I want my trademark to be candy. This won't be acceptable as a trademark because candy is just the commonly understood name of what I'm selling. The reason generic trademarks can never be registered has to do with the purpose of trademark. We registered trademarks to prevent other companies from profiting off our hard-earned brands and customer loyalty. It wouldn't make sense to allow people to register for generic trademarks because everyone in the candy industry needs to be able to use words like candy and advertising materials. The second category is descriptive trademarks. If you received a section to E1 refusal, the USPTO believes that your trademark describes an ingredient quality, characteristic, function, feature, purpose, or use of what I'm selling. So let's say I'm selling candy and I want my trademark to be sugar. This would be a descriptive mark because sugar is an ingredient in candy, descriptive trademarks are unlikely to get registered on the Principal Register because they merely describe what you're selling. The remaining categories can all be registered on the Principal Register. The third category is suggestive trademarks. Suggestive trademarks hint at what you're selling, but doesn't actually describe what you're selling. Another way to think of suggestive trademarks is that they take some imagination for consumers to understand what you're selling. An example of a suggestive trademark for candy is Almond Joy. These words hint at what you might be selling like candy, but it takes some imagination to get there. The fourth category is arbitrary trademarks. This is a trademark that may have common understanding for another product or service, but doesn't relate to what you're selling. An example of an arbitrary mark is both for selling candy, but would be generic if you're selling boats, but has no meaning in relation to candy. And finally, the fifth category is fanciful trademarks. The best way to think about these trademarks is that they have no meaning. An example of this would be Comanche for Candy, since can Mackey is a made-up word and has no meaning in any language. It is considered fanciful. And because fanciful trademarks are unique, they are entitled to the strongest level of protection against possible infringers. So how do you respond to this section to E1 refusal? The first approach is to argue against the merely descriptive refusal. Here, you could argue that your trademark does not merely describe an ingredient quality, characteristic, function, feature, purpose, or the use of what you're selling. Instead, you could argue that your trademark fits into the suggestive category as well. Remember, suggestive trademarks requires some imagination for consumers to understand what you're selling. Your office action likely has attachments of examples of dictionary evidence or evidence of newsletters or companies using the wording of your trademark in a descriptive way. In response, you could try to find evidence that shows your trademark being used in a distinctive way that does not merely describe an ingredient quality, characteristic, function, feature, purpose, or use of what you're selling. Ask yourself, do the words have an additional meaning? If so, you could argue that there's another meaning to the words that the public would readily understand. Evidence can take the form of searching the word or words of your trademark and an online dictionary. In addition, if there is an absence or no definitions for the word or words, you could use that as evidence that your mark is not merely descriptive. After all, the words of your trademark or not even in the dictionary, it is difficult to imagine consumers knowing that these words merely describe your goods and services. Here, if you search command, you'll see that there are no results found in dictionary.com. Another argument is that your trademark is a double entendre. For instance, consider the trademark Sugar and Spice for bakery goods. Sugar and Spice are both ingredients used in baking. But consumers would also associate this phrase with a nursery rhyme, sugar and spice and everything nice. So since one of these meetings from the nursery rhyme was not descriptive of bakery goods, the trademark is no longer merely descriptive. It is often difficult to overcome this section to E1 refusal if one of the office actions has a strong case that your trademark is merely descriptive. The second approach is to accept this refusal, take a step back, read the office action, and see if you agree with the trademark examining attorney's decision, Do what happens in that case? Well, if your mark is merely descriptive and it is not generic, then there are two ways you can still register your trademark. The first way is amending your application to the Supplemental Register. Applicants are immediately eligible for the supplemental if they are already selling their goods or services, or they can register for the Supplemental Register at a later time once they show proof that they are selling their goods or services. For information on amending the Supplemental Register and the benefits of the Supplemental Register. Look at the Supplemental Register video. Remember, though generic trademarks can never be registered on any register. The second way is to make a claim or argue that your trademark is acquired distinctiveness under the section two F of the Trademark Act. What does that mean? Generally, applicants can argue that their trademarks have acquired distinctiveness when they have prior federal trademark registrations with the same trademark for similar goods and services. They've used their trademark for five years in commerce, or they provide actual evidence of acquiring distinctiveness. For section two, E1 refusal, especially when the trademark is highly descriptive, you'll likely have to provide actual evidence your trademark has acquired distinctiveness. For information on acquired distinctiveness claims, you can review this section to F, acquired distinctiveness video. That video goes over the types of actual evidence required for section two F acquired diseases. 