- Hi, everyone.
I'm attorney Aiden Durham with 180 Law Co.
in Denver, Colorado.
And welcome back to all up in yo business.
(upbeat music)
In this episode of all up in your business,
I'm gonna tell you guys about some very common mistakes
that I see people making when preparing and filling out
a trademark application, and how to avoid those mistakes
and avoid your trademark from not getting registered
or getting rejected or having
some other issues come up with it.
But before we get into it, don't forget to like,
subscribe and share.
And be sure to check the description
for links to additional information and resources.
You can find info on my trademark services
like Brand Bombshell, which is my all inclusive
trademark registration package or Brandish,
which is my online DIY course,
that teaches you step by step how to submit
a trademark application by yourself without a lawyer.
All right, so if you guys haven't already noticed,
I'm a big fan of trademarks.
What I love most about trademark law
is how complex it really is.
When I first started dealing with trademarks,
in my law practice, I kind of thought
it was gonna be an easy thing.
You file an application and boom,
you got a registered trademark,
what else is there to it?
Turns out there's a lot more to it, you guys,
it's actually quite complicated.
And especially in the beginning stages,
when we're just thinking about registering a trademark,
there's a lot of things that we can mess up
and that we can get wrong.
And when it comes to trademark registration,
you can fix some of the problems sometimes.
But often there are errors or issues
that we can't go back and fix
in the trademark application.
Often we have to scrap the initial one
and go back and start from scratch again
to correct whatever those errors are.
So that's what I'm gonna tell you guys about
is some of those common issues that I see coming up
when people try to do a trademark application
and situations where it's typically gonna get rejected
or you're gonna have some other kind of issue.
The first definitely number one thing
and I guess this doesn't really have to do
with the trademark application.
But the biggest mistake that I see
in the trademark application process
is not doing a thorough enough search
before you've even filed the application.
Sure most of us know and if you don't,
you can go on to the USPTO's website
and use their TESS T-E-S-S search function
to search the USPTO's database for pending
and registered trademark applications.
And much of the time that's what people will do.
they'll go on to TESS and search
for their exact business name or the exact trademark
that they're looking to register
to see if something pops up.
And often nothing will pop up.
And so we'll think all right,
we're in the clear ready to go let's do
this trademark thing.
But that direct hit search of just looking for exactly
the trademark that you're dealing with
is most of the time not good enough.
When we're dealing with trademarks and trademark
infringement and getting a trademark registered,
we need to not focus just on that exact trademark.
But we need to focus on similar trademarks as well
and look at potentially other similar trademarks
that might get in the way of our trademark registration.
So that means searching for different variable spelling
of your trademark, if your trademark
includes a word that starts with a C,
oftentimes someone will use that word but with a K
instead searching for that alternate spellings.
Singular versus plural.
Different words like if we're dealing with dog,
how about pound or pooch or cat and feline?
So any of these words even if the trademark
isn't identical if it's similar enough,
it can still impact your trademark application
and your chances of getting a trademark registered.
And so at a bare minimum, typically,
we wanna search the USPTO's database we wanna use
that TESS search system.
And we wanna use Google or some other online search engine
to see what else is out there just on the internet,
not specifically just with the USPTO registrations.
And we'll also commonly wanna search state level
business registrations or state level
trademark registrations to get a full idea
of everything that's out there
that might impact our trademark.
So that's the first big mistake that I see
often happening is people not doing a thorough enough
search or not searching for the right types of things
to see if their trademark's even going to be available
and able to be registered.
So the second mistake that I see come up quite often
is putting the wrong trademark on the drawing
on the application.
So on the trademark application,
there's gonna be a spot for the drawing of the mark.
Which if we're dealing with just standard characters,
it's just gonna be the words and your trademark.
Or if we're doing a logo or some kind of a design,
then it's gonna be the logo,
whatever it is that we're trying to trademark,
that's the drawing.
But often, what is uploaded or provided as the drawing
isn't actually the trademark that it's going to be.
And so commonly this comes up with our logos
a lot more often than standard characters.
But so let's say we've got a logo
that we wanna register the trademark for.
Exactly how we provide that logo on the application
needs to be how we're gonna actually use it
as a trademark.
So we can't submit the application with this logo,
and then change it.
