- If we only take one thing away from this video
it should be this, a DBA and trademark,
those are both nouns.
They are not verbs.
You don't DBA something and you don't trademark something.
(gentle guitar music) (air whooshing)
Hi everyone.
I'm Attorney Aiden Durham with 180 Law Co in Colorado,
and welcome back to All Up In Yo' Business.
We are gonna do another exciting round of responding
to your comments and answering your questions.
This time around I'm gonna focus
on your trademark related comments and questions.
Figured, you know, I get a lot of really great questions
and stuff in the comments from you guys all over the place,
figured focusing on trademarks for this one
would be easier for me and hopefully easier
for you guys to get the answers that you're looking for.
Maybe next time we'll do some more LLC related questions,
but trademarks this time, okay.
Before we get into it,
be sure to like subscribe and share
and check the description for links
to additional information and resources.
Including a link to check out my freshly updated
and a revamped BRANDISH course.
If you're not already familiar BRANDISH DIY,
your trademark application is a step-by-step online course
that teaches you exactly how to prepare for, complete,
and submit a trademark application with the US PTO
without a lawyer.
And I just recently launched an update
with a lot more information.
It's broken up into six different modules
going through all of the steps
to figure out what your trademark is exactly.
Make sure it's worth it to register the trademark
and then making sure your trademark is available to register
and all the important things that you need to know
when it comes to registering a trademark.
So again, check the description for a link
to learn more about BRANDISH.
All right, let's get to your questions.
On the trademark application,
what if I haven't sold my goods yet?
How will I know which date to put
for the first use of the mark in commerce or anywhere?
So if you are not yet using the trademark in commerce,
then you would wanna file on a 1(b) intent-to-use basis.
The application only asks for the date of first use.
If you're filing on a 1(b) basis,
which means you're already using the trademark in commerce,
in connection with the sale of your goods and services.
If that's not the case for you then you can file
on a 1(b) basis instead,
and the application won't ask for those dates.
Can you DBA a trademark?
So I think a good...
If we only take one thing away from this video,
it should be this.
DBA and trademark, hose are both nouns.
They are not verbs.
You don't DBA something and you don't trademark something.
Something can be a DBA and something can be a trademark.
Your DBA can be your trademark
and your trademark can be your DBA.
If you're asking can you register a trademark for your DBA?
Yeah, absolutely.
Assuming you are using it as a trademark.
And if you already have a trademark registration
or you already have a trademark that you want to use
as your DBA, yeah.
Same thing.
Is logo and brand name the same?
My brand name is in my logo.
Which should be filed?
So a logo and a brand name
are not necessarily the same thing.
A logo in the trademark world
is considered a special character or a design mark,
whereas a name or just something plain text
is considered a standard character or a wordmark.
When you register a trademark
for a standard character wordmark,
you're protecting that trademark in all forms,
regardless of how it appears.
There is no design or stylization to it.
So your rights apply strictly to those characters
regardless of how they appear.
Versus a design mark like a logo,
registering a design mark is specific to its appearance.
The overall design and stylization
and appearance of that logo
is what your trademark registration applies to.
If you have a literal element like your business name
as a part of your logo
you do get some rights for that literal element
but it's much weaker,
and it's still very specific to how those words
appear in your logo.
So if you're looking to protect your brand name
in itself regardless of how it looks
then registering the name as a standard character mark
is the best bet.
If you wanna protect your logo
and that design and exactly how that looks
then registering the design mark for the logo
would be your best bet.
I cover this topic in depth, in BRANDISH,
in my online course.
So if you're not sure of whether it's best to register
the trademark for your logo or your brand name,
or maybe both,
I highly encourage you to check out BRANDISH
'cause I walk you through exactly how to figure that out.
Can I use Date of First Use as date I acquired domain name
if I immediately tried to sell the name as a brand?
Acquiring a domain name in itself is not considered
a use of a trademark in commerce.
Use in commerce means you are actively
using that trademark in connection
with the sale of your products or services.
Merely purchasing a domain name
has nothing to do with selling your products or services.
It's in preparation for that
but you're not using the trademark.
Even if your services were selling domain names,
purchasing that is still not using the trademark.
That's basically like purchasing inventory
like you would if you're selling anything else.
So it would really only be considered a trademark
if you're using that trademark
in connection with your business selling domains
or brand names which it doesn't really sound
like it's the case here.
But the strict answer here is no.
Acquiring a domain name,
that date doesn't count as use of a trademark.
Thank you, you're welcome.
What about trademarking a book, like "The Hobbit"?