58. Section 2(e)(2) Refusal – Mark is Primarily Geographically Descriptive 103-29: A section to E2 refusal means that the USPTO believes your trademark would primarily be viewed as geographically descriptive by consumers. Let's use an example. Let's say, I'm sorry, my goods in Las Vegas, am I trademark is Las Vegas. Las Vegas is a super well-known location. When people see that trademark, they would immediately think of this popular city known for entertainment. You can see why Section two, E2 refusal would be issued in this case. This trademark really is only describing a well-known place that most consumers will immediately recognize. This refusal can also apply to a wide variety of geographic locations, such as a country, city-state, continent, locality, region, area, or street. It can even apply to nicknames for geographic locations such as the Big Apple for New York. Specifically, the USPTO uses a three-part test to determine whether the trademark is primarily geographically descriptive. First, the USPTO considers whether the primary significance of the trademark is a generally known geographic place. Here, Las Vegas is a very well-known geographic place. In fact, it's hard to imagine talking to someone who isn't familiar with Las Vegas. Second, the USPTO considers whether the products or services originate in the location identified in the trademark. Here, Let's say I'm selling t-shirts and I'm making and selling those t-shirts in Las Vegas. In that case, it is clear that the products I'm selling originate in Las Vegas. Third, the USPTO considers whether consumers are likely to believe that the goods and services originated in the geographic location identified in the mark Here. My trademark is Las Vegas. I'm selling the goods and Las Vegas, it would make sense that the consumers are likely to believe that the t-shirts are originating in Las Vegas. Here are a few more examples about this refusal. First, note the use of the word primarily in this refusal. The trademark must be primarily geographically descriptive in order to be refused under this basis, consider whether there are any additional words, designs, or meetings in your trademark that make it so that the trademark wouldn't primarily be viewed as geographically descriptive. Let's use an example. Let's say I'm selling t-shirts and my trademark is Las Vegas t-shirts. Here, does the additional t-shirts word change the analysis? No. Because the word is t-shirts and I'm selling t-shirts. So consumers will still focus on the Las Vegas wording. But suppose I'm still selling t-shirts and my trademark is Zuniga Las Vegas nuggets. Does the extra warning of Zumba and nuggets change the analysis? Yes. The trademark has additional words such that the consumer is no longer primarily viewing the trademark as geographically descriptive of Las Vegas. In that case, you would need to disclaim the wording Las Vegas, but the trademark wouldn't be primarily merely geographic under Section two, E2. Or there are instances where a design element and your trademark makes it so your trademark is no longer primarily geographically descriptive. So let's say I'm selling t-shirts and I have the trademark, Las Vegas, which has a bunch of design elements of puppies. In that case, the wording, Las Vegas is actually no longer primarily geographically descriptive. In that case, you would just need to disclaim the Las Vegas wording, but the trademark wouldn't be primarily geographically descriptive under Section two E2. For more information on disclaimers, you can watch the disclaimers video. To recap a section to E2 refusal means that the USPTO believes your trademark is primarily geographically descriptive. There is a three-part test that the USPTO uses in this analysis. And in order to establish this refusal, remember the meaning of the word primarily in this refusal. So what do you do when you receive this refusal? You could argue against this refusal in your response. Perhaps he believed that there were additional words, designs, or meanings in your trademark that make it so that the trademark, when it primarily be viewed as geographically descriptive. Or you could agree with this refusal and accept that the trademark is primarily merely geographic. Take a step back where the office action and see if you agree with the trademark examiner attorney's decision. If you do, what happens in this case. Well, you can still register your trademark even if it is refused as primarily geographic. In that case, a common response is amending your application to the Supplemental Register. Applicant immediately eligible for the supplemental if they're already selling their goods or services. Or they can register to the Supplemental Register at a later time