Trademarks - How to Search and File Your Own! | Nyall Engfield | Skillshare

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Trademarks - How to Search and File Your Own!

teacher avatar Nyall Engfield, JD, California Bar

Watch this class and thousands more

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Taught by industry leaders & working professionals
Topics include illustration, design, photography, and more

Watch this class and thousands more

Get unlimited access to every class
Taught by industry leaders & working professionals
Topics include illustration, design, photography, and more

Lessons in This Class

    • 1.

      Introduction to Trademarks


    • 2.

      What can be trademarked?


    • 3.

      Searching Trademarks


    • 4.

      Filing your Trademark


    • 5.

      Post-Filing Considerations


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About This Class

Do you have a brand that you would like to protect? Trademarks are an important protection, and it is not as difficult as you think. We consider what are the important characteristics of a trademark, how to determine the goods and services, and how to search for marks that may block registration of your trademark. Then, we'll go ahead and prepare a trademark filing with the US Trademark Office. 

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Nyall Engfield

JD, California Bar

Level: Beginner

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1. Introduction to Trademarks: Do you have a brand that you want to protect? There's a couple of ways to do it. One of the best ways is through registered trademark. The trademark is registered through the U. S. P. T O, which is the U. S governing body on intellectual property. And once you have a registration, you could protect your brand against other people, unfairly trading off the goodwill that you generated. We're gonna tell you how in this course first things first. What is a trademark? Well, a trademark represents a single source of goods and services. So why is that important? Because the point behind the trade mark registry is to avoid confusion in the marketplace so that, you know a company has a particular brand representation. Another company can't just reproduce the brand or make something confusingly similar and pretend it's the first company. So that's the original purpose. And in order to protect consumers, brand recognition is one of the most valuable aspect of of a company of a startup and so on . So it's important to think about and to protect as you go along. The best way to do that is by filing a trademark now There are two types of trademarks that you could have in the US today. The first is a common law trademark in a common law. Trademark works simply by use, so you're going to get rights by having used the mark and having customers associate the marked with your name. Nothing needs to be filed now. The problem with a common law trademark is that it will only cover you really in the geographic area that you sold in. And secondly, you have to prove that you have the rights to the mark if you want to stop someone else from using that mark. A better approach is a trademark registration registration two X place with the USPTO and involves filling out a form than using the mark and then proceeding to registration with the mark. You may see logos and marks out in the marketplace with the designation after it. So a T M in Superscript is designates a common law trademark, and then R in a circle is a registered trademark. Soaps registered with the U. S. P. T. O. And anyone can see the registries later on. In this course, we're going to be searching for confusingly similar marks to the mark, your thinking up and we'll go into the USPTO database to search those marks so you'll see some registered marks there, along with some applications. There's another reason why it's important to file trademark. As you go through the trademark process, you'll learn about other marks that are confusingly similar. So if you start using the trademark of a company that already has a claim to that mark, that they can sue you for damages and at best force you to change your name. So a rebranding process, especially for a start up, can be a very cumbersome process, and you can lose some of that goodwill you've already generated. So it's best to think carefully about the brand before you go into the marketplace or an earlier stage. Get that registration so that you know you have rights in the name. I'm a California attorney, have been working with trademarks for about 10 years now, so I'm happy to pass on my information. But just a disclaimer. This doesn't constitute legal advice and said it's just information about trademarks. I don't know your specific case and so on on a Z go through this process. We're going to be using an example. Music promotions company promoting indie bands in Southern California called Brains B R A. N Z Brains has been operating for a little while and they're looking at filing their trademark now. So we're going to be looking at for goods, T shirts and CDs and for services, music, concert promotion. So that will be our example. As we go through it, it'll help you compare your goods and services with the example. So for the assignment, we're going to pick a mark or two that you like And this these marks we're going to search . As we go through the course, we're going to search for confusingly similar marks, and then we're gonna have a chance to file for registration off the mark, say that you prefer, But for this first assignment, just think of one or two brand names and a list of goods and services that they're going to be used with so you can make something up for the purpose of the course. Or you can use something that you're thinking off potentially branding