- Hi everyone.
I'm attorney Aiden Durham with 180 Law Co.
in Denver, Colorado,
and you're watchin' "All Up In Yo' Business."
(upbeat music)
In this episode of "All Up In Yo' Business,"
we're gonna talk about the steps
to take to trademark a name,
a business name or a product or service name,
and these steps are also going to apply
to trademarking a logo,
but there are a few little differences
if you're doing a logo versus trying to trademark a name,
but first, before we get into it,
huge announcement.
Coming at you March 4th is "Brandish,
DIY Your Trademark Application."
During this one-hour webinar and mini workshop,
I'm gonna teach you step-by-step how
to prepare for, complete,
and submit a trademark application without a lawyer,
and registration opens soon,
so if you want to learn the exact steps to take
to file a trademark application without a lawyer,
check the description below
for a link to get on the wait list
and to get some special
early bird discount opportunities, too.
All right.
Let's talk about how to trademark a name.
The first step before you go trademarking anything
is make sure it's something that's worth trademarking.
What makes a name more or less worth trademarking?
It really depends on how strong
or weak it is.
A weak trademark is one that is more generic
or common or descriptive
versus a strong trademark,
which is something that's very arbitrary
or very distinctive, very creative,
and so the stronger your trademark is,
the stronger the trademark registration is going to be,
so if you have a really weak trademark,
something that typically makes it weak is
if it's very descriptive of your goods
or your services or if it's primarily your last name,
something like that makes a trademark
on the weaker side,
and with a weak trademark,
if you register it, all you have is a registered,
weak trademark and your trademark rights will reflect that.
If you have a weak, generic trademark name,
your rights to enforce
that trademark are gonna be somewhat limited and weaker
versus if you have a very arbitrary name
that's a stronger trademark,
then your registered trademark rights are gonna be
a lot stronger, too.
A few examples of very strong trademarks are like Google.
Google wasn't even a word until Google came out
and created it,
so any brand new word,
creating a new word, creating a new sound,
combining words to create something new,
that's the best thing you can do is create a brand new word
or a brand new trademark that no one's ever seen before.
That's gonna make it stronger
versus a weaker trademark, so if we decided
that it's worth pursuing a trademark registration,
the next thing we wanna do is make sure it's available
to even register and use in the U.S.
A good first place to start with searching
for your trademark availability is, of course, Google
or your favorite search engine.
Type in the trademark that you're looking to register
and see what comes up.
If there is a bunch of other business listings
for similar types of products or services,
if the exact trademark that you want comes up a lot
or if there are a lot of similar variations,
then than might be a little red flag
that maybe this trademark is already taken,
or if it's not taken, necessarily registered,
if there's a lot of competition with that trademark,
that's going to affect how strong
and distinctive your trademark is,
so if you're seeing a lot of similar variations
of your trademark or identical trademarks,
then you might wanna think about how
that will impact your registration,
and then after doing a Google search,
you can also do a search on the Who Is database
to see what kind of domain name registrations already exist
that incorporate your trademark
or something similar to it,
and then the USPTO has a really good
search database available, too.
This allows you to search for pending trademark applications
and registered trademarks that might be identical
or similar to yours,
so if you go to the USPTO's website,
it's uspto.gov, and you'll navigate to their TESS,
T-E-S-S, system,
and this is where you're gonna do that search,
and you'll usually be able to do just a basic word search
for your name.
Now, this is where the difference comes in.
If you're trying to trademark a logo,
then you'll wanna do a design search,
which is a bit more complicated
than just a basic word search.
So, here you can type in the trademark name
that you're wanting to use.
For this example, I'm gonna type in All Up In Yo' Business,
and then we'll see what comes up,
so let's say you were wanting to register your trademark
All Up In Yo' Business for your local ice cream shop.
We see here there is an active, live registration
for All Up In Yo' Business,
so what's important to note,
it you do find trademarks that are identical to yours
or kind of similar to yours,
pay attention also to the goods or services
that are associated with that registration.
There are two things primarily
that go into trademark applications
and trademark registrations.
The first is the similarity of the trademark itself.
The second is the similarity of the goods or services,
so if I'm opening an ice cream shop
called All Up In Yo' Business,
this current All Up In Yo' Business registration is
for like legal services,
and things that have absolutely nothing
to do with ice cream or ice cream shops,
so with this finding I am relatively safe feeling
like I can proceed with my application
because there aren't any that are so similar
in trademark and in the goods and services
that it's likely it'll get through,
but if you do find something in the database
that is kind of similar to your trademark
and the goods are services are somewhat related
or if they're identical,
then again, that's a red flag
that you're gonna wanna take into consideration
and maybe go back to the drawing board
because if someone else already has
that trademark registered in a very related category
of goods or services,
that's gonna impact how your application goes
and whether or not you're gonna get that registration.