And then what we actually end up using
is different from what we identified on the application.
They need to match the trademark as we're actually using it
and as we identified it or designated it
on the application needs to match.
Or if we are dealing with standard character marks,
if we put our drawing of the trademark with,
let's say three words,
but we've combined them all into one word.
So we don't have spaces in between,
it's all one word.
But then as we're actually using it,
if we do separate it out into three separate words,
that's a different trademark.
I mean, for the most part it's not the same
and it's not going to be considered the same
if we're using it as three separate words.
But on the application we've identified it as one word,
that's not gonna fly.
So that's a big mistake that I see come up quite often
is not putting the trademark as we're going
to use it as the drawing or making one trademark
or submitting something but then we're actually using it
in a different way or it looks differently.
The point is the trademark as you identify it
on the application needs to match exactly
how you actually use it.
Which brings me to my fourth mistake
that I commonly see popping up
is submitting improper specimens.
So now when I say the mark as we've identified it on
the application needs to match
how we're actually using it,
the way that the trademark office sees how we're using it
is with this specimen file.
So we are gonna have to submit to the USPTO proof of us
using the trademark in commerce.
And that's what this specimen is.
And so if the mark on the application doesn't exactly match
the mark on the drawing,
then the specimen's going to be rejected,
it doesn't actually show you using this trademark
in commerce it shows you using some other kind
of similar trademark but not the one that you applied for.
Another big mistake that I see is people just uploading,
especially with logos, again.
People just uploading another picture of the logo
as the specimen.
That's not right.
That's not what this specimen is supposed to be.
The drawing, you would upload just an image file
of the logo, but the specimen needs to demonstrate
that the logo is being used in connection
with the goods and services that you've identified
on the trademark application.
And so it's important to be careful
when we're preparing the specimen files
making sure the trademark as we've got it on the specimen
actually matches the trademark as it was in the drawing
on the application.
And that the specimen actually shows use
of the trademark in commerce.
Another really common mistake or error that I see
on trademark applications has to do with the goods
and services that are gonna be on the trademark application
or on the registration.
So when we're submitting an application
for registering a trademark,
we have to be specific as to the goods
and services that the trademark's going to be used
in connection with.
And there are 45 different classes of goods and services.
And each class is broken up into I mean an infinite number
of different descriptions or kind of different categories
within each class.
And now some of these classes are very specific.
So let's say we're selling shoes,
we can get super specific with the types
of shoes we're selling,
and identify that on the application.
We can say we're selling sandals,
or we're selling high heels or platform tennis shoes
or sport shoes, basketball shoes,
we can be very specific.
Or we can be very broad,
we can say we're selling footwear or shoes.
And so we have options here of being very specific
or being very broad.
And sometimes we wanna fall somewhere in the middle.
But sometimes we wanna be very specific.
This kind of goes back to that clearance search
and the searching part that I talked about.
Because that helps, in a lot of cases figure out
what strategy we need to take
with the goods and services descriptions too.
But so with these goods and services,
and the proper classes on the application,
a big mistake that I commonly see
is just getting flat out the wrong class altogether,
just doing something completely unrelated.
So let's say often, for example, if you are starting
an online boutique like a clothing boutique.
And that's what you're providing is this website
where people can buy clothes.
If you're not actually making the clothes yourself,
let's say it's a boutique.
So you have other brands in your store
that you're gonna be selling.
On the trademark application,
you wanna be careful and think about
what is the service or the good I'm providing?
You aren't actually providing those clothing items,
you're not producing the shirts or the dresses
or the clothes.
The other company's brand your brand doesn't appear
on those products.
What you're providing is this website,
this retail online shopping website
that sells the brands of others.
And so it's often that differentiation of the goods
that I'm selling versus what I'm actually providing,
which is the website or the service
of the website that people commonly get mixed up.
And those goods and service descriptions
are often going to be difficult to correct.
So we can in most cases,
change our goods and services descriptions
to be more narrow, or to be more specific,
but we can't change them to be broader.
So if there is some kind of an issue
with your goods and services,
after you've submitted your application,
there might be an opportunity to correct it
and to fix it but there might not.
So it's important that we know what route we're taking
with the goods and services descriptions
before we file the application
because we don't wanna risk getting it wrong
or doing it in some way that can damage
the whole rest of the registration process.
