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View Full Version : Is trademark registration a DIY job? and a few questions about trademark registration



sfb
04-18-2013, 09:45 PM
I have read books about trademark, patents. It seems that trademark registration is simple enough for DIY. I still have a few questions here:

1. Trademark registered in foreign countries. My partner and I are developing a product together. The manufacturing is done in China and he has registered the mark in China. We agree that I register the same mark in US. Then we can have the same product selling in both countries without modifying the mold, package and labels. The product is not sold in US market yet. Shall I present the information about the trademark in China to USPTO?

2. Because in US, the mark is only issued after actual use. To save money, I don't want to file "intent to use". I assume I can not put the circled R sign on the product before filing. Shall I just use the TM sign or nothing with my mark. For example, if my trademark is SingingBird, shall I put "SingingBird TM" or just "SingingBird" before I file the registration?

3. When I file the registration, shall I have actual use on all the goods listed? For example, if my mark is for "Apparatus for lighting, lighting fixtures, components of lighting fixtures; electric controllers for lighting.". When I have sell some lighting fixtures but not controllers yet, can I file on "actual use" basis? Or shall I wait till have have all products ready?

Thank you very much!

vangogh
04-19-2013, 02:53 PM
Welcome to the forum sfb. Let me say right away that you probably know more about applying for a trademark than I do at the moment so keep that in mind with everything I'm about to say. I'm mainly replying to help keep your thread active so someone who knows more might see it.

1. I would think since it's the same company you would want it known that the trademark is for the same company. I really don't know what the forms are like, but if it asks about trademarks in another country I would likely mention the one in China. If it's never asked for on the forum, I probably wouldn't think to bring it up.

2 and 3. If I'm understanding right you either need to file actual use or intent to use. You'll need to actually use the trademark before you the trademark is registered and you can use the circled R symbol. I'm getting the information for this from Legal Zoom (http://www.legalzoom.com/trademarks-guide/registering-trademark-requirements.html)

I'm not sure if any of that helps, but hopefully it does call the thread to the attention of someone who can.

Business Attorney
04-21-2013, 10:04 PM
Trademarks, like practically any other discipline, can be a do-it-yourself job if you take the time to become an as educated on the subject as the person that you would hire. In the case of trademarks, there are a number of subtle issues that take a trained eye to spot.

For example, your last question is whether you can list goods that you're not currently applying the mark to. The answer is no, and if you do that it is possible that someone contesting your mark at some future date could challenge your registration as fraudulent. Actual use means actual use, and not simply an intent to use at some point in the future.

In the United States, you can use the symbol TM on any words or graphic that you claim to use as a trademark for your goods or services, even if you never plan to register that trademark. For that reason, using the symbol TM on a mark is generally a good idea, although common law trademark rights are still based on actual use of the mark, not on whether you had designated it as such with the TM symbol.