How to Know Which Type of Trademark You Need: Your Options for Different Types of Trademark Applications

Trademarks are somewhat straightforward. A trademark is anything that acts as a source identifier for a particular product or service. It is the thing that allows the public to discern where that product or service is coming from. Think of the Apple image with a bite out of it, or Coca-Cola written in that fanciful font.

At Collins Gann McCloskey & Barry (“Supplement Counsel”), we are often asked to explain the basic options for applying for a trademark. As an explanation, I will cover what your two basic applications are, going from non-use to registration, and how a word and logo application differ.

Standard Application (1a)

Most of the sports nutrition, dietary supplement and natural products businesses that come to us are ready to file what I consider a standard trademark application. We call this the 1a application. This type of application is usually filed when the business has already started using its trademark in commerce (i.e., selling the product or service with that logo/name/slogan). If you file this application using the online form the USPTO offers, the filing fee is $275.00 per class of goods or services you are registering under. The good news is that the $275.00 is the only USPTO filing fee associated with a 1a application. Attorney’s fees aside, this is the most basic explanation.

Intent to Use (1b)

Alternatively, if you have an amazing logo or name for your sports nutrition or dietary supplement business or product but you have not started using it in commerce, you have the option of filing early under what is called a 1b application. The intent to use application exists so that people with a bona fide intent to use the trademark in commerce can get federal protection of the mark early. The first filing fee for this is the same as above, $275.00. But, you won’t get that prized registration until your application reaches 1(a) status.

The transition from 1(b) to 1(a) is fairly simple. After the applications are approved you have six months to file what we call a statement of use and a “specimen” or proof of use. The filing fee on this is $100.00.

The specimen can be a multitude of things, but it has to show you either marketing the product or service for sale or actually selling the item. Website screenshots showing a list of services and how to contact a company typically work, or even business cards can sometimes work. Having an attorney working with you on this is extremely important because applications are denied based on specimens very regularly.

If you’re not ready by the 6-month mark to file the statement of use, you can file an extension of time. You are allowed to file a total of 5 extensions before the USPTO rejects your application for non-use. Each extension buys you 6 more months to start using the mark in commerce. There is a $125.00 filing fee for this because the USPTO wants to encourage you to start using the mark quickly.

Whether you choose to file 1(b) and incur the additional fees is more of a business decision than a legal one, however, I do like to talk this through with our clients. Some may opt to go this route if they are in a highly competitive field, or if their business is already proven in other areas so they know this particular product will do well, or maybe they just like having the extra security as they prepare to launch. Again, this is a tactical business decision for you and your advisors to make.

Wordmark vs Logo

The last thing I want to touch on is the simple wordmark vs a design or logo mark application. Under the umbrella of a 1a or 1b application, we have a few other options to consider.

A wordmark is exactly what it sounds like – just the word. We are going to use Apple as our example to make this easier. Apple is the wordmark, the apple with the missing bite is the logo mark. If the two were together, it would be a combo design + wordmark.

You can register these in many combinations. However, it is important to understand that what you register is what is protected, and only that. Often, I have clients that come to us with a great logo that incorporates their business name. They want to register the whole thing all in one application. Of course, this is an option —  however, I typically advise that the client split this up and protect the logo in one application and the word mark (business name) in another. And here is why.

If for some reason after you have been using your combo logo/wordmark and you want to rebrand under a new logo with maybe different colors your trademark registration is no longer going to protect this new logo design or your word mark because you protected both under one combo application. If you protect the logo (with no colors) in one application and the word mark in another, you can change your logo without affecting the registration of your wordmark.

So yes, there will be two different filing fees here and more if you’re registering with multiple classes of goods or services but in the end, it will save you time and keep your trademark protected even through a rebrand.

To wrap things up…

As I said, I wanted to keep this simple. These are the very basics when it comes to the types of trademark applications. I don’t suggest registering on your own or trying to navigate the application but, you do need a baseline knowledge of what you can and can’t do when it comes to registration. As always, if you have questions or are ready to protect your sports nutrition, dietary supplement or natural products business through trademark registration, Alan Feldstein, Esq., paralegal Ellie Sladic and I are here to help. Just send an email to [email protected].

Please note this article is for information only and not to be construed as legal advice; it does not create an attorney-client relationship. [© Shannon Montgomery, Supplement Counsel, 2020.  All rights reserved.]