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"Intent to use" trademark applications



 
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Old October 18th, 2006 Oct 18, 2006 12:50:32 PM -   #1 (permalink)
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Default "Intent to use" trademark applications

Does anyone have any experience filing an "intent to use" application (vs. "use in commerce")? Originally I wanted to trademark right off the bat, but it seems more common (and easier) to file once the trademark has been used in commerce. Plus it seems like it actually costs more to file an intent to use application, since you then have to file an "Allegation of Use" application, but I'm not sure.

On the other hand, I'm feeling kind of paranoid , and I'm wondering if I should go ahead and trademark now anyway, instead of waiting for "use in commerce." Advice? Don't be paranoid--or BE paranoid??

Here's some info:

http://www.uspto.gov/web/offices/tac...sic/addreq.htm

Thanks!
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Old October 18th, 2006 Oct 18, 2006 4:25:23 PM -   #2 (permalink)
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Default Re: "Intent to use" trademark applications

If you just have one t-shirt printed with your name on it, take a picture of it and you can file a trademark as "used in commerce". Not too difficult. Don't be paranoid!
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Old October 20th, 2006 Oct 20, 2006 9:53:21 AM -   #3 (permalink)
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Default Re: "Intent to use" trademark applications

Duh, that IS easy! And I do have some t-shirts from a trial run, although I didn't actually sell any of them (gave them to friends and relatives). Legally, is that OK? Or do you have to provide documentation of actual commerce? So far, from the USPTO site, it sounds like a photo will be OK.

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Old October 20th, 2006 Oct 20, 2006 11:23:01 AM -   #4 (permalink)
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Default Re: "Intent to use" trademark applications

You don't need any documentation about commerce. Just a photo. You'll be fine.
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Old October 20th, 2006 Oct 20, 2006 11:44:00 AM -   #5 (permalink)
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Default Re: "Intent to use" trademark applications

Sometimes they may ask for more documentation than just a photo of the t-shirt (depending on the term/phrase you're trying to trademark).

They may ask for proof that it is a "brand" and not a "slogan". Things like custom labels, etc can help prove that your mark is a brand.
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Old October 20th, 2006 Oct 20, 2006 12:16:53 PM -   #6 (permalink)
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Smile Re: "Intent to use" trademark applications

Quote:
Originally Posted by Rodney
Sometimes they may ask for more documentation than just a photo of the t-shirt (depending on the term/phrase you're trying to trademark).

They may ask for proof that it is a "brand" and not a "slogan". Things like custom labels, etc can help prove that your mark is a brand.
What about stuff like being registered locally as a business, having a bank account in the name of the business, checks written to the business, having a url related to the business, etc.? I imagine some or all of these things are of use. Any idea how to communicate this to the trademark folks? How much is enough, and how much is overkill?
 
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Old October 20th, 2006 Oct 20, 2006 2:38:15 PM -   #7 (permalink)
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Default Re: "Intent to use" trademark applications

Quote:
Any idea how to communicate this to the trademark folks? How much is enough, and how much is overkill?
That stuff will help, but it doesn't really establish you as a brand, since just about every company in America does the same thing.

I would just put as much information as possible in the application (this is where hiring a trademark attorney or consultant can help).

If it gets rejected, they will tell you why and you'll get a chance to appeal with further documentation.
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Old October 20th, 2006 Oct 20, 2006 2:44:57 PM -   #8 (permalink)
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Default Re: "Intent to use" trademark applications

Jeez man, what is the deal with being a brand vs. being a company with a trademarked name and logo? I thought once I trademarked my company name and logo, it would also be my "brand."
 
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Old October 20th, 2006 Oct 20, 2006 3:00:42 PM -   #9 (permalink)
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Default Re: "Intent to use" trademark applications

Quote:
I thought once I trademarked my company name and logo, it would also be my "brand."
That is correct

But being a "company" and "trademarking a brand" are two different things.
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Old October 20th, 2006 Oct 20, 2006 3:22:29 PM -   #10 (permalink)
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Default Re: "Intent to use" trademark applications

Quote:
Originally Posted by Rodney
That is correct

But being a "company" and "trademarking a brand" are two different things.
OOOOOOOOH KAY, but once I've got my company trademark, I don't have to worry about anything else if I also use my company name/logo as a brand, right? RIGHT???

Please tell me I'm right!!!
 
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Old October 20th, 2006 Oct 20, 2006 3:41:14 PM -   #11 (permalink)
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Default Re: "Intent to use" trademark applications

Quote:
OOOOOOOOH KAY, but once I've got my company trademark, I don't have to worry about anything else if I also use my company name/logo as a brand, right? RIGHT???
Yes, once you register your trademark with the USPTO, it's your trademark.

You could use it as a brand before that, however registering the trademark makes sure someone else can't use your name/logo as a brand.
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Old October 20th, 2006 Oct 20, 2006 3:44:26 PM -   #12 (permalink)
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Default Re: "Intent to use" trademark applications

OK, cool. I was starting to fear that the complications were growing again.
 
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