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What is a power of attorney? When do I need to sign a power of attorney?

A Power of Attorney, POA in short, is a legal document that authorizes an entity to represent or act for another person, usually, in the managing of the person’s property, business or private affairs. The former is called the Attorney or Agent whereas the latter is commonly known as the Principal.

In Trademarks, a Power of Attorney is required to appoint an Attorney on your file so he/she can represent you before the respective Trademarks Office.

Having said that, in many countries including the US, UK, Europe, Canada and Australia you don’t need to sign a POA for a standard trademark application (power of attorney is already implied when you entrusted your attorney/agent trademark registration). However, there are countries, such as, China, Mexico, Russia and India where a POA signed by the owner or any other person legally bound to the owner is required in order to file a trademark application.

In the US, when an applicant wishes to replace its existing attorney and appoint a new attorney, it needs to sign a Power of Attorney authorizing the new attorney to prosecute the trademark application.

Why should I file my US trademark application in a single class?

Especially with US trademarks, we usually recommend to file your trademark in a single class. Why?

  • It’s less expensive. Remember – government fees are paid per class. Government fees are paid during filing and then more fees may be paid if a Statement of use needs to be filed.

 

  • Single class applications are easier and faster to register. Since USPTO does a trademark search during the examination of your trademark,  your mark may be found to be confusingly similar to any other marks. Therefore, the more classes you include, the more potentially close marks USPTO may find. For example, if an office action (aka objection) issues for a four-class application, registration of a whole trademark application may be significantly delayed even if the trademark owner is trying to overcome an objection for one class and the other three classes are acceptable and registrable.

 

  • We also found from experience that USPTO favors single-class trademark applications and examines them quicker. It is easier to prove use for a single class rather than for multiple-classes.

 

  • Since Statement of Use filing is mandatory before registration, filing in a single class will usually allow you to file Statement of use quicker, since it’s easier to launch one product rather than five.

 

  • The more classes your application includes, i.e. the broader you file – the higher the risk of an opposition is. For example, a trademark that is filed for “note-pads; diaries” is going to be less problematic than a trademark filed for “note-pads”, “clothing”, “toys” and “kitchen utensils”.

 

  • You have to submit proof  of use 6 years after registration and then at every renewal. So for multi-class registrations, it can become quite an undertaking and the risk is higher that the registrant will be tempted to renew a trademark registration for products that are no longer sold, therefore, jeopardizing the whole registration.

 

Can I file my US trademark myself? Do I need a US attorney to file a US trademark application?

Since August 2019, all foreign applicants must be represented by a local US trademark attorney. What does it mean for you?

If you are not a US resident or if the applicant is a foreign company, you now need to appoint a US trademark attorney to file your trademark application.

If your trademark application was filed before August 2019, and there are some outstanding issues that must be addressed and USPTO sent you a letter after August 2019, you will be required to appoint a US trademark attorney when a response is filed.

Trademark Angel provides proper legal representation through a designated US trademark attorney.

When should I not file my trademark in the US?

Before you file your trademark application in the US, please review the points below to see when filing is not recommended.

  1. If you do not plan to sell your products under your trademark, please do not file your trademark in the US as proof of use of your trademark will be required before registration.
  2. Generic trademarks are not registrable. Please consider adding unique elements before filing such a trademark.
  3. Trademarks or slogans that are informational only are not registrable. For example: ONCE A MARINE, ALWAYS A MARINE and BLACK LIVES MATTER are not registrable.
  4. If a very thorough trademark search was not done, please save your money and don’t file. US is one of the most difficult jurisdictions to achieve trademark registration, so filing without a proper is the same as playing a lottery and hoping to win.
  5. If you are aware of a similar trademark or trademark search uncovered a potential obstacle, please do not file the original trademark but consider making some tweaks to make it more registrable.
  6. If you have not come up with an exact list of products that you are going to sell under your brand, but simply trying to get in the Brand Registry, please consider filing in a quicker country, like UK, Germany or EU. If you file for the wrong products or change products mid-registration, you will not be able to complete your registration since we will be unable to file proper Statement of use.
  7. If you only need a trademark for Amazon Brand Registry purposes, and nothing else. In this case, consider doing a fast-track trademark application in Germany, UK or EU.
  8. US trademarks are quite expensive since government fees are high and are paid per class. Additional fees are also possible if Statement of use needs to be filed. If you don’t have adequate budget, consider filing your US trademark application in a single class or don’t file at all.
  9. If you are a very local business and don’t have sales to another state (local restaurant or hair-dressing business) please don’t file a Federal trademark application. Instead consider filing a trademark application your State.