in the future and give you some feedback on that. But we'll have the assignment and you could submit those eso. It's the brand, along with a list of goods and services that that brand is associated with. 2. What can be trademarked?: hi again. So you picked a brand name now and we're going to discuss whether it could be trademarked or not. Now there are some general prohibitions on trademarks, and those are surnames, descriptive marks, generic marks, offensive marks and confusingly similar marks. We talked about confusingly similar marks in the first less. Now let's talk about the other. So certainly surname can't be protected with a trademark. However, there is an exception. If you are able to use that surname in the marketplace for a period of generally about five years and gain some unique meaning for the surname that it's associated with your brand like McDonald's, for example, then you can register it down the line and ifit's this point. It's a designated a surname. You can register on something called the Supplemental Register, which is a backup register, so the most important registers primary register. If you can't register on that, the supplemental will give you a chance to show within five years that you have made the mark yours. So first discerning Second is descriptive, so descriptive marks can't be registered. There's a general prohibition on descriptive marks because the U. S. P T. O doesn't want you to prevent others in the field from using those words to describe their goods and services. So if these air normal words that are used to describe the goods and services in the field you're in, then there likely to be descriptive descriptive is of the character of the goods and services themselves or people that carried them out. So if it's descriptive of some aspect of the goods and services or the production thereof, just be aware that this may come up as a hurdle in your prosecution. So generic is related to descriptive marks in that they covers off language that other people in the industry I need to use to describe their goods and services. For example, boots for four boots or shoes would be pretty close to generic. Descriptive might be leather for boots or shoes, so it doesn't describe boots. Leather could be many other things, but describes a character of your particular goods and services, and that's why it's descriptive Now. Offensive marks can't be registered, so that's swear words. There's also confusing marks. We talked about that a little bit earlier, and the important thing to keep in mind with the trademark is that if somebody else has a particularly a big company, that they may come after you to prevent your use of the mark. And that is why it's important to avoid a confusing mark at the outset. Large companies, even if you're Mark, is not that close in your opinion, but they think it is. They can still pursue the case and cause you a great deal of discomfort. So especially where your startup, it's best to avoid that pain at the outset and just dig a little deeper for your mark to see if someone else is using it before you go ahead and on adopted. 3. Searching Trademarks: all right, so it's still with me. Now we're going to search the mark. So let's taken example here we have a company called Brains B R A N Easy four rock conscience. So where Rock concert promotion company were called brains? It's a little bit of the misspelling off. You know, brains. Brain doesn't really have that much to do with the rock concert unnecessarily. So it's not. It's not descriptive or generic, and it's not surname, and at this point, it's not offensive. So let's take a look at the confusion issue. So we're going to start with the search and the search is going to cover the word itself. It's going to cover ideas that are close to that word. And we're also going to cover words that sound the same but may have a different meaning. Okay, so the three main areas around the bird brains so brains, you know the word itself. Maybe B r a. I n s as usual spelling in English. We could start with that or other or brain in a singular without the s sound on the end. And then when we're looking at similar appearance there, maybe like Mark branches or something like that they use is maybe the 1st 4 ladders of the mark and has in different states in the last two letters and also we had sounds like so again, brains doesn't really sound like much else. Besides, you know the word brains, but you do want to cover off sounds like So you have some words that have multiple meanings and different sounds and so on so they may be interpreted that way in the market place. You want to be aware of that. So before we do our search, we're going Teoh. Consider the goods and services. So I hope you have that goods and services list for your mark, because that's going to guide us through the search so that we don't have to weed through all kinds of irrelevant marks. We want to focus on on Lee those marks that are within the field of the goods and services so either directly within the field of the goods and services. In this case, the USPTO makes it a little bit easier for you because it designates thes as classes and we can look at classes in more detail. The second aspect is We're looking at channels of trade. So to describe a channel of trade, it's saying electronic retailer like Amazon, if they're selling your you know, your product, then you would also want to cover them off, even though cover off that class, even though you weren't providing Elektronik retailing services like Web retail services. So that's something to consider as well. So when I look at how the goods and services and how they are sold, Okay, now we're gonna find the trademark Elektronik search system. So we're looking at tests with the USPTO, so they click on tests were gonna go