Trademarks: File Them Right the First Time!


Hi! So today we are going to talk about trademarks. What is a trademark? Trademarks came about in a really unusual way, but most business owners think of it as protection for themselves, it’s protection for their brand, and it is ,however, it came about as protecting consumers. So it becomes a little bit more involved than most business owners really understand. We’re talking today just about a few basics about trademarks. So you know what a trademark is? It does protect your brand, but instead of protecting the business, the law is designed to protect consumers. What does that mean? It means that consumers can get confused over a brand. For example, if you have two chocolate bars that are called Dove, the consumer might get confused as to which company they are buying from. But if you have a chocolate bar of Dove and a soap called Dove, there is no confusion there. So the businesses can have the same name as long as there’s no confusion. So don’t get caught up in this “well, no other business can possibly have the name Dove” because that’s not how trademarks work. So let me talk to you in just a few minutes about the types of trademarks there are. So there are common law trademarks, which means that a business automatically gets a little bit of protection as soon as they start using that name, but it’s only for the time that they’re using it, and it’s only in their geographic area and there’s a bunch of other restrictions and it’s hard to prove. So most of the time people tend to look at a different type of trademark. Which leads me to state trademarks. Back when I was a baby attorney, we did all kinds of state trademarks. Nowadays with the internet, we don’t do as many, although sometimes it might be appropriate. But a state trademark only protects in the actual state lines. It doesn’t protect outside of the state. So what protects outside of the state? That’s the federal trademark. The federal trademark protects against the entire country. There’s also an international level, but that one I’m not going to talk too much about today because it’s a little bit more complicated. So let’s talk about the national one. The national one has 45 classes of goods and services. So in preparing a trademark application, there’s a lot of strategy involved. First of all, you have to pick out what trademark you’re going to actually file for. It could be a logo, it could be a word, it could be all kinds of different things. It can just be an image, it can be a slogan. So there’s a lot of strategy because there’s a lot of rules about what can’t be trademarked. So picking out what you want to trademark and then figuring out which class of goods and services you want to file in. So there are 45 different options here. So you have to research to say which other businesses might have a trademark that’s the same as mine or similar to mine in that class, and what do they do? So it’s not just picking up the class, it’s picking up the description. What is the point of me telling you all of this? It’s complicated, and there’s a lot of strategy involved. So a lot of times people will go online and they’ll find this online file your trademark website, and what happens is they’ll come to us afterwards because they’ll have a trademark. Miraculously, they’ll have a trademark that doesn’t actually help them because it was filed wrong. So one of the other things that I want to tell you about is the process. Once you do file the application, the strategy is done. You’ve chosen your trademark, you’ve got your classes and your descriptions. Now is the waiting time, and it’s usually an 18 to 24-month process, but you wait, and then you also have to answer questions. Lately, I would say nine out of ten applications that we’re seeing go through, the examining attorney who gets that is actually reaching out to us to ask questions and wants further information from us. So that’s a little bit of something that online services have a hard time doing. And sometimes people come to us after they’ve filed online, and they’re like, how do I answer these questions? So it’s best to get it all set up at the beginning and then to be able to ask questions efficiently so that your application ends up going through. That’s a little bit about trademarks, but we do have some differences between fictitious names and domain names. Those are not trademarks. We’ve got a lot of information in our legal report for trademarks. If you’d like to have a copy of that, you can register for that down below and we’ll send it to you. I hope that helps.

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