How does the process work with Trademark Angel? What happens after I buy a trademark package?

There are 3 ways how you can proceed:

  1. Book an initial phone call with us. Here is the link for the trademark package
  2. Ask for a free preliminary trademark search to get an idea of whether your trademark can be registered. This is a basic search but if your mark is unregistrable, we’ll be able to tell you. Order your search here.
  3. Buy a trademark package right away to start the trademark registration process without further delay. You can see our pricing on this page and can buy directly from our website.

What happens after I buy a trademark package?

  1. We’ll confirm your order.
  2. We’ll check if your trademark is registrable. A comprehensive trademark search will be done at this stage. We will provide detailed recommendations on how to increase the chances of achieving registration if your trademark turns out to be problematic.
  3. If your trademark is registrable, we’ll move forward with the trademark registration process.
  4. If your trademark has low chances of achieving registration, you will have 3 options:
  • Ask for a full refund;
  • Come up with a different name. We will provide detailed instructions for this. Further trademark searches are included in the package and there is no extra cost. We’ll keep searching until we find a registrable trademark;
  • Proceed with the filing anyway.

The choice is yours. Make the first step now.

Who will file my trademark application?

As of August 3, 2019, the United States Patent and Trademark (USPTO) now requires foreign domiciled applicants (read: non-US applicants) and registrants to appoint a US attorney on all US trademark filings and representations before TTAB. We work with a few trusted US attorneys so can file and take over your recently filed trademark applications. If you filed yourself, we can take over your application and appoint a US licensed attorney, at no cost to you.

Since this is how we always filed, our fees remained the same unlike many other firms that increased their fees following the introduction of this new rule.

In every country where we file, a licensed attorney or trademark agents submits your trademark application so that you get proper legal representation.

What are geographically descriptive trademarks in the US?

Geographically descriptive trademarks are generally not registrable on the Principal Register in the US.

The USPTO attorney will use the following test to determine if a trademark is geographically descriptive:

  1. The trademark is the name of a geographic location
  2. The products or services come from the placed identified by the trademark or are made in the pace named in the trademark
  3. Potential customer would be likely to believe that the products or services originate in the geographic place identified in the mark

However if the place is not known or very remote, the public is unlikely to make this association.

Tip: If your trademark is geographically descriptive, and you cannot change or add another word to make it not descriptive as a whole there is one trick you can do.  In order to reduce the risk of getting an objection from the Trademarks Office it’s best to file a trademark that may be considered geographically descriptive as a combined logo (Meaning word mark plus an image).

For example, NOOGA OUTDOORS was considered to be unregistrable on the ground that “NOOGA” is a commonly used nickname for Chattanooga, Tennessee and the term “OUTDOORS” does not diminish the mark’s primary geographic significance. However, the same trademark didn’t receive a geographically descriptive objection when it was filed a combined logo: Geographically descriptive trademarkbecause as a whole it was no longer just geographically descriptive as it also contained other graphic elements (mountains, dumb-bell and circle).

Likewise, MICHIGAN BRAIN HEALTH for medical clinic services would be considered geographically and overall descriptive but how to register a descriptive trademarkwould be registrable on the Principal Register (with a disclaimer of “Michigan Brain Health”).