straight straight to that database. Now, you can also go through the uspto front page. If you click on trademarks and search. There's a couple search options here. This system, your made search box right here. We're looking at a basic word Mark search. We're looking at a word and or design mark search and this one structured and this one has some benefits. And I can tell you why in a moment and then the freeform search. So let's ah, let's pass that by for a moment and just focus on the first tee. So we're looking at a basic word. Mark search. It gives us this search dialog. Here we have a choice between thorough and singular live and dead choose live because the dead ones won't affect the registry ability of your brand. So if we take the Brandon right here and we have the field is combined word mark, then we can submit that query and see what comes up for brains. OK, now we have a direct hit. Brains here is for computer game software. So this is the brains corporation in Delaware, and this is what they're registered for their it's a current basis is a one a. So they're currently using it and the mark has registered. You could tell right here. Registration number. If it hasn't registered, it would not have a registration number that there's a couple considerations here. First of all, as you can see, the computer game saw for the class that it's in I, Caesar's heir nine International Class nine is very different from concert promotion CDs and T shirts. However, this company still might come after us at some point for using the same the same brand name . That's something to keep in mind, but Right now, it looks like the goods and services are very different between the two companies, So that is good. That means it's unlikely to be confusing Now. You want to look at not only the goods and service themselves, but the channels of trade. So if they're sold through the same mechanism, even though it's not identical goods or services, then it may still be confusing. In this case, computer game software is not likely to be sold through the same channels as music, CDs, T shirts or entertainment events. So let's set this one aside for now as not a threat to our application. So that is the first search. Now let's go to the structured search. Now, as you can recall, we have our Our goods and services are generally relating to music. So what we can do is we can go to the goods and sorry, the tests structured query, and we can put brains in here and then make this one into the full mark. This one should be, and and then down here say we have It's a music field. So those were the goods and services, and then we're gonna submit. Okay, No, test records Red for brains. Okay, so if there's none for brains, remember that we look at the direct hit we're also going to look at. Sounds like so this sounds like brains. I submit that query. So we have to the both dead. I don't have to look into them, but just know that they're there now. The other thing we can do in here do This is a pseudo mark. So the CEO Mark breaks down a brand name like brain feeder and would break it into two words brain and feeder. Okay, so we have looked into the pseudo mark here, and what the civil mark does is a brain breaks the trademark into words that are, you know, the normal words interpretation in English of the mark. So our CEO Mark for our mark brains with considering the misspelling would be brains. The normal word B r a i and s of the single market we put admit makes it easier for others to search for similar marks. So if you search for brains and music, these are the ones that come up. So let's just take a look through and see which ones look close so say we click on a brain feeder. Brain feeder might be an issue because we have audio and video recordings featuring music and artistic performances that CDs T shirts also here as well. And then we also entertainment services in the In this case, it's motion pictures television shows, so that could pose a problem. Brain loves brain scan brainchild. We don't have to open the dead ones. Just focus on the live ones. We'll start with ones that start with the word brain brain tech. So this is cognitive therapy services, brain pop online computer website and we're just looking through for marks that seem close brains with the triple last year Brains, computer game programs downloadable by the Internet. Uh, we look, we see here that it has downloadable computer games so on this is very close to the other mark. Brains. Remember that also had registered this once a registered to So that's a good indicator. If you're getting multiple marks that are similar registering in a particular class, it's probably, uh, probably easier to argue over those than it would if there was just a single mark in the class. So there's a few here that come up. So having looked through this here and that takes us up Teoh a dark 84. So let's the full list of records that were returned right here is this number, and we have the 84 on the single page. So just check double took a couple more before we go. Music production services, brain food. So this one will probably come up against our mark in the music production and entertainment services in live musical performances. And so it's okay. So brain feeder T shirts, audio and video recordings, and creating music and television programs that 1 may be an issue brain food. Here we have musical production services and entertainment. That may be an issue with the direct hit that we had was in class nine for downloadable software, but I think CDs air also in Class nine. So the Examiner may raise those, but we could argue that they're sold in a totally different way, and there's no overlap so that one would probably be arguable to move our mark through. So in this case, I think that these are while they're close. In