- Hi, everyone.
I'm attorney Aden Kramer
with The Law Office of Aden Kramer in Colorado.
And you're watching "All Up In Yo' Business."
In this episode involving your business
I'm gonna talk about how to get a trademark.
I've made videos in the past,
talking about the basics of trademarks
and when you should get a trademark.
But in this episode, I wanna walk you through
the actual process of obtaining
a federally registered trademark.
The first step in getting a trademark
is before you do anything,
before you start filling out any paperwork,
do a search on the USPTO's website.
That's the US Patent and Trademark website.
They have a search function,
so you can search registered trademarks,
pending registrations to see if there are any
that are similar or identical to your trademark.
I strongly, strongly encourage you
to not do this by yourself
and to instead have an attorney help you
with the search process
because as easy and straightforward as it might look,
it is very, very not that way.
When you're searching to see if your trademark is available,
you can't just search for the exact wording
of your trademark.
If you have a slogan or a business name
that you wanna trademark,
you can't just type that in.
See if something comes up and if not, yay, you're great.
That's not how trademarks work.
You need to search for variations of the words
that you're gonna be using in your trademark.
You need to just search for similar words
or similar trademarks.
So just because you don't see your exact business name
somewhere already being registered as a trademark
does not mean that you're gonna escape
through the trademark process easy.
Once you've searched and you're fairly confident
that your trademark is unique enough
that it's going to be registered,
then you move on to filling out the application.
There is a version of the trademark application available
on the USPTO's website
and you can do it all through that website.
The USPTO's website,
where all of this has done is uspto.gov.
When you're filing the application,
the application is gonna have a few requirements.
First obviously it asks for your information
or the information of whoever the owner of the trademark
is going to be.
So you put that all in,
and it's also going to ask for information
about the trademark itself.
If you are trying to trademark just words,
a business name, a slogan, something like that, not a logo,
then you enter that in where it asks you enter in
the literal element of the trademark.
But if you are trademarking a logo
or some other stylized design of your business name,
then you're also going to have to describe
in very, very detailed ways that elements of your logo.
You need to describe exactly what it looks like,
different parts of the logo, the colors that are used,
all of that.
So you need to be very detailed
when you're filling in that information about your logo,
if you're trademarking a logo.
The application is also going to ask for a specimen.
Now this is where a lot of people get tripped up
and don't use the right thing.
A specimen is something that shows the USPTO
that you are actively using this trademark in commerce.
So you can't just,
if you're trademarking a logo,
you can't just upload a photo of your logo
and use that as the specimen, that is not going to work.
You need to somehow show that your logo
or your business name is being used in connection
with certain goods or services.
What I typically do and what works best
usually for services, not always for goods,
but sometimes what I often do is upload a screenshot
or printout of the company's website.
So that shows the company's name or the company's logo
and the USPTO can see that the logo or the company name
is being used in connection with the company's services.
So that way the USPTO knows that this trademark
is actually being used and being marketed in connection
with the businesses business.
So that brings me to the next step
which is going to be picking a class of goods or services.
When you file for a trademark registration,
you file it in a specific class of goods or services.
You can file it in just one class,
or you can file in multiple classes.
The application fee though is per class.
So just be aware that if you wanna get a trademark
in multiple classes,
you're gonna have to pay more than one registration
application fee.
When determining which class of goods
or services you want your trademark to be registered in,
you wanna pick something that obviously describes
the nature of your service or your goods
that your business is providing.
So for example,
if a law office was going to get a trademark for their logo,
their class would be something related to legal services
or legal consulting, something like that.
If you're selling apparel,
then you would wanna pick a class that describes apparel.
So once you get through the application
and you submit it to the USPTO and pay the application fee,
you then wait.
And you wait a little longer.
And then, typically in about three months
from when you file the application,
you'll finally get some sort of communication
from the USPTO.
In many cases, the communication that you're gonna get
is an office action.
The office action may be a non-substantive office action,
something such as wanting you to disclaim a certain word
or element of your trademark,
or it will be a substantive office action,
which is a bit more difficult.
In these types of office actions it's gonna take some work
because typically the USPTO has found some reason
why your trademark should not be registered.
The USPTO gives you six months to respond
to the office action.
And it's almost always in your best interest
if you haven't already to immediately contact a lawyer
to help you with responding to those office actions,
because the response can sometimes be very difficult
and takes a lot of legal research and writing knowledge
to properly respond to them.
If you do get an office action and you respond to it,
or if you don't get an office action, then again,
you'll wait a little longer.
A few months later,
the USPTO is going to let you know
that they've published your trademark for opposition.
It's kinda like when you're at a wedding.
And the officiant says,
if there's any reason why these two shouldn't be married,
speak now or forever hold your peace.
That's exactly what the published for opposition is like.
The trademark office gives everybody else
an opportunity to oppose your trademark
before it's registered.
And if they miss that opportunity,
then there's still ways around it.
But they, for the most part missed it.
If your trademark goes through that publication period,
then a few months later,
your trademarks should be registered
and you'll have a formal federal registered trademark.
So typically the process takes anywhere
from eight to 12 months if not longer,
if everything goes through smoothly
and there are no office actions,
no one opposes the trademark,
then it's a relatively quicker process
but if there are office actions or more issues come up,
it can take a well over a year.
But a lot of that time is honestly just you sitting
waiting to hear something from the trademark office.
So as I mentioned, it's really almost always not a good idea
to try to register a trademark on your own.
It's complicated and it can be very difficult.
And because of that,
it's worth the money to hire an attorney,
to help you with the process.
I've worked with several clients on trademark applications
and even I still sometimes get stumped
because new things will pop up with new applications
that I haven't experienced before.
So just because the application looks easy,
doesn't mean that the process is easy.
If you are looking for assistance
to get your trademark registered,
I of course am available to help.
Thank you all so much for watching.
I'm Aiden Kramer,
and I'll see you next time.