(light footsteps)
♪ Who wants to talk about trademarks ♪
♪ I do, I do ♪
♪ It's trademark time ♪
♪ Who's ready to talk about trademarks ♪
♪ Trademarks, it's the trademark song ♪
- All right, so a few weeks ago,
I made a video kinda talking about
the general process and steps involved
in getting a registered trademark
with the United States Patent and Trademark Office.
Then a few weeks later,
I made another video talking specifically
about trademarks for standard character marks or word marks.
And now, I'm gonna make another one
specifically about logos or design marks.
And it's gonna be fun, you guys.
I'm telling you now, it's gonna be a blast.
Hi everyone, I'm attorney Aiden Durham
with 180 Law Co in Colorado.
You're watching "All Up In Yo' Business,"
and today we're gonna talk about how to get
a trademark registration for a logo or a design mark.
If this is your first time
at "All Up In Yo' Business," welcome.
Please be sure to subscribe,
and click that little bell
so you get notified anytime I post a new video.
You can also check the description
for additional information and resources,
including a link to download
my free "Brandish" DIY trademark guide,
where you'll learn even more about trademarks.
And a quick little legal disclaimer,
While I am a lawyer, I am not your lawyer.
The stuff that I talk about in all of my videos
should not be taken as a substitute
for actual legal advice.
If you need help with a legal issue,
you should consult with a lawyer
and don't just rely on free info you get from the internet.
So overall, the trademark registration process
and the application process
really isn't all that different
if we're talking about a word mark
or a standard character mark
versus a design mark, like a logo.
In fact, really, you know, the process
every individual applicant and every trademark
is gonna go through,
the process is gonna be a little different
for every application,
but overall, the process,
the general steps and process
that the application goes through
is more or less exactly the same,
regardless of the type of trademark
that we're dealing with.
But there are a few kind of specifics
that apply only to design marks
or special form marks like logos.
And so that's the stuff that we're gonna focus on today,
is some of those specific details
that really only apply to logos.
As I've discussed in my previous videos,
the first step,
anytime we're talking about trademarks
or getting a trademark registration,
the first step is always going to be doing
a clearance search.
We wanna make sure we search the USPTO database,
at the very least,
to make sure we've got a pretty decent chance
at getting this trademark registered.
Is it gonna conflict
with some other pending application
or some trademark registration?
Is there gonna be some likelihood of confusion
that might prevent our trademark from being registered?
To do a search for a logo or a design,
we're gonna need to use the structured
or free form search options available on TESS.
And we're gonna need to look through
the design code manual to find the design codes
that line up with our design in our logo,
or in our trademark.
So let's pretend I have a logo,
and let's say my logo is a cat playing the piano.
That's my logo.
For whatever reason,
my logo contains the drawing of a cat
playing a piano.
So if I wanna do a trademark search
to see if there are other logos of cats playing pianos
that might be too similar to mine,
first I'm gonna need to look up the design code for cats.
We can see in the design code manual
that animals fall under
a certain design code, class, or category,
which is category three.
And the design code for domestic cats,
which is what my pretend logo has,
is code 030104.
So that's the design code for domestic cats.
We're also gonna need to find the design code for a piano.
It looks like musical instruments fall under category 22,
and the design code for pianos is 220101.
So I can now plug in those two design codes
into either the free form
or the structured search,
and tell it to search for both design codes
for cats and pianos.
And that search is gonna give me any designs,
any registrations, or pending applications
that include both a domestic cat and a piano.
And then I can look through those results,
see if any of those might be confusingly similar to mine,
and assess if something might get in the way
of my application and my trademark registration
for my own logo.
So that's the first difference
when we're talking about logo
versus just a standard character or word mark.
The search is gonna be a little different
because we have to use these design codes.
We've got that outta the way though,
and now we can move on to the actual application itself.
So on one of the first pages of the application,
of course, we have to give a drawing of the mark.
Tell the USPTO what is this trademark
that we're looking to register?
On this page of the application,
we're gonna select the special form
or design mark option.
This'll let us upload an image of our design,
of our logo.
A few particulars here.