once they should prove that they're selling their goods and services. For more information on amending to the Supplemental Register and the benefits of the Supplemental Register. Look at the Supplemental Register video. Second, you can make a claim or argued that your trademark has acquired distinctiveness under the section two F of the Trademark Act. Well, what does that mean? Generally, applicants can argue that their trademarks have acquired distinctiveness when they have prior federal trademark registrations with the same trademark for similar goods and services. They've used their trademark or five years in commerce, or they provide actual evidence of acquiring distinctiveness. For more information on acquired distinctiveness claims, you can review the section to F, acquired distinctiveness video. As a review. When you receive this refusal, you can argue against refusal in your response or if you agree with the refusal, then depending on your particular application, you might consider amending your application to the Supplemental Register or making a claim of acquired distinctiveness. 59. Section 2(e)(4) Refusal – Primarily Merely a Surname Refusal 103-30: Section two, E4 refusal means that the USPTO beliefs your trademark is primarily only recognized as a surname. In other words, the USPTO is arguing that consumers will see your trademark and only think of it as a last name. It is common for many family businesses to apply for their families LastName as a trademark and then receive this refusal. So let's dig deeper into what this refusal means. Well, first examine each of the five factors for this refusal. The first factor is whether the surname is where your office action might have provided evidence, such as the number of people in the United States with this last name from a database in LexisNexis. Maybe there are millions and millions of people with this lastName, which means the USPTO has a stronger case. Or maybe there's just a few hundred, in which case the USPTO has a weaker case if you believe the number is low or if you have a different evidence for the amount of people and ended States with this last name. You can argue that not many people have this last name. And if very few people have this lastName, then there's a small likelihood that people will see this trademark and associate it primarily as a surname. The second factor is whether the applicant or anyone connected with the applicant uses the term as a surname. Let's use an example to walk through the second factor. So let's say your last name is Smith and you file for the trademark, Smith's. That makes us stronger case for the USPTO that your trademark is primarily merely a surname because you are connected to the trademark. But let's say your last name is Smith, but you filed for the trademark Johnsons. You have no connection with that last name of Johnson's and nobody in your company has a connection with that last name, then the USPTO has a weaker case in relation to this one factor. The third factor is whether the terms have any recognized meaning other than a surname. Let's say you have the trademark Mahoney. I will try to figure out whether there is any other meaning for the word Mahoney. For instance, I try searching the word Mahoney in the dictionary or encyclopedia to see if there are any other meetings. I'd also consider whether Mahoney is used as a first-name by checking popular baby name websites. Here, I'm not seeing much evidence that Mahoney has different meanings or that it also is used as a first name, which means the USPTO has a stronger argument as to this factor. But let's say I am trademarking the word Edward and I received this refusal. Edward is also uses a first-name right here. Dictionary.com lists Edward as a male given name. There are plenty of Edwards used as a first-name when searching baby name websites. So this would mean the USPTO would have a weaker argument as to this factor and to the overall refusal. If I was arguing against this refusal, I would even attach this dictionary.com website as evidenced that works in my favor. The fourth factor is whether it has the structure and pronunciation of a surname. In other words, this factor asked whether it looks and sounds like a LastName. This is a case-by-case analysis, but let's consider the example of McDonald's. The mic or Mac prefix is seen in a lot of last names like McNulty or mixed Sweeney. We commonly see or hear MIC or Mac to begin a lot of different last names. There was a stronger argument that McDonald's has the structure and pronunciation of a surname. But let's consider the word Kodak, which is an uncommon surname. When you see the word Kodak, it doesn't really look or sound like a last name, does it? In fact, it seems more like a made-up word. That case, there's a weaker argument that Kodak has the look and feel of a lastName. Finally, the fifth factor is whether the stylization of lettering is distinctive enough to create a separate commercial impression. What does that mean? Well, some trademarks are highly stylized and others aren't. Now, let's say you have the trademark faucet, But let's say I applied with a super stylized way such that each letter was stylized to look like a sink faucet. In that case, the West stylized. It does create a different reaction to the consumer, right? If you looked at the stylized trademark, you'd think of a faucet and be less inclined to think of faucet