some ways, they're not going to necessarily block my application, so we probably want to proceed anyway. Okay, so we've looked at the pseudo mark now in music, and let's just take a quick look in T shirts. So here we have. This one is identical T shirts, so that wouldn't sound the same. And has the Z in it as well. That would probably block are T shirts goods, but not our other good. So what we're gonna do is just drop the T shirts. We want to stick with that brand. We're just gonna drop the T shirts from the application, and that is how you do a search. Now, ideally, you're gonna look into all the live records that are close to yours and see to what extent they're similar and the goods and services and in the trademark. And that way you can decide to what degree it may stand as a hurdle. Now, we've gone through the searching, searching example on the uspto tests system. And for your assignment, you can take your one or two marks that you mark ideas that you had set aside, and you can search them as well using test. So we're looking at covering off the three different criteria the word itself. It's going to cover ideas that are close to that word, and we're also going to cover words that sound the same but may have a different meaning. 4. Filing your Trademark : All right, So you're with me. So far, we've performed the search. It sounds like you're markets in the clear. So you want to go ahead and follow the straight mark, But you can use the T A s system at the Uspto, and we're going to go through that with you. Now we're gonna take an example, mark our brains mark for rock concerts, and I'm going to show you how to prepare the online form and submit. Now we're going to go through the teas plus program. The teas plus program makes it a little bit easier and results in a grant or a registration of the trademark quicker than the other system. Okay, so the other system is the PT's reduced feet. The teas plus makes you categorize your goods and services into specific US PTL approved descriptions, whereas the teas reduced fee lets you describe in plain text what you're doing. So if what you're doing is totally different from what is already out there, unlikely, there may be something even close already that has been filed for. But if it's if it's different, you want to use different words teas. Reduced fee is the way to go if it's a market like a service or goods that's been out in the marketplace, that you could just go with the regular teas plus and you say, 50 bucks. But it will also be quicker, a quicker prosecution process. So just to go over the official fees for a single class and teas plus is to 25 single class in teas. Reduced fee is 2 75 and if you add classes, it's just twice or three times that fee for the fighting. Okay, let's go to the form and see how to fill it out. We are on the USPTO main site and we're looking at trademarks, and we want to apply online Now. Here, you see, First timer, you can get some basic information here. Down below. Here it goes. There's the nuts and bolts video as well. Uh, right here we're looking at the fee. So we're filing a tease plus today and I'll show you how to do that. It's got the lowest fees. And because the products and services are pre vetted by the system, you don't end up with an objection on that basis. As I mentioned before, if you have unique products or services that might not be listed the way you'd like to see them from previous see no application that the uspto processed. You may want to file eighties reduced fee application right here, which will let you put in free form goods and services. Okay, so all course, Spartans has to be through your email, but you're filing electronically, so that should be no problem. So let's go ahead down here. Number one initial application forms and click on that. And we're going to say we're gonna file a tease plus applications. This is the first form that comes up now. There is a whole bunch of small print and you should read this for your own knowledge. A lot of it's in there just simply boilerplate or before the uspto to inform you of various , you know, various conditions and so on. I'm not gonna go through them at this point. We're gonna go through the application, and as you read through the application, you could go through that small text. So at the bottom here is an attorney filing the application. No, because we're filing it on our own behalf here, and you can also save an application that is, you know, partially completed and come back to it later. Using this second option Here, choose file. So is an attorney filings application? No. Then we're going to click. Continue. Okay, Now become to the first page. Here is for the principal register. So the owner of the mark will be you. Okay, so let's call the name your individual John's just to make up the last name. Um, we if you're putting in a corporation, you're gonna want to put some of this info if you're doing business, as, uh, we're an individual in this example, and we're based out of the U. S. A. We're gonna put our street address here. 123 Any town road? San Diego, California. Put in a zip code. We have a fox number. If you have one. And your email address now, this email address here will be the one that you get your notifications sent to. So if we had, say jobs at gmail dot com and you want to click toe authorized the uspto to communicate with the applicant by email. Now, if you work through paper forms, then you'll have to pay the additional fee for the regular teas application. Um, by filing Elektronik Lee. You can have access to the lower fees, and then there's a website. If you have one, now gives a warning. A telephone number has not been entered, although optional telephone number will help you. Bubble butt. So a telephone number. Let's the attorney call you