By Richard Stim
Before you register your name, you should consider two preliminary issues:
Okay, once you’ve executed these two hurdles, you’re ready to proceed.
Before you begin your federal application, you’ll need to figure out what theory it’s based on. Most federal trademark applications are based on either “use in commerce” or an applicant’s intention to use the trademark (referred to as an “intent-to-use” or ITU application). Learn more about Intent-to-Use applications.
The preferred (and less expensive) method of preparing the federal trademark application is to use the online Trademark Electronic Application System (TEAS) located at the PTO’s website (www.uspto.gov). TEAS is an interactive system in which the user is asked a series of questions. If a question is not answered or an essential element is not completed, the applicant is asked to correct the error. I recommend starting with the TEAS PLUS system as it is the least expensive way to file.
Using the online TEAS PLUS system, you will be asked the basis for your application. If you have already used the mark in connection with your blog, then you would check “Yes” under “Use in Commerce.” As for dates of use, you will need to provide the date (or your best guess as to the dates) you first debuted your blog using the trademark, anywhere. You will also need to provide the date when you first sold your work (or services) outside your state (for example, through an Internet sale or during travel to a software trade show). If you have not yet used the mark but have a bona fide intention to use the mark, check “Yes” under “Intent to Use.”
You will need to identify your class of goods. Blogs fall into Class 041_:
International Class 041: Education; providing of training; entertainment; sporting and cultural activities
Along with the class for the goods, you will need to provide a description of the blog services. This description is different from the listing of the International Class.
EXAMPLE: "On-line journals, namely, blogs featuring commentary and information in the fields of [describing the content or field of the blog].
If the mark is a word or group of words, identification of the mark is straightforward. The mark may be identified simply as “DEAR RICH” or “GAWKER.” But if the mark is a stylized presentation of the word, a graphic symbol, a logo, a design or any of the other devices permitted under trademark law, a statement must be provided that clearly identifies the mark. If you’re using the TEAS system, type in the word mark or, in the case of a stylized mark, attach a graphic file (either JPG or GIF format) containing a black and white rendition of the mark. Insert a written description in the appropriate box.
For the broadest protection for a word mark, register it free of any lettering style. This will give you the ability to use the trademark in various fonts, rather than being restricted to your original presentation of the mark.
The applicant can be an individual, a partnership, a corporation, an association such as a union, social club or cooperative, or a joint ownership by some combination of any these forms. Most likely, it’s you, so your own citizenship is required as well as a mailing address. If you are doing business under a fictitious name, that information should be provided, especially if it is included on any specimen furnished with the application. If the mark is owned jointly by two entities, that should be stated as well. Supplying this information online using TEAS is facilitated by typing the appropriate information into the form. Drop-down menus and online help screens are available to guide you.
You are required to provide a declaration, a sworn statement or other verification that the facts in the trademark application are true. You, or an officer of your corporation or association, should sign the declaration. The TEAS application provides an all-purpose declaration that can be used for both ITU applications and for trademarks that are in use.
Many trademarks include words or phrases that, by themselves, cannot be protected under trademark law. To allow one person an exclusive right to use such terms would decimate the English language. Therefore, the trademark office usually requires a disclaimer as to certain portions of trademarks. For example, if an applicant wanted to register the mark, The Big Fat Blog, the applicant would be required to disclaim “Blog.” This means that apart from the use as a part of the trademark, the applicant claims no exclusive right to use the word “blog.”
If your application is based on actual use of your mark in commerce, you’ll need to enclose a specimen—that is, a JPG showing the trademark being used on your blog. In the case of ITU applications, the specimen must be filed later, together with a document entitled “Amendment to Allege Use.” You’ll see that the USPTO provides a means for uploading a digital photograph of the specimen. For your blog trademark, you should furnish a digital image of a screen display that shows use of the mark at the blog, along with the URL as shown in the browser.
You will complete the process by paying the fees, authorizing your electronic signature and validating the application. After you click “Pay/Submit” and your transaction is successful, you will receive a confirmation.
Later, you will receive email acknowledging the submission of your application. Hold on to that email, because it is the only proof you’ll have that the USPTO has your application. It is also proof of your filing date and contains the serial number assigned to your application.
Okay, you’ve filed. Learn what to do after you file your application.