Tips from the Trademark Insider: 5 Tips to Avoid Fraud in Your Trademark Applications

In the past year the Trademark Trial and Appeal Board has been cracking down on suspected fraud by canceling, in whole or in part, registrations that were acquired with inaccurate or information. Whether intentionally or unintentionally done, here are 5 tips to help you avoid fraud in the preparation of your U.S. Trademark applications:

1. Dates of Use: When preparing an application do some research to make sure the dates of claimed first use of your mark are accurate. Many of us cannot recall the exact date we first rolled out a new mark or marketing campaign. We just recall it was, for instance, in the Summer of 99’. If you cannot recall do you best to re-create when it was by looking through old emails, etc. Hopefully you’ll be able to come up with at least an approximate month and year. If so, you should be good to go. But don’t guess and put down February 1999 when it just as easily could have been November of 1999. If challenged this bit of carefree carelessness could cost you your registration down the road.

2. Intent to Use: If you have yet to use your mark do not file a use-based application. Rather, be honest and file the intent-to-use version. Sure it will cost you a few extra dollars down the road to amend it to a use-based application. But this is far less than the cost of fighting through a cancellation proceeding which claims that you were not using the mark when filed just to save a few bucks. As a general rule if it is not in use – file an intent-to-use application. If it is – file a use-based application. Do not file a use-based where an intent-to-use is required. Down the road you may be sorry that you did.

3. Proper Identification of Services: This one that we see all the time. When identifying your services in an application think about it from a “what do I do for others” perspective. This one area we see a lot of – from a “can you help me fix this perspective.” Sometimes we can. Sometimes we cannot. In short, the recitation of services should be the services you provide FOR OTHERS under the mark. You may market your retail store services, but you are not a marketer nor is your mark used in connection with marketing. Your services are retail store services. That is what you do FOR OTHERS. The marketing is just how you inform people of your retail store services. Likewise, McDonald’s makes our favorite hamburgers. But they do not have a mark for hamburgers. Why? Because their marks are for restaurant services. So a good rule of thumb when writing your services down from a trademark perspective – always think of someone else. What do we do for others? You should be just fine.

4. Scope of Identification of Goods or Services: This is the hottest issue in fraud right now. For years lawyers and applicants have been defining the scope of their goods and services way too broadly. In short, let’s say a company, we’ll call them Zike, makes a line of shoes. Shoes are in International Class 25. Let’s say they know that they make shoes today but someday they’ll expand to socks, shorts, and other clothing. Should they identify all of these goods in Class 25? The answer – No! Even if I make the shoes today and am really really sure I am going to make the socks next year? NO! If you register a mark and do not use it in connection with ALL of the goods or services listed therein the mark is then subject to cancellation, in whole or in part, due to listing goods or services with which you are not using the mark. Thus a better plan is to register the mark now for what you are using it with. If you are concerned about future expansion file an intent to use mark with those goods you believe will be expended into in the coming years.

5. Interstate Use: Finally, if you are not using the mark in interstate commerce – commerce that is either between at least two states, between the U.S. and a foreign country, or otherwise – do not bother with a federal trademark. If you have a web site you are probably ok. But if you are sitting in the middle of Nebraska, no web site, and have a single store that sells fishing lures – more likely than not you did not have use in interstate use – save your money – don’t apply for a registered mark. Why? The registration fees are not refundable and if you don’t have use in interstate commerce it will be canceled.

The Trademark Company