The image that you upload for your trademark drawing,
it has to be a JPEG file format.
It needs to be under five megabytes, I believe.
And then the pixel count range
should be between 250 and I think 944.
That's the recommended pixel range for your image.
So you wanna make sure it meets those requirements.
Otherwise, the USPTO system will say,
"Uh-uh, this doesn't meet our requirements,
you need to adjust it
before we'll let you upload it."
We also need to make sure that the drawing that we upload
is going to match the drawing of the logo
as we're actually going to use it.
This is a big question that comes up
when I'm working with clients,
and registering their trademarks for their logos.
Often, we might have different variations of our logo.
Maybe we have one where there's a symbol
or an icon, and then our business name is next to it.
Maybe we have one variation though,
where the symbol or the icon is above the name.
So it's more of a vertical stack
versus a horizontal image.
Maybe we have some variations
where it's just an icon.
Maybe I don't use my business name in my logo all the time.
Maybe it's just that cat and piano image.
So we might have a bunch of different variations.
Each variation of your logo is,
for the most part,
a separate distinct trademark from all the others.
And so they are all their own trademarks,
and they would all, theoretically,
need to be registered separately.
So let's say I've got a vertical
and a horizontal version of my logo.
If I upload a drawing of the vertical version,
that's what the USPTO
is going to want to see that I'm actually using.
I can't upload a horizontal,
or I'm sorry, a horizontal logo,
and then later on,
show them that I'm actually using the vertical version.
There are two different trademarks,
so you need to make sure the one that you upload
as your drawing is the version
that you're actually using as a trademark.
If our logo does contain some text,
some literal element,
some words like our business name,
maybe a slogan, or a tagline,
we need to indicate the literal element
of the logo on the application as well.
We also have to indicate
if we are going to claim color
as a feature of the trademark.
And this is another big, kinda sticking point
that people get confused about.
When we register our trademark for our logo,
that registration, that protection
is specific to the design of the logo.
And that can include color.
So when would we want to include color
and claim color as a feature of the mark?
In my opinion, it's not often,
and it's usually only after we've registered our logo
without any kind of color claim.
Again, it always kinda depends.
Every person's situation is different.
Every business situation is different.
If it's one or the other,
if this is your first time registering a trademark
for your logo,
I almost always say,
"Let's start by doing just no color claim."
We wanna protect your logo regardless of the colors
that you use on it.
If we do it without a claim of color,
then there's no specific color there,
and the way you use it can be whatever colors you want.
Versus if we claim color,
then that's the color that's specific to the trademark,
and that's the color or colors we're gonna have to use.
So, you know, when in doubt,
well, no, I take that back.
When in doubt, talk to a lawyer.
Outside of that though,
when in doubt, I generally err towards not claiming color
and doing just a black and white drawing of your logo.
And if that's the case,
if you're not gonna claim color,
then you need to provide us the drawing a black and white
or gray scale drawing of your logo.
Versus if we are claiming color,
then we need to upload it with those colors
that we're gonna be claiming.
And then finally,
we're going to need to give a description of the drawing.
This part, you guys, is sometimes difficult for me too.
We have to describe what does our logo,
what does our design consist of.
Sometimes it's easy,
maybe it's, you know, stylized text
of our business name or something.
For mine, let's use my actual logo.
Not my cat playing the piano logo,
but my actual 180 Law Co logo.
Let's say I was going to register the trademark for this.
The description would be something like,
The mark consists of the words 180 Law Co
with a partial circle or an incomplete circle
around the 180, something like that.
If there are other elements you wanna describe those,
you wanna include a description
of what other text is in there.
And if you're claiming color,
then you wanna be specific in that description of,
you know, blue cat playing a pink piano.
Whatever it is,
we need to type that in there.
Don't get too hung up or stressed out about this.
If your description isn't perfect,
the examining attorney will adjust it
or make suggestions for how to correct your description,
if it's not exactly how it needs to be.
Just give kind of a general description
of what your design consists of.
And then moving on in the application,
we're also going to have to provide the filing basis
and the goods and services description.
