Draft new trademark application for the U.S.; File application and other documents online - TEAS
N.B.: Sec. 1(a) filings: "Use" means services must be rendered (or goods sold), not just advertised: Playdom, Inc. v. Couture cancellation (and TTAB, attached)
For Sec. 1(b), intent-to-use, see below
Effective May 2, 2019 Exam Guide 1-19: Marks for Cannabis and Cannabis-Related Goods and Services
Draft Examination Guide 17 issued January 19, 2017 re: "incapable informational mark":
"This examination guide clarifies...certain types of informational matter that does not indicate source and
thus fails to function as a mark....and provides examples illustrating the concepts covered." See article here.
Instruct non-U.S. filing: based on priority? What country to use?
The Madrid System - 123 countries as of Oct. 12, 2020
WIPO: international Registrations -
Madrid Monitor (formerly ROMARIN) International Trademark Information Database
WIPO Support
Think about creating "tiers" for new filings:
Country codes and Country codes
Calling outside the United States and Country codes
Are countries multi- or single-class for filing?
File in translation or transliteration?: “Brand Owners Diverting From the Script,” by Emma Barraclough, Hong Kong [see attached 13 May 2014 article]
Color:
Australia: "In Australia, an application can be filed using a colour representation of a mark without a... description, and the mark will essentially be registered for all colours."
Logos:
Haiti: "The Ministry of Commerce in Haiti requires that the logos are named as they it is the only way for them to enter it into their database and also to refer to a specific trademark when corresponding with the National Press for publication. The name of the logo will be the one that will appear in the database and not the logo which will only appear on the certificate and on the publication of the trademark."
Updated December 18, 2020
Filing on an intent-to-use basis?:
Caution to ITU filers in the USPTO:
2009 Honda v. Winkelmann - Requirement to Demonstrate “Ability” to Use the Mark:
Honda Motor Co. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009)
- discussion at TrademarkThoughtsSpring2010
See also discussion with 2012-2013 updates at Foreign Marks Vulnerable in US (and attached)
Caution to ITU filers in Canada: Thymes decision [Reitmans (Canada) Ltd v Thymes Ltd (“Thymes”), 2013 FC 127] (comment with decision, below)
Color as a trademark:
US: When Can You Claim a Color as Your Trademark? by Susan Neuberger Weller, Esq.