Top 6 Trademark Application Mistakes!

Hey everyone is attorney, Brian Russ coming at you with another video about trademarks. So, as you know, I’m a trademark lawyer. I think trademarks are exceptionally important for people, for business owners, especially creatives, entrepreneurs, people who are putting out common products that they need to distinguish themselves in the marketplace. So the purpose of this video is to go over the five top trademark application errors I see. I submit and view hundreds, thousands of trademark applications and I’m always looking at them trying to establish you know, what is wrong, what’s going on? I get lots of calls from clients who say, they used one of those online “Do It Yourself” trademark engines, or whatever you might want to call them, to submit an application and there is something wrong with it. A lot of times what people do is they submit these trademark applications and they don’t seek legal counsel, they don’t seek legal advice. I think the number one most common problem I see is that people do not take a trademark application seriously. They don’t want to go ahead and put the money in, to hire a lawyer, to hire somebody who they can have a back and forth with, an actual conversation about what the trademark application needs to be and needs to include and things like that. So that’s the number one problem. Number one problem is that people do not get the advice of legal counsel prior to submitting a trademark application. It’s just incredibly important. There’s no reason to go ahead and spend the $250 and kind of put the world on blast that you are attempting to trademark something if you’re not working with counsel to make sure it goes through because what ends up happening and I’ve seen this so often, is that it takes the trademark office, you know, six to nine months really to look at the application for the first time. And so if you wait six to nine months to have the application looked at for the first time, and maybe you’ve already put a capital investment into the product, into the branding, you have a website, you have all this put into the name, only to find out that the name can’t work for whatever reason. It can’t be protected. It’s a huge waste of money. So the number one problem is that you don’t work with counsel. The number two most common problem is that you do not have a proper clearance search conducted when submitting your trademark application. So I work with people also, who come to me and they say “I’ve already done my search. I know my name is good. Just go ahead and submit the application” and I always counsel them. I always say, you know you’re doing this against the advice of counsel. I do not ever recommend submitting a trademark application without doing at least a basic knockout search. A knockout search is generally real quick search to see if there’s anything existing in the trademark database that would pose a problem to the application. I always recommend getting a clearance search done, a full clearance search and a look at the existing USPTO trademark database for existing trademarks that might be a conflict or might cause a problem and it looks at basic common law sources, so maybe state trademark registries, domain names, things like that. So the number two most common problem is that there is no clearance search conducted when submitting a trademark application. Again, there’s no reason to submit a trademark application, wait nine months to hear from a trademark office only to find out that it’s being blocked because of something that a clearance search could have could have come up with or could have found. I see this a lot with people who want to submit a trademark application where there’s an existing brand name and they want to go ahead and change one letter of the brand name, they think that’s that’s going to be okay, it’s not If you want to get into clothing, and you know Nike exists in that realm and then all of a sudden you want to add a “Y” to the end of it, so it’s “Nikey” or whatever, it’s going to be blocked. Unknown Speaker 3:43 It’s just it’s just irresponsible to submit it without doing a clearance search. So the two problems so far: First big problem is submitting it without an attorney’s advice. Second problem is doing it without full clearance search. Third major problem I see is that people a lot of the time will just honestly put the wrong name on the trademark application. So if you’re submitting it as an individual, so maybe your sole proprietorship, you don’t have a formal corporate structure yet, the trademark application will ask you “what is your entity type” and it’ll say, individual, LLC, S corp, government, things like that. So I see this all the time, where people are submitting it as an individual and they’ll put themselves on as an LLC. They’ll say, I’m an LLC, and then they put in the applicants name and they put in their own name, or vice versa, where they say there’s somebody as an individual, and then they put in an LLC name as the applicants name. I probably see that problem more than I should because it seems so intuitive to just put in the type of organization that should align with the applicants name. So if you’re putting in an applicants name is your own name, so John Smith, Jane Smith, whatever, but you put in the applicant type as an LLC or a corporation, you know that the trademark office is going to call that out because they’re basically going to say, we don’t know who to register