as a last name. In that case, you'd have a stronger argument of this factor working to your advantage. When considering these five factors, this refusal is a case-by-case determination by the USPTO. They do not have to prove all five factors in order to establish this refusal. As a final note, you also want to think of whether you have any additional wording or design elements in your trademark that minimizes the likelihood that consumers will only be your trademark as primarily merely a surname. Let's use two examples. Let's say I'm selling toilet paper and I have the trademark, Smith's toilet paper. Does the additional wording of toilet paper change the analysis? No. Toilet paper is what you're selling. So it really doesn't change the overall impression of your trademark. But let's say you were selling toilet paper and your trademark is Smith's Zoom ski. Does the made-up word Zoom ski change the analysis? Yes, it does. It's totally made up word that has no relation to what you're selling such that the trademark no longer is primarily merely a surname. After all, there's additional and unique words in your trademark beyond just the last name. If you do have any additional words or designs, you want to consider whether the additional words or designs can overcome this refusal. So how do you respond to this refusal? One option is to argue against the refusal. You consider each of the factors above and argue that your trademark would not primarily merely be recognized as a surname. If you find evidence such as a dictionary meaning of your trademark that shows that there are meetings beyond just a lastName, then you'd upload that evidence in your response. You could upload evidence like an online dictionary website as a PDF. What happens if you do agree that your trademark is primarily merely a surname? Take a step back, read the office actions, and see if you agree with the trademark examiner attorney's decision. If you do, what happens in that case. Well, you can still register your trademark. How? First a common response is amending your application to the Supplemental Register. Applicants are immediately eligible for the supplemental if they are already selling their goods and services, or they can register to the Supplemental Register at a later time once they show proof that they are selling their goods or services. For more information on amending to the Supplemental Register and the benefits of the Supplemental Register. You can watch the Supplemental Register video. Second, you can argue that your trademark has acquired distinctiveness under the section two F of the trademark cap. What does that mean? Well, generally, applicants can make a claim or argue that their trademarks have acquired distinctiveness when they have prior federal trademark registrations with the same trademark for similar goods and services. They've used their trademark for five years in commerce, or they provide actual evidence of acquiring additional distinctiveness. For more information on acquired distinctiveness claims, you can review this section to F, acquired distinctiveness video. As a review, when you receive this refusal, you can argue against the refusal in your response. Or if you agree with the refusal, then depending on your particular occupation, you might consider amending your application to the Supplemental Register or making a claim of acquired distinctiveness. 60. Advisory - Supplemental Register 103-31: Some office actions specify an advisory for the supplemental registered. Now there are two different advisories for the Supplemental Register. If you are already selling your goods or services, your advisory for the Supplemental Register, we'll specify that your application has been refused on the Principal Register, but you can amend your application to the Supplemental Register. If you are not yet selling your goods or services, the advisory will explain that you are not yet eligible for the Supplemental Register. That's because you first need to be selling goods and services in commerce to be eligible for the Supplemental Register. For instance, this office action has the following language. Although an amendment to the Supplemental Register would normally be inappropriate response to this refusal, such a response is not appropriate in this present case. In that case, later in the video, we will explain what you need to do in order to amend to the Supplemental Register. But we'll first begin with a discussion for those that received an advisory for Supplemental Register who are already selling their goods and services. Since you applied as a one-way application, which means you are already selling your goods and services, you are immediately already eligible for the Supplemental Register. This might occur when you receive a refusal in your office actions that states that your trademark is merely descriptive, really geographically descriptive, or primarily functions as a surname. In other words, the USPTO determined that your trademark is not sufficiently distinctive for the principal register. Let's start with how generic trademarks are treated at the USPTO. Let's say I'm selling t-shirts and my trademark is t-shirts. This trademark would not be even eligible for the Supplemental Register because it is a generic trademark. In other words, it is literally the name of goods that I'm selling. So no protection can be provided even on the Supplemental