A trademark that will most likely be refused by the USPTO as being geographically descriptive and therefore not registrable on the Principal Register (and not eligible for Amazon Brand Registry) may go through in the UK.

We can help you to identify if your mark would be considered geographically descriptive and will help to make suggestions how to avoid this refusal.

Classification of Goods and Services in a Trademark Application (class headings)

Trademark Classes

Every trademark application must list the specific goods and services that the trademark will cover.

Products belong to classes 1 to 34. Services belong to classes 35 to 45.

Products are tangible, you can touch them. Services are intangible.

Below is a rough classification (class headings) just to give you an idea of general categories  (please note that the below list cannot be used for trademark filing)

Products

Class 1: Chemicals (including those used in agriculture, industry and science)

Class 2: Paints, coatings, varnishes, colorants for food.

Class 3: Cosmetics, creams and serums, cleaning products including soap and shampoo, bleaching and abrasives, non-medicated toiletry preparations, false eyelashes, essential oil, perfume

Class 4: Fuels, industrial oils, greases, lubricants, candles

Class 5: Pharmaceutical and veterinary products, food supplements and vitamins, baby food, disinfectants, fungicides, herbicides, plasters, dental wax

Class 6: Metals, metal castings, metal hardware, metal containers, locks, safes

Class 7: Machines and machine tools and their parts, motors and engines (except for land vehicles)

Class 8: Hand-operated tools and implements, razors, cutlery

Class 9: Computers, computer hardware, computer cables, cell phones and cell phone cases, data carriers, computer software, downloable publications including e-books, videos and podcasts

Class 10: Medical and dental instruments and apparatus, massage apparatus, sex toys

Class 11: Products for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes including lamps and kettles

Class 12: Land, air and nautical vehicles, motors and engines for land vehicles

Class 13: Firearms, ammunition, explosives, fireworks, holsters

Class 14: Precious metals, watches, jewellery

Class 15: Musical instruments

Class 16: Paper, items made of paper, stationery products, artists’ products, printed products including photographs, stickers, notebooks, party ornaments of paper

Class 17: Rubber, asbestos and plastic Items, pipes and tubes

Class 18: Leather and leather goods, bags, wallets, animal apparel, collars and leashes for animals

Class 19: Building and construction materials (non-metallic), non-metal monuments

Class 20: Furniture, mirrors, picture frames, storage containers not of metal, party ornaments of plastic

Class 21: Kitchen utensils, crockery, containers, cleaning implements, toothbrushes

Class 22: Ropes and strings, tents, nets, awnings, sacks, padding, canvas material and raw fibrous textile material

Class 23: Yarns, threads

Class 24: Textiles, fabrics, blankets, covers, towels

Class 25: Clothing, footwear and headgear

Class 26: Sewing products, lace and embroidery, artificial flowers, hair decorations like ribbons, false hair

Class 27: Carpets, linoleum, wall and floor coverings, wall hangings

Class 28: Sports equipment, video game apparatus, games, toys, Christmas decorations

Class 29: Dairy products, meat and fish, processed and preserved foods, including dried, frozen and cooked fruits and vegetables, milk, eggs, edible oils and fats, jamps, jellies

Class 30: Staple foods, spices, bakery products, confectioneries, tea, coffee

Class 31: Fresh fruit and vegetables, live animals, animal food, seeds, fresh herbs, plants and flowers

Class 32: Non-alcoholic beverages, preparations for making beverages, fruit juices, beer

Class 33: Alcoholic beverages, except beer

Class 34: Tobacco products and smokers’ articles, matches, electronic cigarettes

Services

Class 35: Retail services including online retail store, advertising, business consulting, business management

Class 36: Insurance and financial services, real estate services

Class 37: Building construction, repair and maintenance services, installation services

Class 38: Telecommunication services, broadcasting services including video broadcasting