this to, you say you’re an LLC but then you’re a person. So that’s, I think one of the other major problems I see, is that they just put the wrong name of the applicant on the on the trademark application. So make sure the name and entity type are aligned. The other thing I’ve seen, and this one honestly just blows my mind is that people put the wrong trademark on the application. You know, they they upload the wrong image file, they type in the name wrong, they do something and they just put in the wrong trademark on the application. And so, that’s something you just need to be really certain of, I always recommend two people’s eyes on it. When I prepare an application for a client, I prepare the application then I send it to them for review, for E signature through the USPTO system, because I want to get their eyes on it too. We look at it several times over. If I ever have any question about the spelling of a name, I will always send it back to my client to take a look at and make sure that it’s done right. So make sure you have the right trademark on the application. These are the major problems we’ve seen so far. One, if you submit a trademark application without the advice of counsel, without hiring an attorney to do for you, this can be especially problematic. Two: If you do not do a clearance search, that’s exceptionally problematic because you’re most likely wasting your money and throwing it away because you don’t know what’s out there and you can’t even strategize to see what you might need to do to get the application through. Third problem is that you put on the wrong name of the applicant, the applicant and business type don’t align or the entity type don’t align. The fourth major thing that you’re putting the wrong trademark on the application, so that’s another major issue. I’d say the other two major issues that I see are that people put in the wrong classification. So the wrong class, the wrong goods and services. I see this a lot where people want to add all their potential classes on there, but they just miss what they’re supposed to be doing. I see this a lot in food industry, or maybe they think that they get a trademark for a beverage and it’ll cover a restaurant, that’s not the case. There are different classes for those two. So that can lead to problems. I mean, I get that there’s like the natural zone of expansion and things like that. Eventually, you can, but if you’re operating a restaurant, and you you have a special drink name that’s named after your restaurant then put in an application for both the restaurant and the drink. Don’t do one in spite of the other, just do both, it’s extra 250 bucks or whatever, not not that big of a deal. If you’re hiring attorney it just doubles the fees because there’s two classes, most attorneys will just double their fees for additional classes. That’s generally what I do because it a separate search for each class, there are separate issues that come up with each class. But one of the things I see is that people also will put it in classes that they expect to be in the market for and I recommend that if you’re starting a business and you’re going to start by selling stuff at farmer’s markets and things like that, sometimes just be wary of how many classes you’re going to try to go into. This is just general, when I when I do business consulting with people to is I always recommend, really understand your market, understand your product. You don’t necessarily need to get a trademark for your logo on a T-shirt if that’s not your primary business. If you sell some other type of product and maybe want swag with your logo on it, just focus your resources, on getting the trademark on what you need it on, then kind of let things flow from there. The other thing I see a lot of people just upload the wrong specimen. So this is the sixth top thing, people put the wrong specimen on the trademark application. The trademark office wants to see a specimen showing actual use of the mark in commerce, and they have very specific expectations of what that means. So like, they don’t want to see a PDF of a brochure that has not ever been distributed before. Like take a picture of a brochure that’s been distributed or take a picture the point of sale display. This happens a lot when you see website specimens for goods. They want to see that there’s like a cart, like a “buy now” instructions for how the consumer can actually buy it. So make sure that you have the right specimen on there. It’s really easy. What you can do is just Google, “trademark specimen t-shirt” and there’s going to be a bunch of blog posts from a bunch of attorneys that are going to pop up saying “hey, this is how you use specimen for a T-shirt.” If there isn’t, let me know and I’ll do a blog post on it and we’ll we’ll get it on there. So that’s it. Those are the top six problems I see with trademark applications. One, the trademark application is not submitted with the advice of attorney. Number two, there is no clearance search, done. Number three, the wrong name or entity type for the applicant is included on the application. Then the fourth biggest problem is that I see is that they put the wrong trademark on the application the wrong logo or the wrong name. Number five top mistake is that the wrong class is used for the goods and services and number six top mistake is the wrong specimen is used. All right. Have a good one everyone!

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