Michael J. Foycik Jr., Esq.

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The following is advice from a US attorney, in the field of US Trademark law. From my work assisting companies in China with their US trademark applications, I have the following advice. This may help your company save time, effort, and money.

The main problem is when filing the wrong specimens of use, which can become costly and delay the trademark application. Correct specimens of use are required in US Trademark applications. They are required at the time of initial filing for “actual use” applications, and they are required after allowance in “intent-to-use” applications. The specimen of use should show the trademark attached to the products, or on boxes/packages that contain the products; or on a web site showing the trademark in an actual business. If a web site, ideally there will be an order page.

The description of the goods and services should be specific, as far as possible. It can start with a generic term, followed by one or more specific terms. An example is: “Exercise classes, specifically in the field of stretching and yoga.” The trademark examiner can then more easily accept the description, or alternatively suggest an acceptable version of the description, speeding up the trademark process.

The trademark is correctly used with a TM symbol after it. It can be in raised letters after the trademark, or it can be in parentheses like this for a hypothetical company: ANYWHERE (TM).

Ideally, in actual use, the trademark will also mention the goods or services after it, for example the following is the same hypothetical trademark for a company that sells vitamins: ANYWHERE (TM) vitamins.

There is a new requirement that all US trademark applications for companies and individuals outside the US must by a US attorney licensed in the US. If you require help with this, please send your inquiry at the email address below.

The author is a trademark attorney in Washington DC who helps Chinese companies register their trademarks in the US. The author has over 28 years experience in trademarks, trademark applications, and trademark appeals. For further information, please email at mjfoycik@gmail.com, or call at 877-654-3336..