Register. Now let's see how descriptive trademarks are treated at the USPTO. Let's say I'm selling bananas and my trademark is yellow. This trademark is descriptive of my goods because yellow is the color bananas is describing a feature of my goods. But it's not simply the name of the product itself, which in case is bananas. This mark would be refused under Section two E1 refusal, unlike a generic mark, however, it could be eligible for the Supplemental Register. So what are the purpose of the supplemental registration? First, just like the principal register, you can use the registered trademark symbol. Second, you can sue for trademark infringement in federal court. Third, it will prevent other trademarks and being registered that are confusingly similar to your trademark. However, the trademark protection afforded by the Supplemental Register is not as strong as the trademark protection afforded by the principal register. For instance, on the Principal Register, there's no determination that your trademark is distinctive. Also, unlike the principal register, trademarks on the Supplemental Register, presumed to be valid and enforceable. You have to make a decision. First. You could decide that you want to challenge the refusal specified on your office actions. For instance, let's say my trademark was rejected because it is merely descriptive. I would have to come up with reasons and arguments as to why I do not believe the trademark is descriptive. Second, you could decide to register on the Supplemental Register. For many people, this is a preferrable option because they will still receive the benefits and protections of the Supplemental Register and their application might otherwise be rejected completely, in which case they wouldn't receive any type of protection. If you're already selling goods and services, you can immediately amend your application to the Supplemental Register and your response because you are already eligible. But if you are not yet selling your goods or services, you are not yet eligible for the Supplemental Register. The Supplemental Register requires that you are already selling goods and services. So in this case, you'd have to file what is called an allegation of use. What does that mean? It means you have to submit a specimen or proof that you are selling goods and services with your trademark prior to the application being published by the USPTO. This also changes your filing basis. This changes your application from a 1D intend to use application, which means you have a genuine intent to use your trademark with your goods and services. To A1A application, which means you are using your trademark with your goods and services in business. This makes sense because you are showing proof to the USPTO. They were selling your goods and services with your trademark. For information on acceptable proof in a filing, the allegation of use. Look at the specimens video. Then when you file the allegation of use, you would also then specify that you would like to amend to the Supplemental Register. 61. Advisory - Section 2(f) Acquired Distinctiveness 103-32: People often wonder what section to F. Acquired distinctiveness means. Some people even receive an advisory regarding section to F, acquired distinctiveness in their office actions. Well, let's begin with a brief overview of the two different registers. First, there is the Supplemental Register, which is for non-distinctive trademarks. In other words, the trademarks will be descriptive in relation to the goods and services, so are not sufficiently distinctive for the principal register. The Supplemental Register provides some, but not all of the protections afforded by the principal register. Note that generic marks will not be eligible for either. The Supplemental Register. For the principal register. For instance, the trademark towels for selling towels would not be eligible for either register because it is simply the generic name for the goods. You can look up the Supplemental Register video for more information on this register. Second, there is the principal register, which is four distinctive trademarks and provides broader legal protections. In addition, the principal register is for trademarks that have acquired distinctiveness. What does acquired distinctiveness mean? Well, it means that the trademark itself is not inherently distinctive enough for the principal register, but There's convincing proof that the trademark has acquired secondary meaning. In other words, over time, consumers have gotten to know the trademark beyond just the literal, descriptive meaning of the trademark. And that way consumers will associate that trademark as a source indicator of the goods and services, even if the word of the trademark is descriptive and therefore not immediately distinctive. Once you prove that your trademark has acquired distinctiveness, your trademark can be approved for the principal register under Section two F of the Trademark Act. So how do you show proof that your trademark has acquired distinctiveness? One way is if you have prior registrations with the same trademark for similar goods and services. The second way is to verify that you use your trademark for five years in commerce. The third way is to provide actual evidence. Evidence can take many forms. Some examples include providing information on how much you've spent advertising and promoting your goods and