Class 39: Transport, logistics and storage, travel services

Class 40: Treatment of materials, custom assembly, recycling and waste management

Class 41: Education services, including arranging and conducting educational classes and seminars, entertainment services, book publishing, organizing exhibitions and conferences

Class 42: Saas and Paas services (Software as a service and platform as a service), IT services, software development, graphic design services, website development, scientific and technological services

Class 43: Restaurants, cafes, hotels, catering services

Class 44: Medical services, hygienic and beauty care services, dental services, veterinary services

Class 45: Personal and social services, legal services, security services

For a more in-depth discussion read this article: Taking Advantage of the Trademark Classification

 

Steps to US trademark registration

STEP 1

Initial trademark search

The team at Trademark Angel strives to make the trademark registration process as cost- and time-efficient and smooth as possible. For this reason, we offer to conduct a free trademark search for your proposed mark to give you an idea of how registrable your mark is in the country/countries you’d like to file.

We have talked extensively about benefits of doing an initial trademark search in other articles. In short, failing to search for similar marks prior to registration is quite risky and can result in additional business expenses that could have been avoided. For example, we have aided several clients who came to us after starting the process themselves, without conducting a thorough trademark search. These clients had already paid for products or packaging that displayed a mark that ultimately could not be registered as there were registered marks that were too similar to our clients’. These products and/or their packaging then had to be completely re-branded at great expense. This could have easily been avoided by an initial trademark search.

For more information about trademark searches, feel free to check out this article: Why conduct a trademark search?

STEP 2

Preparing your application

If the search results are positive and the mark looks registrable, we can start preparing your trademark application.

To help us prepare your application, we’ll need to know:

  1. Who the trademark owner will be
  2. If we are filing for your word mark or your logo (we usually make suggestions during the search)
  3. What goods and/or services you’d like to include, and
  4. If you’d like to file under intent to use of your mark or actual use of your mark

Intent to use vs Actual use

If you are already selling your goods or offering your services in the US, you can file for those goods and/or services under “actual use.” To prove your claim of actual use, you will need to provide what is called a specimen – in other words, an unedited photograph – which clearly shows your mark on the goods and/or services or the product packaging. A specimen is required for each class of goods/services you file for. In addition, you will need to provide the date of your first out-of-state sale if you are a U.S. citizen, or the date of your first sale in the U.S. if you are a non-U.S. citizen.

If you are filing for goods and/or services you plan to sell in the near future, you will file for those goods and/or services under “intent to use.” After your application has received a “Notice of Allowance” (see below), you will be required to file a Statement of Use attesting to the fact that you have started using your mark on all of the goods and/or services listed in your application.

To read what’s required in order to file a trademark application, please check this post: What’s required in order to file a trademark application in the US?

To read more about specimens of use and what specimens are acceptable, please check these posts: What is use in commerce (in the US)?, What is a specimen of use?, When do you need to submit specimens of use?, How do I find an acceptable specimen of use?

Fees

The cost to file an application in the US depends on how many classes you would like to include in your application. The government filing fee is $350 per class, and is NOT included in our packages.

STEP 3

Filing your application

Next, your application will be filed with the USPTO and we will email you a confirmation of the filing. At this time, you will also receive a trademark application number. You can check the status of your application at any time on the USPTO website with this application serial number.

Please note, we cannot change the mark that you register for, or the goods listed in your application once you file. For this reason, the goods listed in your application must be an accurate description of your actual products. We will always send you a draft of how your application will be submitted and ask that you approve the draft prior to submission. We ask that you provide us with clarifications regarding your products if the descriptions we list are not accurate.

STEP 4

Examination

Approximately three to four months after your application is filed, the application will be assigned to an Examining Attorney at the USPTO. This Examining Attorney will make decisions whether your application can move on to the next step of the process.

Office action?

If the Examining Attorney finds that changes must be made to your application (for example, the description of your logo must be amended to be more clear, or to clarify certain goods and/or services included in your application), or that your mark is confusingly similar to another prior-filed mark or registered mark, an office action will be issued.

