US Trademark Application Question re Photos

[LinkBright Media]

I've paid someone to do a US trademark application for me and they have told me that I have to submit photos of all of my products, to cover each of the descriptions I am listing on my registration. For example class/category 025 is for apparel. I want my trademark to cover all aspects of ladies clothing and footwear, so in my opinion I need to list the items of clothing and shoes specifically. However I'm being told that I can only list the items I'm currently selling and that I cannot file for products that I am not yet selling i.e. footwear, even if I plan on selling these items under my brand within the next 12 months. For me this doesn't make sense because the items are in the same class/category 025. Also it's not how the UK trademark system works, where you can list things in the same class that you haven't sold yet. Am I receiving the correct advice?

 

[F_B]

Do you know if the application has been filed yet? Be aware that you cannot add goods to the specification one the application is filed. Additional goods will require a new trademark application. For example, if your trademark application has been filed with the specification of clothing and headgear only, but not footwear, you will be unable to add footwear at a later date to that application.

The law is different in the US. Foreign trademark applications require evidence of use of the mark in trade or a genuine intent to use the mark on the specified goods. You will have 6 months from the mailing date of the notice of allowance to file the evidence of use (such as invoices of sale, swing tags, or photos, anything that proves the use of the mark on each type of goods).

Please note, that this means if your application lists shoes, you just need to supply evidence of your use of the mark on shoes in the US, not evidence for every different shoe you sell.

You can request up to 5 further extensions for this, each of 6 months in length. Failure to provide the evidence will result in the application being treated as abandoned.

To give a clearer answer I would need to know your full application details, particularly, the goods specification.

 

[dollfingers]

I'm a long way off this yet but it's really important information on the difference between UK /U.S. trademarks. I didn't realise you had to provide evidence for each specified good. Something to bear in mind! Thank you : )

 

[Deleted member 13430]

You don't need to submit evidence of use on filing of US Application if you are a foreign applicant the option I describe is not available to US Applicants). Although you will still need a genuine intent to use the mark on all the goods/services covered in the US otherwise the application would be deemed in bad faith, if you have a foreign application or registration (and I presume you may have a UK Registration) for the goods/services of interest, you can file the US Application based on a foreign registration claim. If your foreign application is still pending, the US Application would not be granted until that application is granted (in short the application would be suspended until the foreign application grants), but you can still file the US Application. If you have a UK (or other foreign) registration all the better. You can file your US Application via two routes (a) a national US Application which you seem to be doing or (b) via the Madrid Protocol (where you have to have a 'home' application or registration (basically would be same as your UK Registration) and if you take the second route in theory you may never need to use a US Attorney, as you can do that yourself or via a UK based TM Attorney.

In short there are other options to completely avoid the need for evidence of use.

 

[LinkBright Media]

Thanks FrazerBye, the application is already underway and I'm glad I went ahead and included products that I will be selling in future as well. My application is now considered an INTENT to use the trademark for a particular type of product, and when I submit evidence that the product is indeed on sale then I have to pay $100 for them to process the information.

SolsburyHill, I submitted a UK trademark at the same time so I couldn't use it in the US trademark application but yes you're correct, I could have used it if it had been approved already.

 

[Deleted member 13430]

LinkBright, it's all filed now so no worries. However you could have used a pending UK application as a 'foreign registration' base if filed before the US application or on same day. Ultimately the UK Application has to be granted for that base ultimately to kick in, but what happens is the USPTO stay the US Application pending grant of the U.K. Application if the UK Application has not granted by the time of the acceptance. If the UK Application didn't grant you just drop that ground and use intent to use. What you could have done us file UK Application first then claim priority against US Application and use UK Application as a foreign registration base or file a Madrid Protocol Application which can also be based on a pending UK application. Anyway no worries.

 

[LinkBright Media]

Useful info there SolsburyHill, thank you! Come to think of it my UK application was submitted a few days before the US application but as it's filed now then I guess it's too late.