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Thread: Do I have to send photos of all my products for US Trademark filing?

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    Default Do I have to send photos of all my products for US Trademark filing?

    I've paid someone to do a US trademark filing for me and they have told me that I have to submit photos of all of my products, to cover each of the descriptions I am listing on my registration. For example class/category 025 is for apparel. I want my trademark to cover all aspects of ladies clothing and footwear, so in my opinion I need to list the items of clothing and shoes specifically. However I'm being told that I can only list the items I'm currently selling and that I cannot file for products that I am not yet selling i.e. footwear, even if I plan on selling these items under my brand within the next 12 months. For me this doesn't make sense because the items are in the same class/category 025. Am I receiving the correct advice?

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    If you are filing to protect the individual designs, that sounds like a patent, not a trademark, and yes sending in images of the designs makes sense.
    If you are filing to protect your name and associated visual representation of those products that's a trademark. You would send in what you are trademarking..logo, name etc.

    Patents product products, designs, inventions, processes and so on.
    Trademarks protect names, logos, colors, sounds, smell, and so on.


    As far as I know you can apply for either regardless of if the product is currently for sale or not Plenty of companies own patents for products that will never see the light of day, and trademarks that aren't public.

    So, filing for a trademark means that you are protecting your company name and logo. Of course you have to tell what business your in and what you do specifically, but I never heard of having to list each individual product for a trademark application, or not being able to apply for future or concept products.

    I am not a trademark or patent attorney, nor do I play one on TV, so you may want to get an actual legal opinion, or just go to the Patent and Trademark website and read for yourself. United States Patent and Trademark Office

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    Generally a trademark name must be in use to file it (or about to be). They don’t want people “warehousing” trademarks like some do domain names. That’s why they want pictures to prove the physical reality of existence and use, or at least serious and imminent anticipated use. I’m surprised they didn’t ask for more than just photo’s of the items. They usually want to see the name or logo “in use” in commerce. I think Harold may be correct that they have confused patent with trademark.
    However, technically you are trademarked just by using the name and the file is a sort of time stamp proof and public announcement. It also has to do with the geography or trading area. A single store called “Paul’s Restaurant” can’t tie up the name nationally unless of course there are multiple stores across the country. On the flip side if I am operating “Paul’s restaurant” in one area and a national company then decides to trademark the same name they can’t use it in my trading area.
    The trademark approved by the trademark office is NOT the final say in a trademark matter. Trademark disputes are litigated in courts and there are many gray area disputes. The trademark office filing is just a record

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    Quote Originally Posted by brightday View Post
    I've paid someone to do a US trademark filing for me and they have told me that I have to submit photos of all of my products, to cover each of the descriptions I am listing on my registration. For example class/category 025 is for apparel. I want my trademark to cover all aspects of ladies clothing and footwear, so in my opinion I need to list the items of clothing and shoes specifically. However I'm being told that I can only list the items I'm currently selling and that I cannot file for products that I am not yet selling i.e. footwear, even if I plan on selling these items under my brand within the next 12 months. For me this doesn't make sense because the items are in the same class/category 025. Am I receiving the correct advice?
    Under U.S. trademark law, class headings by themselves are not acceptable for registration purposes. The specific items of goods and/ or services must be listed. A filing in a class does NOT cover all the potential goods and services in that class, only those listed in the description of the goods and services, and the applicant's specimen must show the actual use of the trademark on the described goods and services. That does not mean that you have to have a photo of every product but you do have to have a photo of every type of product to show that the mark is in use for that product.

    The Acceptable Identification of Goods and Services Manual (ID Manual) lists identifications of goods and services and their respective classifications that the USPTO examining attorneys will accept without further inquiry if the specimens of record support the identification and classification. The examiner will not accept an "indefinite" description. You cannot just say, for example, "women's clothing." You must be more definite. So let's say your description reads "Dresses for women, shoes for women, headwear for women." Your specimen(s) will need to show the use for each of those categories of products within the class. That does not mean that if you make dozens of types and styles of shoes that you have to submit a photo of each product or SKU, but you will have to show the trademark in actual use in connection with the sale of shoes. Submitting a photo of the trademark used on a dress will not show that you are using it on shoes.

    Similarly, if you are only using the trademark on dresses at the time that you submit the affidavit of use, and those are the only goods that you can provide a specimen for, then your trademark registration will not issue for the other goods. An intent to use application can only cover goods that you intend to use the trademark on within the prescribed period. As noted by Paul, you cannot "warehouse" trademarks. Either you are using the marks on the particular goods or you have no right to register the marks on those goods. In fact, once you get a trademark registered, in the 6th year, 10th year and every 10 years after that, you will have to file a statement that the trademark is still in use on the goods and/or services for which it was issued, or the registration will be deemed abandoned.

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