A response to the office action must be filed within 6 months of the date on which the office action has been emailed. The failure to respond to all of the changes required by the Examining Attorney will be considered an “incomplete” response and may jeopardize your application.

To read more about different types of office actions, please check out this article: What are office actions?

STEP 5

Publication

After office actions have been responded to and all outstanding issues have been resolved, the Examining Attorney will approve your mark for publication in the Official Gazette. This does not mean that your trademark has registered; rather, your mark will be published for potential third parties to oppose your mark if they believe your mark conflicts with one of their own marks.

Receiving an opposition is quite rare, but if this does occur, we will happily refer you to an attorney with extensive experience in this field.

If no oppositions are filed against your mark within the 30-day publication period, your mark will proceed to the next step in the registration process.

STEP 6

Allowance

If you filed your application based on an “intent to use,” approximately six weeks after the end of the publication period, your mark will receive a “Notice of Allowance.”

A Notice of Allowance indicates that your mark has been approved to proceed to registration pending the filing of a Statement of Use. The deadline to file this Statement of Use is six months from the mailing date of the Notice of Allowance.

Within this six-month period, you must prove to the USPTO, through the filing of a Statement of Use, that:

  1. You are using your trademark on all of the goods and/or services listed in your application, and
  2. Your mark is being used in commerce.

To accomplish this, you must provide:

  1. Specimens – in other words, unedited photographs – of your product which clearly show the product and your mark on the product or the product packaging. You must provide at least one specimen per class listed in your application.
  2. The date of your first out-of-state sale if you are a U.S. citizen, or the date of your first sale in the U.S. if you are a non-U.S. citizen. If you listed any services on your application, the relevant date would be the first date you offered those services.

To read more about Statement of Use, please check this article: What is a Statement of Use in a trademark application?

Fees

The government fee to file a Statement of Use is $150 per class, per mark. In addition, if, for any reasons, you cannot file a Statement of Use within the six-month period following the issuance of the Notice of Allowance, you must file for an extension. Up to five extensions of six months each, can be obtained for any one mark. The government filing fee for an extension is $125 per class, per mark.

STEP 7

Registration

If you filed your application based on “actual use,” and your mark has not been opposed by any parties, you will receive a registration certificate with a new registration number for your mark approximately six weeks after the end of the opposition period.

If you filed your application based on “intent to use,” and you have filed a Statement of Use, and that Statement of Use has been accepted by the USPTO, your mark will proceed to registration. A registration certificate, with a new registration number for your mark, will issue approximately four to eight weeks after your Statement of Use has been accepted.

The whole process takes 8 months to over 2 years!

Best scenario – 8 months                                            Worse scenario – 2 years or longer

Now that your trademark is registered, you can put registered mark symbol ®. Please check these posts and cartoons about proper use of a registered trademark: When and how can I use my trademark symbols? and How not to invalidate your trademark: proper trademark usage rules

STEP 8

Post-Registration Maintenance

After your mark has been registered, you must “maintain” your mark to keep it active. Other than continuing to use your mark on all of the goods listed in your application, you must also file a Section 8 declaration between the 5th and 6th year after your mark has registered.

You may want to also consider filing a Section 15 declaration at this time, although it is not required.

Finally, you must file another Section 9 declaration to renew your trademark between the 9th and 10th years after your mark has been registered.

To read more about Section 8 and Section 15 declarations, please check out this article: What is a Section 8 Affidavit of Use?

It is important to use your trademark properly in order not to invalidate it. Please check these posts and cartoons on the topic: How do I lose my trademark protection?

Fees

The government filing fee to file a Section 8 declaration is $325 per class. The government filing fee to file a Section 15 declaration is $250 per class. The government fee to file a Section 9 renewal declaration is $325 per class.

