All Questions in Service Marks >> Online Store: Application Fee for each Class.

Online Store: Application Fee for each Class.

Posted by . updated on 11/11/2009
Let?s say I want to trademark (actually servicemark) a Name for an online retail store and file under Class 35 as follows:

?On-line retail store services featuring ? software, t-shirts, electronics?

The United States Patent and Trademark Office (USPTO) Web Page, when discussing the TEAS application, states the following:
Only one mark is permissible per application, although a mark may consist of several elements that are joined to form a composite whole (e.g., words plus a design). The filing fee for the application is based on the
?  number of classes of goods and/or services in the application. I.e., if an application is for one mark, but the mark is used on goods and/or services in two different classes, e.g., computer software in Class 9 and t-shirts in Class 25, then payment for two classes is required before the application could be approved.

Question:
Does that mean that I have to file a separate application for every ?class? (every product like software, t-shirts) that I sell on my online retail store?
Yow!
Answers (7)
 
DJoshEsq
The short answer is - of course not!

If your company is actually only providing a service, then you don't and actually can't obtain protection for the goods.

An experienced trademark attorney can determine which class or classes in which to file your trademark.  Although trademark law often appears simple to outside observers, however, there are many mistakes that lay peoplemakewhen filing trademark applications themselves - many of which result in wasting money, limiting protection, incorrect protection and etc.

In my opinion, it is relatively inexpensive to have an experienced attorney file and prosecute a trademark application - even for an INDIVIDUAL!

If you would like more detailed information, please feel free to contact me.
 
 
JSonnabend
It is unclear to me from your post whether you are simply providing retail services or if you are providing house branded products as well.  Retail services is a single class (035), but the branded goods would be classified by type of good.

- Jeff
 
 
DJoshEsq
Yes, Jeff thanks.  Rereading my post I don't think I made it clear that I was assuming there was just use on the services. 

Jody, to clairfy it depends on whether you are just providing a service, e.g. a retail services - selling other companies' goods OR whether you are producing goods, e.g. t-shirts and electronics and selling them under your mark.

Good luck!
 
 
JSonnabend
Whether or not the OP is producing goods is almost entirely besides the point.  The issue is essentially whether she is selling goods branded with her mark.

- Jeff
 
 
nekogomi
So if the OP is providing both retail services and selling goods branded with her mark, and if she wants TM protection for both the retail store mark and the mark on her good(s), then she would need to file for TM protection for two (or more) classes - retail services (035) and whatever classes are applicable for her other goods.  Is that right?
 
 
JSonnabend
Quote from: nekogomi on 02-05-08 at 08:36 am
So if the OP is providing both retail services and selling goods branded with her mark, and if she wants TM protection for both the retail store mark and the mark on her good(s), then she would need to file for TM protection for two (or more) classes - retail services (035) and whatever classes are applicable for her other goods.  Is that right?

You are correct.  If the OP wants registrations covering both the goods themselves and the retail services, she would need to file in both classes.  The extent of the "protection" of one or the other classes is a different, more complicated inquiry.

- Jeff
 
 
bcapehart
Jody -

In answer to your question (need to file separate application for each class), there is no requirement that when you file an application, you must include all services or goods.  Jeff is correct in that you will need to file for each class you want to seek protection.

Additionally, instead of stating that "its complicated (which is assumed based on the fact that you posted your questions), see an attorney", which does not provide much information for you, consider this: if you are contemplating seeking a TM registration, why wouldn't you want to seek as much protection as possible (in your OP, you indicated services of online sales classes but cited to two classes of goods: computer software in IC 9 and t-shirts in IC 25).  It would not be too costly to file for both the services and goods.

As an additional item to keep in mind, consider whether to file a single multi-class application or multiple single-class applications.  The filing fee would be the same in both cases.  The benefit of a single multi-class is that all the classes would be reviewed at the same time.  One downside to the multi-class application would be that one class may be allowed while another class may be rejected, which causes a delay in the entire application.  Additionally, if a third party files an opposition to one class, the entire application will be delayed.

As for the multiple applications, you would not have the above problems.  If one class is delayed, the remainer would still proceed through the PTO.  One downside is that each application would be examined on its own (more record keeping, more files to monitor/maintain).

I normally tend to lean toward not filing multi-class applications in favor of multiple single-class applications (but not all the time).  There is usually more flexibility with the approach than with a single multi-class application.

I hope this helps.
Brent
 

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Let?s say I want to trademark (actually servicemark) a Name for an online retail store and file under Class 35 as follows:

?On-line retail store services featuring ? software, t-shirts, electronics?

The United States Patent and Trademark Office (USPTO) Web Page, when discussing the TEAS application, states the following:
Only one mark is permissible per application, although a mark may consist of several elements that are joined to form a composite whole (e.g., word...