if they have any questions, but the telephone number may also be published with the application. So if you want to keep your telephone number private, I wouldn't put your telephone number in this slot. Some people do like to receive info by telephones. That's up to you. But just as a warning, it may be public. Okay, so here's our mark. Now you have the option here. This this is where you're gonna pick, whether it's standard mark or a logo cases. This special character standard characters is a standard word Mark. That's what we're filing today. Special form is if you have a logo. If you have a logo, you're also gonna have to describe what the logo looks like done, but look, so just just give an example of the logo for him. So I'm just gonna click on here. The logo changes. Now, Here you haven't choose file. You can upload an image of your logo. In fact, you're half do uploaded JPEG image of your logo, and here you're going into the literal mark. And here is a color claim section. So if you have particular colors that you want to protect, associate with your market could put them there. If not, I recommend not making the color claim because you will be more limited to those colors. So here is a description of your mark and you describe you know, the elements of the mark that make up the design. There's an example down below. No, because we're filing a text mark today going to go back to this one, our mark. Now, um, we're going to add the goods and services that we continue here. This is the goods and services now, because we've done teas. Plus, we are limited Teoh using their system to select the goods and services. If you choose teased, reduced fee, then you can add some freeform goods and services. As you recall, there's the search park, the top that you recall. We're going to of our CDs. T shirts and entertainment events like music concerts. So we found that T shirts had a very close previously registered mark in the database. So I don't think we're going to be successful with teachers were going toe, have to use a different brand for our T shirts. And we're going to remove them from this application because of our you know, the results of the search. So at this point, we're gonna look at music CDs, and we have here entertainment services. Name the musical band. Okay, well, that's actually works well for our okay, so that this one's over Broad. Here we have musical band rock, but gymnastic dance and ballet performances. So entertainment services in the nature of live visual and audio performances by. So this would be a good one here for a rock bands, but I was actually looking for the CD. So since we found this already, let's insert detect entries and then you need to insert for this one. It needs this specifications. Actors, musical bands, dancers, etcetera. So there we can put in. That's okay. And then we injured those checked entries and then it appears down here. So that's the 1st 1 but we don't have them all. We're gonna want them all listed here before we go on to the next section where we say whether the mark is already in use or whether we're intending to use it. Let's make sure we have CDs in there as well. We do. Compact. Just okay. Here we go. Finally. Compact discs featuring music. Okay, that's our choice. It answered those checked entries. So now we have the two that we want it. One is inert. International class nine. The other is international. Class 41. This is the goods. This is the service. Now we're gonna have to pay to filing fees because we have two classes. And as I recall telling you, they're both in use already. So say we started using them back in September of this year, so select one A. Okay, so it wants to us to click each of them individually. So we way launched the first compact disc in September. We're going to upload the specimen, which, in this case is going to be CD cover. Touch it. Turn to the application. Now we've added the CD cover. That's for compact discs. You can see which one You're adding the one before good featuring the mark. So first date of use, whichever date you could definitely support That's what you should put in their first use in commerce again. This is going Teoh relate toe a sale in the normal course of business. So make sure you put a date that you could definitely support. Like you have an invoice on a sale was made that day rather than just, you know, the date the website goes up. Okay, so that looks good. Sign the filing basis. Now, here you can see that this filing basis has been assigned to the com past discs product. So now we're going to click on the 2nd 1 and we're also using that when the website went up the same day and we're going to attach this specimen for that. That's a screenshot of the website. So again, we're gonna look at, uh, four order that I had made website detects that ball, we turn to the application, then the website showing advertising okay again, it's ah, September 1st, then now putting in the filing basis if you use the mark than filing on a use basis, will save you the extra fee of filing the statement of use down the line. So if you fall on intent to use than before registration, you'll have to file a specimen of use this extra $100 official feet. So if we are using it now, it's good practice to put it into the application to expedite our are fighting. Okay, so we're gonna continue now we have whether there's a firm name, we're gonna leave that firm name out, we have the address information, and we have an opportunity to put the email here. You don't need a secondary email, but you could put one in if you like. You authorize the uspto to send email correspondence to you. Telephone number again has not been entered, so let's go back. If you enter the telephone number in this spot, then it's not going. Teoh, if you enter the telephone number