The last trademark-centric article posted, entitled, “Just a Picture on a T-Shirt: The Basics of the Most Common Trademark Application” was intended to be a two-parter. The article revealed a hole in the trademark regulation discussed later, and the second part of the article needed to await a solution to that hole, which also appears below. Let me explain . . . .
Remember our hypothetical client? She came into Brackett & Ellis with a tee-shirt design featuring a protectable trademark printed largely across the front of a shirt and had the desire to protect it. Trademark examining attorneys with the USPTO are so accustomed to seeing this sort of application that most examining attorneys have an Office Action template explaining the refusal that can simply be copied and pasted.
We previously discussed means of overcoming the inevitable ornamental refusal sure to follow submission of a trademark application with ornamental usage on a clothing specimen—the easiest being amendment to the Supplemental Register. Sometimes, a client may not have non-ornamental usage or may not be able to show acquired distinctiveness or use as a secondary source. In such an instance, amendment to the Supplemental Register (the “Supp,” as friends call it) becomes the only option for moving the mark forward. And this is not a bad option; it affords many of the same benefits as a registration on the Principal Register and has the added perk of foregoing the publication period.
But imagine, if you will, this dilemma: As an attorney who knows that their client (1) wishes to save money, and (2) is only using its mark in an ornamental manner, what is your best option for addressing your clients priorities while completing the required tasks for moving a mark forward? This question may seem easy but is slightly more complex than it appears.
Generally, a TEAS PLUS filing is the cheapest option for a client who wishes to keep costs down. TEAS PLUS filings offer a lower fee under the assumption that fewer government resources will be required to examine it. An applicant pays $225 per international class, rather than $275 per class. In exchange, the applicant (or his/her attorney) commits to providing the information required by the USPTO upfront in the initial application. Further, the trademark’s identification of goods and services must come directly from the Trademark Manual of Approved Identifications of Goods and Services, the application must be signed and include the requisite number of filing fees, etc. Assuming these requirements are met, the trademark examining attorney ultimately reviewing the application will require less time to review it, generating fewer costs to the agency, and ultimately allowing the attorney to move on to the next application.
If you want to keep your client’s costs down, you want to file a TEAS PLUS application. Ideally, you’d like to file the application directly onto the Supplemental Register in order to (1) avoid the delay associated with receiving an ornamental refusal, responding to it, and awaiting the trademark examining attorney to review your response and approve the mark, and (2) avoid the costs to your client associated with filing a response to the ornamental refusal. Makes sense. However, 37 CFR §2.22(d)(4), prevents the USPTO from offering a TEAS PLUS application for the Supplemental Register. So as the attorney, you’re forced to choose: Give up TEAS PLUS to file directly on the Supplemental Register, or file TEAS PLUS, understanding that you’ll receive an ornamental refusal, delay registration, and have to spend time (and likely, more of your client’s money) responding to the refusal.
The Solution: Try providing a miscellaneous statement that says something like the following: If, upon review, the trademark examining attorney determines that applicant’s usage is ornamental, applicant hereby authorizes amendment to the Supplemental Register.
This will allow the application to end up on the Supplemental Register without additional time and expenses associated with an Ornamental refusal. Plus, because the application began on the Principal Register, it is eligible for TEAS PLUS fees, and the amendment does not result in loss of TEAS PLUS status. I’ve previously tried this approach, and have had a successful result.
If you need help registering your mark on a shirt or any other trademark, the attorneys of Brackett & Ellis, P.C. can assist.
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