Can the entire book be trademarked?
If it will be part of the series?
So I included this response to it that said copyright it,
which because that's partially correct.
So you can't register a trademark for a book,
not the contents of a book.
The contents of a book would be protected by copyright.
Like this second comment said.
So you can register the copyrights for the book
to protect the content of the book.
That won't apply to the title of the book though.
Book titles can only be registered as trademarks
if they are part of a series.
So like books like "The Hobbit" or "Harry Potter",
or you guys remember those old
"Chicken Soup for the Soul" books.
When you have a series of books
all publish under pretty much the same title,
those typically are gonna be eligible for registration
of the trademarks for those book titles.
But again, the trademark registration doesn't protect
the content of the book that would be under copyright.
Do I need a lawyer's help in obtaining a trademark?
Typically no.
The only requirement to have a lawyer
applies if you do not have a domicile address
in the United States.
So if you don't have a physical presence,
whether it's a home address or a physical business address
in the United States in that case,
you do need a lawyer to represent
you throughout the process.
But if you have a domicile address in the US
then it's perfectly legal to do it on your own
without a lawyer.
However, it's much more complex than it looks at the outset.
The questions seem pretty straight forward,
but they can have a very important impact
on your trademark registration
and your trademark rights after that.
So it's still always best to have an attorney
help you with it to make sure you're getting
the most out of this trademark registration that you can.
Secondary to that. of course,
if you can't afford to work with a lawyer
would be to learn how to do it yourself
so you can do this process as best as possible.
And of course, that's where BRANDISH comes in.
I teach you all the important things
that you need to know about the trademark application
and the registration process
so you can safely do it on your own without a lawyer.
What is first use versus first to register?
Great question.
So in the United States, in particular,
it's different in different countries,
but in the United States trademark rights
arise out of use of the trademark not registration.
So the first person to use the trademark in commerce
has priority of rights in that trademark.
Regardless of whether they registered the trademark
with the US PTO or not.
And just because someone registers
a trademark before you do doesn't necessarily mean
that their rights are stronger than yours,
if you were actually using the trademark in commerce
before they did.
So that's what that means.
First use is whoever used the trademark first,
first to register is whoever registered at first.
There are a lot of jurisdictions
where it's first to register.
Whoever registers this thing first
wins and owns this trademark,
but that's not how it works here in the US,
it's first to use.
Can you please do a video on intellectual property, LLCs?
Well, I don't know necessarily
that that would be appropriate for an entire video.
An intellectual property, LLC,
isn't like a formal thing.
There aren't really different types of LLCs.
There's an LLC that can be used for different reasons.
I think you guys just got a nice
little Cammie of Rocky there.
Hi Rocky.
LLCs can be used for different purposes,
different reasons such as holding intellectual property.
But like the setup and the process of operating an LLC
for that purpose is exactly the same
as setting up any other kind of LLC.
Though I dunno, comment below
if more people are interested in learning
about these intellectual property, LLCs,
if it seems like there's a lot of interest in it
then maybe I'll do a whole video on it.
All right, this one's kinda long,
I'm just gonna speed through it.
Excellent content.
Thank you.
What if the name that I intend to use
a Chinese company got it,
barely realized, nothing showed up, six months ago,
use a product, and brand,
a Chinese company, had on the US PTO page,
but they intend to use it on office products
and I intend to use it on beauty products,
can I still apply for my brand in the beauty field?
Okay.
So to sum it up, this person wants to use a name
for their beauty products.
Notice that a Chinese company is using this name
for office products,
and I guess has a US trademark registration.
So it always depends.
Strictly speaking though it's very common
and perfectly fine to have identical trademarks
that are used on completely unrelated
goods and services.
So if this company...
The fact that they're a Chinese company
is not really relevant,
but if another company is using a trademark
on completely unrelated goods and services
then it's still totally possible
for you to get a registration for that same mark.
Again, it always depends in, you know,
looking just at these facts,
office products, beauty products are pretty unrelated.
So in a vacuum,
I'd say you probably have a decent shot
of getting the trademark registration.
But of course, I can't say that for sure.
Do you think Crown Body and Soul is a weak trademark?
It's a salon/metaphysical supplies shop,
offers products and services for hair body
and spiritual practices.
Good question.
So what this comes down to is descriptiveness.
If you have a trademark that is merely descriptive,
meaning it merely describes
the goods or services that you're offering
or a characteristic or ingredient
or result of those goods and services,
the US PTO considers this to be merely descriptive,
and they won't allow it to be registered
on the principal register with some exceptions.