Another big mistake that I see that it's tough
because it often doesn't come to light until far later
on after the trademark's already registered.
But a big mistake that I see
is using the wrong dates of first use.
So on the application, depending on the basis
of filing and all that is sometimes is different.
But we're gonna have to identify the dates
of first use of the trademark
when we first started using the trademark in commerce.
This date is when you first started
using the trademark in commerce.
This is not the date when you formed your LLC,
or the date when you bought the domain name
for your business which includes the trademark.
That's not using the trademark in commerce,
forming an LLC isn't using your trademark,
it's just forming an LLC.
And so the date that we're supposed to actually put there
is the date when we started using the trademark in commerce,
meaning selling our products selling our services,
and all of that that's the date that we use.
And now the reason I say that this often doesn't come up
until later is because in the application process,
the examining attorney the attorney with the USPTO,
who's gonna be examining your application
and doing this whole thing,
they're not really verifying those dates of first use.
They're not gonna cross check the date
that you put and see if it corresponds
with I don't know the date on your website.
They're not checking that, they're taking our word for it,
because we're promising that all the information
is accurate and correct.
So they're taking our word for it.
And so whatever date we put is the date
that's gonna be associated
with our trademark registration.
But later on down the line if an issue comes up,
let's say there's a trademark infringement issue
of somebody else using something similar to your trademark,
that date of first use is gonna be one of the most
if not the most important factor.
Because usually it's going to be whoever used the trademark
in commerce first is gonna have the higher,
stronger rights in the trademark.
And so if you put on your application
that you started using the trademark January 1st
because that's when you filed your LLC paperwork,
when you go to prove that to the other party,
they're gonna say no you didn't start using
your trademark then, you formed your LLC on that day,
but you did not start using your trademark that day.
And so that's gonna kind of damage your side.
And from that can potentially come some other issues
because now it's come to light
that you've lied or put inaccurate information
on your trademark application initially.
And so that could be grounds for canceling
your trademark altogether,
or even some other kind of penalties if you did,
knowingly or if you intentionally put false information
or something like that,
a lot more issues can come up.
And so the point here is a big mistake
is not using the right date of first use,
because if a issue ever arises,
that's gonna be the date that we're focusing on.
So we wanna make sure it's accurate.
And then finally I mean, not a huge mistake,
but a common mistake that I see happening,
is failing to miss requirements
for the TEAS Plus application.
So when we're filing a trademark application,
there are a few different types of applications
that we can use.
And they vary in fees.
The cheapest one is the TEAS Plus application,
which gives you the lowest filing fee.
In order to use that application and take advantage
of that low filing fee the USPTO has a few requirements
for what qualifies us to use that application.
One of the big ones is agreeing
to correspond over email with the USPTO.
So if you forget to check that box
on the application that says I agree to correspond
with the examining attorney via email,
then you're gonna lose that eligibility
for that reduced fee or that reduced filing fee
with that application.
Other requirements are if your trademark
includes a person's name or likeness,
then you have to give the consent of that person.
So let's say my name Aiden was included in my trademark,
I would have to provide a written consent by me
saying that my business can use my name
in the trademark.
And if I don't provide that with the initial application,
then that means I can't be eligible
for that TEAS Plus application
and additional filing fees will be due
because I shouldn't have used that application
to begin with.
Or if your trademark includes let's say a foreign
translation of a word if it includes a Spanish word
or any other word you have to identify that
in the application what that translation
what that English translation is,
in order to take advantage of that TEAS Plus
and reduced filing fee.
So to summarize a few of the real common things
that I see come up with trademark applications
are failing to do a good enough search beforehand,
not putting the right drawing on the trademark application
or submitting a specimen that has the trademark
appear different than the drawing.
Of course putting incorrect goods and services
or not properly identifying the goods and services
that the trademark's gonna be used with.
And then finally wrong dates of first use
and failing to meet all of those TEAS Plus
filing requirements.
That's all for this episode, folks.
Drop a comment below let me know what you think.
And again, don't forget to check the description
for links to additional information and resources
or if you need help with getting
your trademark registered too.
Thank you all so much for watching.
I'm Aiden Durham and I'll see you next time.
(gentle music)