Conclusion

As the trademark registration process in the U.S. can take over a year, we strongly suggest that you consider filing for your mark sooner rather than later. There have been instances where a client has waited to file for a mark until it was in “actual use,” and during that time, a competitor had filed for a similar mark. This forced our client to file for a different mark and to order new packaging reflecting this new mark.

For more information about registering your trademark, please take a look around our site, particularly the FAQ section. If you’re ready to file for your mark and begin the trademarking process, we are available via chat and email and look forward to working with you to protect your brand.

Updated on Dec 30, 2024

Which trademark should I File? Word Mark or Logo?

When deciding whether to file for either a word mark or logo, it is important to keep in mind that a logo must always be used as it is depicted in your application. In addition, if you file your logo in a particular color in the US, you must always use your logo in that particular color.

On the other hand, word marks are somewhat more flexible. When filed in all capital letters, word marks allow the trademark owner to display it in any combination of lower case and upper case letters.

For example, if you filed for the word mark TRADEMARK ANGEL ROCKS, you can use it on your goods and/or services as: trademark angel rocks, Trademark Angel Rocks, or TraDeMaRk AnGeL RoCkS.

The flexibility of a word mark ultimately makes it quite appealing as it is not limited to a particular font or color and can be displayed in a combination of upper and lower-case letters.

However, filing for a logo can be more advantageous in some situations.

For example, if your mark is found to be descriptive of your goods/services or uses generic words, your mark will generally be limited to the Supplemental Register. A distinct logo, however, can “carry” the mark to the Principal Register despite the descriptive nature of your mark.

Let’s say you want to file for TRADEMARK REGISTRATION CO. for a company that offers trademark registration services. That’s a mark that is descriptive of the services offered, and will therefore would be limited to registration to the Supplemental Register. If this same mark was filed with a distinctive logo, for example:

trademark-registration-logo

 

Then, the logo could provide sufficient distinctiveness to allow registration of TRADEMARK REGISTRATION CO. onto the Principal Register (with a disclaimer for “TRADEMARK REGISTRATION CO.”).

Another situation when filing for a logo is advantageous is when there are similar marks. For example, a client wanted to register the mark HAWQUE with a design element of a flying hawk chinese-trademark–  for computer software connecting customers to security contractors, in Class 9. We advised that the logo will most likely be registrable but the wordmark alone would be too similar to marks containing the word HAWK providing similar products in the same class. Although we received an office action alleging that the HAWQUE logo mark was confusingly similar to a registered wordmark, HAWQ, that also covered Class 9 computer software, we were ultimately able to overcome the objection. Our client’s logo, HAWQUE, was successfully registered soon after.

In another case, a client wanted to register the mark ESTEEM APPAREL, either the word mark or the logo. However, in our initial search, we found a very similar, registered mark, ESTEEM CLOTHING. In this case, we advised that the logo would have a greater chance of registration. The client chose to file for the logo register-a-trademark-in-australiainstead of the word mark and, although we received a confusion objection based on similarity with ESTEAM and ESTEEM CLOTHING marks, we were able to successfully able to overcome the objection and the mark was successfully registered.

Since the client protected the logo register-a-trademark-in-australia, he now cannot use Esteem Apparel side by side, without the image, in a different font or in ALL CAPITAL letters: ESTEEM APPAREL. On the other hand, if word mark had been filed – ESTEEM APPAREL, he could have used it in ALL CAPITAL LETTERS, in any font, side by side or one word above the other. Logo makes the trademark inflexible and you should not be making even small changes in your use.

In addition, in some cases, one has to file for a logo if the trademark is broken/separated by images or symbols. Please check our article that talks more about it.

Thus, as can be seen from the above examples, it is important to first determine if your mark is too descriptive to achieve registration in the Principal Register, and whether you intend to consistently display your logo on all of your products, prior to making a decision regarding whether to file for a word mark or a logo. Also, in case there are similar marks, filing for the logo may help to differentiate and ultimately achieve registration of your mark.