Can i select all the products under a certain international category that are relevant to my brand and assign 1a filling basis?: While applying for a trademark through the TEAS PLUS form, i came across the international codes for goods that I sell under my brand that i plan to TM. There are few items I am already selling and few that I would like to sell in future-very similar items and they fall under the same international code. Can i select everything that i sell currently,as well as choose to sell in future since they are all under the same product code and still choose "1a " as filling basis for all the goods? However, for specimens i can only provide the ones that i am already selling. or do i have to assign 1b for the ones that i am not selling yet even though the international code is still the same and the products are very similar like women's lingerie and ?
Kenneth’s answer:
You are limited to only those products or services you are actually selling or providing at the time of the application. In order to include the others, you would need to list is separately in the application as an intent to use (1b) and then provide proof of use in the future.
Frankly, sometimes more is not better. It is usually best to carefully consider the applied for goods and services to provide the broadest protection - this sometimes means simple descriptions. This is where an experienced trademark attorney can help work with you to insure you are getting things .
When submitting a response to a trademark office action do you submit one file consisting of the response and the exhibits or...: I have written a response that includes arguments as well as exhibits. Can you tell me if I am supposed to submit it all as one file or do I submit each exhibit as it's own file etc?
Kenneth’s answer:
The preferred method of the USPTO is to paste the argument onto the form (in a text box), and the exhibits as separate attachments. That said, if the argument is complex, having the ability to format it is beneficial, and the USPTO allows the argument to be submitted as a PDF in the evidence section. Exhibits are then still attached individually (though you can group them if the grouping is relevant).
That said, as others have said, responding to an Office Action can require technical answers, and you may benefit from consulting with an experienced trademark attorney prior to submitting your response.
Can I make and sell 20 of the same piece of art (ALL PIECES ARE MADE BY HAND) using a trademarked logo in my artwork? Fair Use?:
Are there limitations to the quantity sold as long as I am making each by hand?
Am I allowed to promote the art as: XYZ Logo Name by Me?
Kenneth’s answer: While every situation is different and fair use requires analysis of four different factors, you probably need a bit of clarification first. Fair Use is a part of copyright law, not trademark law. As such it typically does not apply to questions of trademark infringement (I say typically because there are defenses to infringement that are akin to Fair Use). Without knowing the specifics of your situation no one can definitively advise you on this situation, however, generally speaking the number of products sold and how they are made is not usually related to a defense of trademark infringement.