A Deep Dive Into Trademarks – Part 2

Episode 251 A Deep Dive Into Trademarks Part 2

In this episode I am continuing to talk about Trademarks.  They are an important piece in your layers of protections and are the key to growing the value of your overall business.  Which is why I am so passionate about sharing this information.

In this episode we will cover:

  • Trademark Application Process – Search and Filing.
  • Classes and Categories
  • Office Actions

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The Legalpreneur Podcast is advertising/marketing material. It is not legal advice. Please consult with your attorney on these topics. Copyright Legalpreneur Inc 2022



Episode 251: A Deep Dive Into Trademarks Part 2 Transcript

Andrea: [00:00:03] Welcome to the Legalpreneur podcast. I’m your host, Andrea Sager, founder and CEO of Legalpreneur Inc. As a serial entrepreneur and someone that works exclusively with small business owners legally protecting their business, I’m dedicated to covering common legal issues faced by business owners, providing you with the business knowledge you need to catapult your business’s growth and showing you just how some of the world’s most elite entrepreneurs have handled these legal and business issues themselves. In true attorney fashion, the information in this episode is not legal advice. This is for informational purposes only, and you should always consult with your attorney before implementing any of the information in the show. Hello there. Welcome back. We are diving into part two of Intro to Trademarks. Now we’re going to chat about the actual application process and then we will touch some more on infringement if we have time. If not, there might be a part three, because you all know I don’t like these episodes to be too long. I like them to be bite sized episodes. So we’ll see what we have time for. And if we need to part three, we will have a part three because like I said, I literally could talk about trademarks all day long. They are the key to growing the overall value of your business, and that’s why I’m so passionate about them because of what they can actually do for you and your business. So let’s get into this trademark application. Now, the full application process, there’s really two steps if you go to a trademark attorney. To overall steps, then of course, many steps in there. The two main parts. Number one is the search. Number two is the actual filing of the application. These search is the most important part of the entire trademark process, because this is where when you go to a trademark attorney, they’re going to conduct their own search on whether they believe it is trademark infringement or not. The chances of getting through the application process and whenever I have. Andrea Sager Law. I do the search and I tell I would tell the clients, look, we do this because I’m not going to file an application I know is not going to get approved.

Andrea: [00:02:22] Every trademark attorney should be like that. And most that I know of are like that. And it’s too, number one, save you time and money if you know you’re not going to get approved. And number two, we want to make sure that you have something that can be protected. So going into the trademark process, if I know you’re not going to get approved, I tell you, look, this is not going to get approved. And we would like we used to do another search at no additional charge to help the client find something that could be protected. So doing the search, of course, trademark infringement isn’t just one. It’s the same exact name. It’s anything similar enough to where consumers are likely to be confused. So when you’re looking for all those similar marks, that’s that’s really where you find the issues. It’s because normally business owners, they know how to find the same exact name, but they don’t know how to find similar names or they don’t even maybe they found it and they just didn’t even know that it was infringement. So. Make sure that you are doing a thorough search if you’re dying, the process. If you’re dying in the process. I do suggest our trademark course. Is that the trademark course? Because that does take you through the very, very thorough search process that we have, and it helps you just file as many trademarks as you want on your own without the attorney fees.

Andrea: [00:03:40] But I’m going to walk you through the process really quickly of actually filing the application. So you do your search. You know, I think I have a good chance of getting approved. Let’s file this application. Last year, the trademark office did raise their fees, the filing fee for TS plus. There’s TS Plus and TS regular. This is just the types of applications you want to qualify for TS plus, because it’s a lower filing fee. It’s 250 per class. Remember, the classes are. Essentially the categories, different industries. So if you have a clothing boutique, you’re going to be filing in class 35, which is retail stores, services, and then you name all the goods and services. If you’re a business coach, typically it’s class 41. Sometimes if you are consulting, it actually can be class 35 as well. So depending on what you do, it just depends on what class you’re going to file in. Now and again, if you’re in our trademark course, we go through all of that and really help you identify which goods and services you need to file for. So if you do qualify for more than one class, then you need to file in those classes and each class is an additional filing fee. So even though you’re filing for one mark, so let’s say it’s ABC, but you’re filing in class 35 for retail store services. Let’s say you private label your clothing, so then you file for the actual clothing class, which is class 25 right there.

Andrea: [00:05:09] You’re paying $500 in filing fees. So now. You go to file the application and you’re going to first enter all of the actual business information. This is gathering everything that you need as far as what type of entity you need, mailing address. It’s all the basic business stuff. But if you have an entity, you always want to make sure that your entity owns the trademark. Anything else In business? If you’re doing anything, you need to make sure that everything is in the name of the entity, not your name as an individual. So you file the applicant, you fill out your business information, you input the mark, use look the goods and services, you put the data first, you use. The other thing you have to be aware of is is it already in use or are you filing an intent to use application? If it’s in use, you want to file an end use application. If you plan to use it in the future, you’re going to file an intent to use application. There is an additional filing fee at the end, and that’s per class as well. So if you want to essentially reserve the mark, you can file an intent to use application and that’s giving notice to the world. And so if somebody starts using it in that time, that’s trademark infringement. Now, when you file the application, you may think, okay, I’m good, I’m done.