in this spot, is not gonna be published with the owner information in the USPTO record. So this is the spot where you want to put it. Also, use these navigation bars at the bottom to get back and forth rather than your back key at the top, because if you go back on a page, it's going to give you an error message. It's gonna find inconsistencies in the the navigation. So if you use these, you're not gonna get that error message. So we have two classes here. It's giving us the invoice feet for classes to 25. Total fee Do is 450. Sit down here. We have a declaration. You're swearing this. So look at all the all the components of the declaration and ensure that they are true. Okay, So you fall for the basis. You believe that the applicant is the owner of the trademark, the mark and commerce. The mark is in use in commerce or in connection with the goods and services. The specimen shows the mark as used currently and the best in signatories knowledge and believe the fax recited are accurate if you intend to use this is what you're declaring. And then we we attest that we believe it is our you know, we're entitled to the mark so that you don't know of anybody who is using that mark. Currently, you have evidentiary support here. You know, false statements are punishable by fines and imprisonment and then you're going to sign here. Nathan signed between slashes whatever you want between slashes, but it's gonna be your signature. So it should be slash on the first and slash on the second side the date signed. It will pre populate that with today's date. The signatory name. In this case, it's Ah, Mr Johns Signatories position owner, phone number Hopes were about five men and I nine before member of ALADI. Now we have an email address again that we're gonna use to confirm and we're going to click this box down here to say red the above notice. So take a look at this notice. It's the important feature is that you have no right to confidentiality in the information it gets published, and unscrupulous operators may take that information and send you bogus notices. So, you know, if you receive further invoices, they tend to be bogus. And please you verify that it's a legitimate invoice before going ahead and paying just a word of warning. These businesses are more and more common these days and they will want Tonto applications published. They will scrape for your address and send out some notices. Okay, so we can save the form here, and this will give us a chance to put it into a No. B J format has destructed in my dumb downloads here, and then we can come back later on to the form and at the very first page you could add that form and load up the application that you'd saved. And here's where you go to pay and submit the application, and then it will be considered by the US PTL once payment is made and so on, So that is in a nutshell. How to file eighties plus application. 5. Post-Filing Considerations: great. So we filled out the form and you may have filed it. If that mark is the one that you're keen on, keen on protecting for your business or for upcoming business, you can file on an intent to use base, which means you may not have used the mark yet or you space, which means you already used the mark. Now we're gonna talk about the next steps after filing. So once you fought an application and you put to contact info into the application, the USPTO will send you a filing receipt. That means they received the information and they reiterate what information you provided on the filing receipt so that you can go over that and verify that. So I would verify that and then tuck it away and maybe Dr due date for about three months from now. And then you can take a look at the prosecution. So if you go into a system called T S d r T SDR on the USPTO website, you can look at the progress of your applications so you can see, you know, has an examiner taken on the application of the formalities been approved yet and so on. And then, once the Examiner reviews the application, they may issue in Office Action Toe, which you have a response. If not, it will go to advertisements so it gets published and other competitors can review the mark . And if they have a problem with that, they can file what's known as an opposition will go to registration once the opposition period is complete and you've shown use of the mark. So if you fall on 10 to use basis before registration and after allowance, you will receive a notice asking you to provide evidence of use. It's called a statement of you, so you have to follow the evidence of use like, you know, a website or the mark shown on a product, etcetera Onda Submit a feet and then it'll move to registries. Also, once you've fallen application, you have six a six months priority period for foreign filing. So if you follow the application in the US, you can fall within six months in other countries, and those other countries will be back dated to the U. S. Filing date. So that's something that maybe preferential to you if you're especially if you product this is picking up fast, getting some traction quickly and you're looking at international international sales. You could take advantage of that priority period. So thanks very much for following along with me. And I wish you very good luck with your trademark. We'll have some additional classes coming soon on how to prosecute your mark when you get some objections from the office and we could provide you with some info about that will help you along a to moment. If you've submitted the mark, you should have received the filing receipt already and just keep an eye out for the next sort of 3 to 6 months for some action on the file. And hopefully it'll go through within sort of 6 to 9 months is the typical timeline to registries. So good luck and thank you very much.