You can also use some third party trademark search tools.
There are companies out there
that will do a very thorough trademark search.
These aren't lawyers or law offices.
They're just trademark search companies
that will search the USPTO
and common law usage and even international usage,
and then what they'll do is they'll compile all
the information and give you typically
this very large report summarizing what they found.
Now if you're not a lawyer
and you don't know how to actually interpret
and analyze those results,
it may not do you a whole lot of good
to pay for that kind of a search,
but if you can figure out how
to analyze what you're looking at,
then using one of those services
for a pretty extensive search is a good idea,
but really the best option is to use an attorney
to help you with this clearance search
because the attorney's gonna not only know what
to search for but they're also going to understand
what they're looking at
and they're gonna know how to analyze that
in the context of your trademark
and determine what it actually means
for the fate of your trademark application,
so if we've determined we wanna file the application
and the trademark is available,
the next step is to start using the trademark.
Now, okay, this isn't totally required
for filing the application,
but if you want to get a registered trademark,
you do actually have to be using the trademark
in commerce before the USPTO will register it,
so if you're not already,
it's a good idea to start using the trademark
because at some point in the process,
if you're not using it when you file your application,
at some point in the application process,
the USPTO is going to want to see proof,
visual proof that you are using your trademark
in connection with the goods and services
that you've identified on your application,
so whether you're starting your business
and already selling your products,
selling your services under your trademark,
or if you're planning to launch maybe
after you've filed the application,
either way, at some point in the process,
you're gonna wanna start actually using the trademark,
and then finally, we file the application,
so first we're gonna wanna find the right application.
A question that I get asked pretty often,
which is a little alarming, is what is the best website
to use to file a trademark application?
There is one, and only one, website to use
and that is the U.S. Patent
and Trademark Offices website, uspto.gov.
That is the only website
where you will file a trademark application.
Any other website that purports
to file the application is some kind of scam
or they're just trying to get extra money out of you,
but you can file the application directly
without any additional fees aside
from just he USPTO's fees on uspto.gov.
So, once you're there, you'll navigate
to the screen with the trademark applications,
There are three different types of applications.
The one that's most commonly used is
the TEAS RF Plus application,
which gives you the lowest filing fee,
so once you've started it, the application's gonna ask
for some information about the applicant
who will be the owner of the trademark,
and then it's gonna ask for information
about the trademark itself,
so if it's a name, you're gonna type in the trademark name.
If it's a logo, then you'll upload a design,
an image of your logo,
and it's also gonna ask for information
about the goods and services
with which you'll be using the trademark,
and with the reduced fee plus,
with that RF Plus application,
you have to pick from the USPTO's database
of their categories and descriptions
of goods and services,
so you'll want to look through their database
to find the category or categories that best fit
and are most appropriate for the goods
and/or services that you're gonna be providing
under your trademark,
and then you submit the fee
and submit the application,
and then what happens?
Then you wait.
It usually takes about three months
before a human even sets their eyes on your application,
so there's gonna be a good amount of silence
and downtime after you submit that application,
and the whole process usually takes about six
to eight months.
It can take a lot longer than that,
but generally speaking, it's about six to eight months.
A good thing to remember,
after you submit your application,
this stuff is all public record,
so all the information,
the fact that you are looking to register a trademark,
that's all public info,
so you're gonna start receiving emails
and probably physical mail
from companies trying to tell you
that you need to do something else
in order to proceed with your application
or keep your application active.
This is all spam, garbage that you can throw away.
With the TEAS RF Plus application,
you're agreeing to only accept communication
from the USPTO by email,
so if you're using that application
and you receive something physically mailed to you,
that's a sign immediately it's not actually from the USPTO,
unless it's your trademark certificate.
That's the only thing they actually physically mail to you,
but anything else is gonna be from a scammer,
and then anything that you do receive in email,
just make sure it's actually coming
from the U.S. Patent and Trademark Office.
Anything else that's asking you to pay more money
or do something else that you have to pay for,
ignore it.
That's all for this episode, folks.
Please drop a comment below
and let me know what you think,
and again, don't forget.
If you want to learn step by step how
to file a trademark application without a lawyer,
check the description below
to get on the wait list for 'Brandish,
DIY Your Trademark Application."
Thank you all so much for watching.
I'm Aiden Durham and I'll see you next time.
(mellow music)