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  • Writer's pictureTamara Pester

What to trademark - and when should I trademark?

Updated: Jan 7

Here's an excerpt from a recent meet & greet where the prospective client had some questions about trademark basics. He wanted to know when is the best time to file a trademark application, and how broad the scope of the application can and should be.

Q: I have a hobby where I make T-shirts, stickers, and things like that with my brand name and logo on them. Right now, it's more of a hobby. How necessary is a trademark, and where do you draw that line between a serious business that would benefit from a trademark versus something that's probably still considered a hobby. Should I wait until I get to a certain dollar amount in sales, to file a trademark application?

A: Well, it might surprise you, but actually the best time to file for a trademark is before you even start using it. The trademark process is currently about twelve to thirteen months, in the best case scenario. Right now, it is taking about five to six months for an application to get assigned to an Examining Attorney at the Patent and Trademark Office. After that, things happen relatively quickly,

But, because the process is so long, the best time to file is really, as soon as you're certain that there is a brand that you'd like to protect. The danger in waiting until you begin a certain amount of sales under the brand is that someone else could come in front of you in line at the USPTO and file for the same or a very similar trademark. Then when you are actually are like, totally a hundred percent ready, then that trademark would no longer be available. So, you can file now as an intent-to-use application.

With an intent-to-use application, you will pay an additional filing fee when you either file a Statement of Use or Request For Extension of Time to file a Statement of Use. But you can extend filing the Statement of Use for up to three years from the date that you receive the Notice of Allowance. So, essentially, it would give you like basically four years if you take into account the beginning of the application process and all the steps along the way. If you're extending it for the maximum amount of time, it's about four years from when you file that you need to actually file your statement of use and show that you are actually using the trademark with whatever services or items you've applied to protect it with.

Q: Okay, and how specific is the designation or classification for the goods or services with the USPTO? I don't know, how does that work?

The USPTO has a classification system for every good and service. For instance, apparel falls into class 25 for trademark purposes. However, if you're manufacturing notebooks and mugs, and flashlights under your brand, then you're selling in multiple classes. There is a filing fee per class of goods and services so you could potentially end up spending a LOT on filing fees if your application covers a bunch of types of items. You can file either as TEAS PLUS which is currently a $250 filing fee, or regular TEAS, which is $350 per class of goods or services.

Q: Oh, interesting. Okay. How are you familiar with a brand like Supreme, how did, how did they like do their stuff where they're selling t-shirts that they also sell like fire extinguishers?

I actually looked into Supreme (technically, Chapter 4 Corp. DBA Supreme) for, another client. They have applications and registrations in a bunch of different classes with the trademark office. Jewelry, barware, sneakers, apparel. .. .different companies use different strategies. Some are very narrow in their trademark applications, others are very wide and apply for anything they may potentially produce such as rugs, bedding housewares, luggage. It depends on the strategy the applicant decides on with their attorney, and their budget.

Thumbnail Photo by Oladimeji Ajegbile on Unsplash

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