5 Steps in Submitting a Trademark Application

Hey everyone, attorney Brian Russ here going over the five steps of filing and preparing your trademark application. So a lot of times I get clients who call me after they’ve submitted a trademark application on their own, maybe they used one of those do yourself sites online and the trademark office reached out to them and there’s just a having issues or they’ve got an opposer that’s come to them and said, hey, there’s some issue with your trademark or you’re infringing on my mark. And so this video is really meant to go over the five steps of ensuring that your application has the best chance to get through the trademark office on the first try. So the five steps of preparing your application The first one is is really choosing your mark, choosing a trademark, choosing your brand name, choosing your logo, things like that. And I think what’s so important about choosing your mark is making sure that your mark is unique. This is the advice I give all the time, obviously this video is for information purposes only. I don’t know you, you don’t know me but really choosing your mark is so important. And it’s important because, one is your brand identity but two, everything else flows from this right and so what I run into all time people is they don’t choose a unique mark, right? They’ll be like Steve’s Hamburger Shop, and you’re like, you’re not going to get that. There’s probably another guy named Steve who already tried to trademark hamburger shop and if you’re really just selling hamburger shops, your name is Steve its should just be really descriptive of what you’re selling anyways, the trademark office is going to refuse it. Or you say, well what about, The Millionaire Financial Club? Well, there’s probably somebody who’s already submitted something about The Millionaire Financial Club, right? So it’s all about you iniquity and about ensuring that your mark is unique enough that it won’t be mucked up by somebody else’s trademark registration or that it’s not just merely descriptive of the goods which are selling or services too. And so when you’re choosing your mark, I recommend iniquity, I recommend having a few different ideas in your mind. And then what I also recommend is doing a quick Google search just to see if somebody else already has it. I know in the brewing industry, like a lot of times like breweries come up with new brews all the time. And maybe each breweries going to have five or six flagships and they’re going to have a rotating crop of nine or ten brews. A lot of times I’ll talk to brewers who use the the app Untapped to look up other breweries brews and they just look at that. Now, what I don’t want you to think I’m saying is just do a Google search and see if anybody else has come up. That is incorrect. A Google search is important for an initial search like that search engine search or something like that is important when choosing your mark. So the first step is choose your mark using uniquity or make sure it’s unique. And then, just do a general review to see if somebody else already has it or not. The second step is doing a full clearance search. This is not a Google search. A clearance search is a specific type of search that is reviewing the existing trademark register, reviewing existing trademark applications, reviewing common law sources, reviewing business filings. A clearance search is a search done to ensure that your mark is likely to go through. Or if it is not likely to go through, that is done in a way that we look at it and make sure that there is a good chance that nobody else already has your mark, that nobody else is using it. It’s a professional search done by a professional. It is more than a Google search and it is more than just searching the trademark database and good clearance search should also alert you in the event that your mark might fail for another reason besides just something being similar. So again, hire an attorney, hire lawyer hire a trademark lawyer to do a full clearance search for you because most likely, they’re gonna find something you would never find or they’re going to think of something you would never think of. Because it’s what they do. They’re professionals in what they do. So first step, choose your mark. Second search is clearance search from a professional, not just anybody, but from a professional. The third step is to file your application. Actually filing the application is obviously necessary. The user interface on the USPTO website for filing the trademarks allows errors to go through. There can be problems on your application and it will still be allowed to go through. So do not think that just because you’ve put it through the government’s website that it’s without error. One of the most common errors I see for people filing on their own is that somebody will submit the name of the owner. So you put your name in, Jane Doe or John Smith or whatever, and then you’ll say what is the owner type there? You know, what is the entity type and you can say individual LLC corporation. So if someone will say the owner is Jane Doe, and then the entity type is LLC, and the trademark office will we’ll come back to you they’re going to say hey, you put in a common name and then you said it’s an LLC it looks like that’s a mistake. Is the owner a person named Jane Doe or is an LLC, if it’s an LLC, what’s an LLC name? So when you file the application, really be sure that you understand what you’re doing. Another common mistake I see on the filing application is that somebody will submitted TS standard application where you can type in whatever your goods or services are, and they’ll type in the goods and services will say, Oh, it’s class 25 and then they’ll say the goods and services are food stuff, a band name, a t-shirt, they do all these different classes, or they do all these different goods and services, which would be their own individual classes, but they put on their one class which ends up causing delay, and you’ll get an office action for it. And so that goes to the fourth step. First step, choose your mark iniquity. Second step, clearance search by professional. Third, search file the application again, get a professional to do for you, somebody who knows what they’re doing is the best way to do it. Fourth step is to pay the application fee. Again, this will go back to the last example I had in file the application. If you mess up the application and you put in the incorrect classes, you’re going to try to stuff something into a class that it doesn’t belong in and you’re going to get an office action. So maybe you pay the application fee, the $250, $275 whatever it is, and then you come back and what will end up happening is the trademark office will come to you and they’ll say, hey, the application fee was incorrect. And you need to pay an additional fee. And so that can be problematic. Fifth step is that you need to wait for a response from the USPTO. You’ve submitted your application so you filed it but it’s going to be six to nine months before you hear from them. Sometimes you’ll hear from them before then but most likely you’re waiting six to nine months is something you got to do. Everybody’s in line. That’s kind of it. If you have any questions, if you if you’ve got an office action or if you’ve gotten a cease and desist from an oppose or something like that, feel free to reach out to my office. you got the website up there. You’ve got the phone number down here and we’ll go through it. Alright have a good one!

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