So what goods and services
are we going to be using our trademark
in connection with,
and the filing basis.
Which for most of us
is gonna be either 1A, current use,
or 1B, intent-to-use basis.
If you apply on a 1A, current use basis,
you're also gonna have to provide a specimen
or proof of your use of the trademark
along with information about your date of first use.
If you file on a 1B, intent-to-use basis,
you'll still have to provide that info,
but you won't have to do it until later on in the process,
about maybe a year, a year and a half in the process,
after the examining attorney issues a notice of allowance.
But in either event,
either with the application or later on,
you'll have to submit a specimen
showing that you are using the trademark in commerce
in connection with the goods or services
that you identify on the application.
And again, this is where it comes in
that it's so important that the specimen,
the trademark as it appears on the specimen,
has to match the trademark
as it appears in the drawing.
So let's say you claimed color as a feature of the mark,
and on the drawing,
your logo is red,
on the specimen, it's blue.
Nope, those are different trademarks.
That specimen's not going to be acceptable,
it has to be the same color.
If you did not claim color as a feature of the mark,
then it can be whatever color you want it to be
on the specimen.
But again, it does have to still match
if it's vertical versus horizontal,
if it has the same literal element.
It has to have the exact same design.
It has to be the same design as what you submitted
on the drawing on the application.
If it doesn't, if your specimen,
if the trademark, as it appears on your specimen,
does not match with the trademark
as you provided it in the application,
the examining attorney is gonna reject it, say,
"Nope, you need to give us a substitute specimen.
You need to show us you're using that actual trademark."
But then, we submit either the specimen
if we're filing on a 1A basis,
or we leave that out and save it for later
if we're filing on a 1B.
Then provide a signature on the application,
pay some fees, hit Submit.
And then from there,
the process, again, is really the same,
as it is for a standard character mark
or any other kind of trademark,
with one small exception.
So generally, and this is still true
for design marks.
Current processing time with all trademark applications,
we're not hearing anything back,
no one's being assigned to your application,
no one's really touching it for about 10 months right now,
closer to about a year.
And that's the same for applications for design marks,
except you will,
a few weeks after you submit the application,
you should get some email notification from the USPTO
that they've assigned design codes to your trademark.
So someone behind the scenes
is looking at your logo or your design,
and they're assigning those appropriate design codes to it.
There's not really a whole lot you need to do
when you get that email.
I like to just look,
make sure the design codes are accurate.
Like if the design code,
if my cat playing a piano is my logo,
and the design code they assigned
is a dog playing a harmonica,
I might get in touch with the examining attorney and say,
"This doesn't seem right."
But as long as the design codes line up
with what's actually in your logo,
there's not a whole lot you need to do about that.
Outside of that though,
just like all the other applications,
you won't hear anything for about 10 months,
probably closer to a year currently,
until an examining attorney has been assigned
to your application.
Then they go through their whole process
of evaluating it,
making sure it's available.
It won't conflict with any other registrations,
then it gets published for opposition.
And then if you did file on a 1B basis,
then you get that notice of allowance,
you have to submit a specimen.
And then ultimately,
if all goes well,
the trademark is registered,
and you've got a beautiful trademark certificate,
and your beautiful logo is protected and secured.
That's all for this episode, folks.
If you learned a thing or two,
go ahead and give me a thumbs up.
And be sure to subscribe if you haven't already done so.
And click that little bell so you get notified
when I post a new video.
And don't forget to check the description
for more info and resources,
including a link to download
my free "Brandish" DIY trademark guide.
You know, particularly,
when we're talking about trademark registration for logos,
a lot of questions come up
when we're dealing with logos and design marks.
And thankfully, I did a whole video
not too long ago where I responded
to all of your trademark related questions.
I will put it right here.
I'll meet you guys over there
if you wanna learn more about trademarks
I'll see you over at that video.
Thank you so much for watching.
I'm Aiden Durham,
and I'll see you next time.
All right, Bard,
you don't have to stay and talk about trademarks.
You hate this, I'm sure. (chuckles)
Okay, bye Bard.
Thanks for hanging out with us.