services under your trademark. Providing survey evidence, market research, and consumer reaction studies, and providing declarations from consumers or others in the industry. Here are three final thoughts. First, you can respond with more than one approach. For instance, you can certify five years usage and provide actual evidence. Second, depending on your trademark, you might initially respond with one of the above approaches, such as responding with five-years use. The USPTO might then respond by asking you to provide additional evidence. That just means you will provide additional evidence at a later time. Third section to F, acquired distinctiveness and the Supplemental Register is a common response for when you receive certain refusals, such as if your trademark is merely descriptive, primarily geographically descriptive, or primarily a surname. In such cases, you might consider stating that your trademark has acquired distinctiveness under Section two F, If you believe your trademark meets that criteria or you can respond by amending to the supplemental register. 62. Failure to Function Refusal - Merely Informational or Commonplace Messages 103-33: The USPTO will not register a trademark unless it functions as a trademark. Well, does that mean, remember that trademark should let consumers identify the source of a product or service. So what this refusal, the USPTO is arguing that your mark is not actually functioning as a trademark and not allowing consumers to actually identify the source of products and services. Let's dig a little deeper. The USPTO will issue a failure to function if your trademark is merely informational, this means your trademark is merely providing information and not acting as a source indicator of your brand. And this determination, the USPTO can consider third party evidence and we'll even look at your specimen to determine whether the public would only be your trademark as merely informational. Let's break that down into examples. First, this can occur when your trademark is just providing general information about goods and services. Let's say I'm selling plates and I apply for a trademark with the word fragile and put the tag of fragile on the box. When you see the word fragile, would you think of a brand? Probably not, right. You just think of how many businesses put the word fragile on boxes and packages to warn you to be gentle with the products. In that way, it's not functioning as a trademark because it's just providing general information about the goods being delicate. Second, this can occur when it is a widely-used message. More specifically, this can be a commonplace message or can be a social, political, or similar message. One example is Boston Strong, which is a common expression to support those affected by the Boston Marathon bombing. When the Brown James filed for the trademark Taco Tuesday, he received a failure to function, refusal for a commonplace message. Consumers review the wording in these examples as commonplace messages and not as indicating the source of accompanies goods or services. Third, it could be a direct quote, passage or citation to a religious texts. An example of this would be in the beginning, God created the heavens and the earth. Genesis 11. This is a direct quote from religious texts, will not be perceived as a trademark. So how do you respond to this refusal? First, you want to look to see if the USPTO provided persuasive evidence for this refusal. So if my trademark was Taco Tuesday, I look to see if the S PTO attached a lot of evidence in the office action of others using this widely-used message. I'd also Google this term to see if it is commonly used. Here. If you google Taco Tuesday, you'd see that there is a lot of third-party evidence of restaurants and bars using the same words to advertise their goods and services. So if you find that there's a lot of evidence than it is more difficult to overcome this refusal. You should consider whether the USPTO provided sufficient evidence to establish this refusal, or if you consider the evidence to be weak. And you can also consider whether you have evidence that shows that consumers would see the trademark as a source indicator of your goods and services. This is unfortunately difficult to do when there are many examples of the industry commonly using the message. But if the USPTO did not provide persuasive third party evidence, you would want to point that out in your response. Second, if you submitted a specimen or proof of your trademark in commerce, the USPTO will consider whether your applied for a trademark actually fails to function as a trademark on your specimen. Normally, failure to function. Refusals are issued when you've already submitted a specimen unless the USPTO finds a lot of evidence that they applied for Mark fails to function as a trademark without having to even look at a specimen as additional evidence. This was the case with LeBron James is application he filed under an intent to use one b basis. So he did not yet have to provide a specimen in his initial application, but the USPTO found enough third party evidence of others using the trademark as a commonplace message to support a failure to function refusal. But let's say you did submit a specimen with your application. One question you might ask is, would consumers view this trademark as a source of my goods and services, or would it be viewed as