Reply To: THURS Jul 9th – COACHING CALL –Post Questions/Critiques below by Wed 5pm EST

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Honor T
Honor T

Sprint to Profit week 4.

If you have time can I please have some advice on TM classifications.  Obviously as I haven’t done anything like this before I  dont have enough knowledge to know what to do.   Of course would be good to get brand registry quickly for the tools and make sure my brand name is protected.

I have this answer kindly supplied from Regan –

Classes for my TM:  This is a matter to discuss with your TM lawyer.  The more classes, the more costs.
But before discussing this with your lawyer, you need to consider what your real purpose for getting a trademark is.  Is it just a tool to get Amazon Brand Registry or is it to provide the protections provided in the US legal system if someone is illegally using your trademark.
If Amazon Brand Registry is your main aim, then just get 1 class because Amazon is not interested in TM classes.
If you want full legal protections, then you need all relevant classes.
Think about it and talk it through with the lawyer.  But bear in mind, almost all Amazon sellers get just 1 class because their main aim is Brand Registry.

Me – I don’t know if I need full legal cover and cover all classifications or not. I don’t have a product as yet.

I can apply with ITU – this is from the lawyer –

If we proceed with an ITU application, you can list as many products as you realistically think will be available in the next 9 – 12 month.  A few months after we file the ITU application, assuming all goes well, the TM office will issue a Notice of Allowance (NOA) triggering a six-month period in which you must file a Statement of Use proving you are selling the products identified in your ITU application.  As such, between the date we file, and the date you have to file the SOU, you have about 9 – 12 months to launch the products in the application.  Therefore, you should list all products in the application you realistically believe will be in use in the next 9 – 12 months.  If we file the SOU and some of the products are not for sale by then, we will have to remove them from the application at that time.

Since you are contemplating several products, I suggest you go through the ID manual and list the exact description of the item you wish to include in Class 21.

Me – Wrt to Amazon sellers usually have one classification – her response –

You can apply for as many, or as few, classes as you chose.  However, you will obtain registered trademark rights only as to the goods actually applied for.  Once you file an application, you cannot amend it to add additional goods.  If you decide you later wish to add goods covered under a different class, you will need to file a new application to do so.

Amazon will not require you to have a separate TM registration for the “other products” not covered by the registration to add them to your Brand Registry account.  However, Amazon will consider whether or not you have a TM registration in place when you request Amazon to stop potentially infringing sellers.

By example:

If you currently sell bath toys and bath sponges under the mark BUBBLETIME, and we apply for a TM registration for the same, you will be invited to join Brand Registry for the brand BUBBLETIME in about 10 business days.

·       If six months from now you begin selling soap under the mark BUBBLETIME, you can add your soap products to your BUBBLETIME Brand Registry account without proof that you have filed a TM application to cover the soap product. You would get most of the Brand Registry benefits for your soap product including brand representation, search tools and brand building benefits.  However…

·       If a year from now you discovered another Amazon seller selling bath toys, bath sponges, and soap under the mark BUBBLETIME, you could request Amazon to remove the listing as infringing to your trademark.  At that time, Amazon would review exactly what products are covered by your TM registration(s).  Since under this scenario you only have a TM registration covering bath toys and bath sponges, Amazon would enforce your rights as to those product by may chose not to enforce your rights as to the soap products unless you can show that you separately applied for a TM registration of the soap products.