Nowadays you can do pretty much anything online, so why not file an application for your trademark online too? Well you can. Actually you can do it a couple of different ways. You can use a regular trademark electronic application system (TEAS) or you can use TEAS Plus. When I tell my clients this, the first thing they ask me is, “What’s the difference?” Well, generally, the short answer is, “TEAS Plus is designed to be easier to use and it’s less expensive than regular TEAS.” In response, most people say, “Sounds great, sign me up!” But I say, “Not so fast.”
TEAS Plus is supposed to be easier because the application system allows you to only choose goods and services classes that are listed and approved for use by the USPTO. It is also less expensive to process TEAS Plus applications because they are less likely to be refused. This is good if you’re using your trademark for goods and services that already exist in commerce, AND if you’re applying for a trademark for the first time, meaning that you don’t have another pending application for the same trademark, in U.S. or elsewhere.
TEAS Plus might not be as advantageous if applicants are using your trademark for unusual or unique goods and services in commerce, and/or if you have a pending trademark application for the same trademark elsewhere. For example, applicants may be left with no accurate way to describe their goods and services if they are unique or nonexistent in the market at the time the application is filed, because TEAS Plus likely will not list such goods and services. This can be problematic because usage of trademark for goods and services outside of the scope of the goods and services classes as specified in the application can result in the lack of a basis for registration of such goods and services. Even if the application becomes registered, the registration can become invalid at a later time for the same reason.
TEAS Plus may also be extremely difficult to use if there is another pending application for the same trademark, particularly if the pending application is filed in a foreign country. When a foreign application is used to claim priority for a U.S. application, applicants are limited to claiming the same goods and services classes as specified in the foreign application. This might not sound like a big deal but it might become a big deal if particular goods and services are described one way in a foreign country, and another way in the U.S., because TEAS Plus may not list goods and services as described in the foreign country.
If an applicant chooses to omit one or more goods and services as indicated in the foreign application, the applicant can effectively forfeit the right to use the trademark for the omitted goods and services. Alternatively, if the applicant lists goods and services in the U.S. application that were not listed in the foreign application, USPTO can reject those goods and services. As a result, the applicant may be unable to use the trademark for the same goods and services listed in the applicant’s foreign application.
Most of my clients whom I file trademark applications for also happen to be the same clients whom I’ve filed patent applications for. Being that patent applications are usually for unique goods and services that barely exist in market, many of my clients can’t accurately describe their goods and services using TEAS Plus. Additionally, most of my clients want to produce their goods or provide their services worldwide. So for that reason, I recommend many of my clients to use regular TEAS, which allows you to enter a short description of goods and services for which the your trademark is used. Although I always put my client’s financial interests into consideration, I think that paying another $50 for each class is definitely worth paying to accurately describe how they’re using or are planning to use their trademark. An additional $50 per class also isn’t too bad if they’re including only a couple of classes in their application.