merely informational? Let's consider if your trademark was hours of energy now and you use the specimen. When a customer looked at this product, would they view the wording as a trademark? Probably not. It's not featured prominently and looks to be included in an area of the bottle where basic information is provided. But let's say you submitted a specimen that has hours of energy now prominently displayed as the only wording on the bottle. That case, consumers could arguably consider the wording to act as a trademark as opposed to merely being informational. Remember that regardless of how the trademark is shown on your specimen or if you didn't even provide a specimen at all, the USPTO might have enough evidence to support a failure to function refusal by providing third-party evidence. Unfortunately, unlike some of the other refusals, You cannot amend to the Supplemental Register or argue that your mark has acquired distinctiveness in order to overcome this refusal. 63. Title of a Single Work Refusal 103-34: This video examines a title of a single work refusal. A title of a single work refusal occurs when the USPTO believes your trademark is only being used as the title of a single creative work. Let's use an example. Let's say your trademark is Abigail is adventures. For books, you submitted a specimen of one children's book with abigail said ventures on it. Well, the USPTO will likely refuse that trademark as only showing the title of a single creative work. That specimen shows no evidence that there are multiple works. So what counts as a creative work, according to the TM EP, books, sound recordings, downloadable songs, downloadable ringtones, video cassettes, DVD's, audio CDs and films are usually single creative works, theatrical performances to how do you overcome this refusal? Well, the first option is to provide a new specimen or evidence that your creative work is not considered a single word. So for instance, suppose my book showed evidence that the book was a part of a larger series, such as The wording volume one or book one. This would provide evidence that Abigail is adventure is used on multiple books. Or suppose I had a specimen where there were two or three books of Abigail is adventures. That would show that Abigail is adventure is used by multiple books, are creative works. The second option is to amend your filing basis to a 1D intend to use application. So let's say your specimen only show the one book and you receive this refusal. You can then amend to a one-by-one basis, which is an intent to use application instead of an e-commerce application. And that case, you'd have to provide a new specimen at a later time, which was evidenced that your creative work is not considered a single work. So this is only a temporary solution. Also, if you already submitted a statement of use after receiving a Notice of Allowance, you can't amend to a one v basis. By choosing one of these two options, you can begin the process of overcoming this refusal. 64. My Application Abandoned 103-35: Unfortunately, the USPTO has strict deadlines under which you must provide a response or else you risk the abandonment of your application. If you fail to provide a response within these strict deadlines, you will then receive a notice of abandonment. First, you might be eligible to apply to revive your application, but there is still some time-sensitive considerations to do so. You have to file a petition to revive your application no later than two months from the issue date of the notice of abandonment you received. But if you fail to respond because you did not receive the notice of abandonment, then you have to file a petition to revive two months after the date of your actual knowledge of the abandonment and no later than six months after the date the USPTO electronic system show that the application is abandoned. Let's use some examples. So let's say your application was abandoned on January 1, 2022, but you never received the notice of abandonment. But you became aware of the abandonment on February 1, 2022. Since you now have actual knowledge of the abandonment, you'd have two months from February 1, 2022 in order to file to revive your application. Now let's say the USPTO records show your application abandoned on January 1, 2022. But you didn't become aware of the abandonment until May 1, 2022. At that point, you would only have one month to file to revive your application. How can we wouldn't have two months like in the last example, because you only have a six-month period from when the USPTO records showed that your application was abandoned regardless of when you became aware of the abandonment. So in this case, you only have one month left before the six-month deadline runs out. Finally, let's say the USPTO records show your application abandon on January 1, 2022. But you didn't become aware of this abandonment until November of 2022 since that was more than six months after the USPTO records show that your application abandon, you are no longer eligible to file to revive your application. Remember that regardless of when you became aware of the abandonment, you will only have a six-month period from the date at which the USPTO electronic records showed the abandonment date. Per the USPTO website, you will have to provide a signed statement by someone with firsthand knowledge of the facts stating that the delay in responding was unintentional.