So here we know Body and Soul is descriptive.
The term, Body and Soul, that's descriptive.
Because your products and services
have to do with your body and your soul.
Crown, Crown here though might be questionable.
Gray area.
Crown has to do with, you know,
the top of your head and your hair.
And Crown is also a spiritual word.
Crown has significance in the spiritual realm too.
So if I had to guess without doing
any additional research behind it I'd say that the US PTO
would probably consider that to be merely descriptive,
and therefore it would be kind of on the weak end.
But you know, I've been wrong about things before so.
I thought this one was funny.
Finding a name that hasn't already been taken
has been a huge pain.
That is true.
There's a joke in the trademark world,
trademark lawyer world,
that there are no good trademarks left.
And it feels like it's true sometimes.
That anytime you come up with a very clever
or original name for your business
or for your products or services,
you start looking it up and boom,
look, it's already been taken.
Someone's already been using it.
But I promise you there are still some good trademarks
out there.
But yeah, it can be really difficult
to find a good, strong, distinctive name
that hasn't already been taken.
My best word of advice with that is make something up,
make up a word, makeup, you know, combine a few words,
make up some term that's usually gonna be your best bet.
Can a trademark ultimately protect my logo?
Well, yeah.
Well, so again, trademark is a noun.
You register the trademark, your logo is a trademark,
and you can register that trademark with the US PTO.
And yes, absolutely.
That's the goal is to protect your logo and prevent others,
your competitors from using it
and profiting off of your brand recognition
or your name or your hard work.
So yeah, registering a trademark
can absolutely ultimately protect your logo.
However, this fellow says,
registering a trademark isn't always about name recognition.
Although branding is great,
the real reason you would wanna do it is tax reduction.
Example, Delaware, or a virtual aspects
trademark fall under,
file a shell company, you lease it, yeah.
Okay.
So and there's some truth to this
but it's kind of misleading.
So there's the thing that people
refer to as the Delaware loophole.
Where Delaware has a corporate income tax
but they don't apply to intangible assets like trademarks.
And so what a lot of very large corporations
do is they set up a shell corporation in Delaware
where their main company
assigns their trademarks to the shell company,
the shell company license or leases
it back to the main operating company.
The main operating company pays money to the shell company
and shell company doesn't have to pay income tax
on that payment from the operating company.
And so for very large corporations
doing this can result in a much lower tax bill overall.
But the important thing to know is that this is corporate.
So it applies if you are a corporation,
this wouldn't apply to pass through entities like an LLC.
And you also have to take into account
the administrative cost and hassle
that goes into having a shell company in another state.
It's not free to set up a corporation in Delaware.
So you have the formation costs of that,
you have annual franchise taxes
and you do still have a corporate income tax
and you have costs associated
and administrative work associated
with that whole leasing or licensing
between the two companies.
So for most of us kinda small players,
small businesses doing this,
I mean, maybe it would lower your taxes a little bit
but I would venture to guess that it would be offset
by the additional cost of taking this tactic.
Again, this works for very large
multi-million dollar companies who have lots of trademarks
then yeah, this is a fine tactic.
I strongly recommend that you talk to a tax expert
and an attorney before moving forward
with something like this,
because for most of what I presume is my audience,
most of my clients,
this would just be a waste of time and money.
It wouldn't do you any good?
But Thanks for the comment.
I completed TEAS a couple of months ago, two classes.
If I get denied (due to a weak trademark)
wondering whether to go ahead
and use the name in business anyway,
or change the name of completely.
So yeah, this is...
Something...
A conversation that I have pretty often
with a lot of my trademark clients,
just because you don't get a trademark registered
that doesn't mean that you can't still use
that trademark for your business.
It's simply means that you can't register it.
Of course, the fact that the trademark
isn't available to register that could mean
that there's already a trademark registered for that,
which could mean that there's some other company
out there that might be able to take
some legal action against you
if you do continue using that name
or that logo or something,
but just because you can't get a trademark registered
doesn't automatically mean you can't use it.
So, you know, if your trademark is denied
you still have the option of using it anyway.
There might be some risk associated with it,
but, you know, you can continue using it until a court
or a judge or a contract says that you can't.
All right.
That's all for this episode, folks.
Lots of great trademark questions from you guys.
Again, don't forget to check the description
for links to additional information and resources,
including a link to sign up for BRANDISH,
where I teach you step-by-step
how to prepare for and submit a trademark application
with the US PTO without a lawyer.
Thank you all so much for watching.
I'm Aiden Durham, and I'll see you next time.
(bright upbeat music)