Andrea: [00:06:33] All right. Now the minimum that it’s taking from the date you file your application to the date that you’re officially registered, it’s at a minimum of a year. We’re looking at about 12 months. So before COVID hit, it was about six or seven months. But COVID hit, and it’s not that the trademark office was ever closed. It’s that many more people that jumped ship or they were laid off. And you know what? I’m going to go all in on my business. And then they filed that many more trademark applications. That’s why the trademark office is behind. It’s not because the trademark office was closed, it’s because they were behind because of so many more applications being filed. So right now, the initial examination period, which is where the trademark office examining attorney looks at your application, they do their own search and they’re looking for those similarities and they’re looking to make sure the application is complete. Everything is good to go. They that they can approve it. That whole examination period is taking about 8 to 9 months right now. So when you file that application, you’re not going to hear anything from the trademark office for about 8 to 9 months. Then you go through that examination period. The trademark office says yay or nay. They can say, okay, you’re approved. You move on, or they’ll say, No. Here’s an office action, which is just a refusal. And then you still have an opportunity to overcome those refusals.

Andrea: [00:08:05] Then hopefully you overcome them and then you proceed. When you proceed and I’ll touch on office actions in a minute, but I just want to get through that process, the whole process first. So you proceed and then you’re going to publication, so you get notice of publication, which means, hey, they’re telling you at this date you’re going to officially be published in the Trademark Gazette. This is where all new trademarks that will be registered are published for 30 days. This is giving notice to the world that, hey, all of these trademarks are going to be federally registered unless you third party you believe that your brand will be damaged If these are registered, if you believe that it is going to damage your brand, you can file an opposition. An opposition is very rare and anything happening during this publication period is really rare. But it is important that I still tell you about it. So. Just know that for the trademark process, you first 8 to 9 months, you have that examining period and then to get to publication, it can be anywhere from like 2 to 4 weeks. So you’re still waiting about another month at that point, and then you’re published for a total of 30 days. So that’s another two months. And then after the the opposition period, if nobody files anything, then you’ll be registered 11 to 12 weeks after the opposition period. So really you’re looking at over a year.

Andrea: [00:09:36] But the minimum, I have seen them come in as little as a year. So you just think that you’re looking at a minimum, a year for to be registered from the date you file the application. And this is why you want to make sure you do a very thorough search, because you do not, number one, want to wait a year to start using this name. And number two, you don’t want to start building a brand for over a year and then realize, oh my gosh, I am infringing on someone I have to rebrand. Rebranding sucks. I mean, I’m not going to tell you it’s the end of the world. It’s not, but it sucks. And you want to you want to avoid it at all costs. So let’s touch really quickly on office actions. I mean, there’s basically an infinite number of office actions, so I’m just going to cover a few of the common ones. The most common and the hardest to overcome is likelihood of confusion. As a trademark attorney, this is the main thing that we’re looking for in the trademark search we’re looking for, hey, are we going to get this? We you may hear us call it a2d, it’s a2d refusal. It’s just what they call it in the trademark handbook. But it is called likelihood of confusion. And that basically means, hey, this is lending itself to actually being trademark infringement. So. You don’t want to get this refusal. But normally I tell clients, hey, if you you know, when I do the search, I give them a low moderate to high risk if there’s a chance that will get this refusal.

Andrea: [00:11:08] But I still think we can overcome it. You’re getting a moderate risk. This is because. Hey. Each trademark examining attorney. It’s subjective. There’s not a system that it goes through. They all get trained the same way, but everybody’s brain is different. And what one may think is likelihood of confusion, another may not. So it’s all very subjective. So we can say, Hey, I actually don’t think you should get a refusal at all. However, there may be a very, very, very strict trademark examining attorney that will say, hey, like in some very far off world in another galaxy, this could cause likelihood of confusion. So I like to be very. Broad with my clients and say, look, there is a slight chance that somebody may issue a refusal, and I would rather warn you and it not happen then not warn you. And then it happened because that’s it’s a tough refusal to overcome and it costs money. So you want to try to avoid that at all costs, but also be prepared if it’s coming. So likelihood of confusion that that’s the most common and the hardest to overcome that refusal. Next is a disclaimer. This is a simple refusal to overcome. Typically, this means that you have a very probably just like a generic word or a descriptive word in your mark.

Andrea: [00:12:31] And the trademark office wants you to issue a disclaimer that says this word specifically, I don’t claim to have the exclusive right to use it. I only claim to have the exclusive right to use this whole this mark as a whole. Disclaimers are very common. It’s just a click of a button to actually say yes. Here we add this disclaimer Some attorneys automatically include it in the application. I normally would not only because I want the examining attorney to have to do it, I want them to say, Hey, no, we want this disclaimer here. I’m not going to automatically volunteer disclaimer because we we’ve had we’ve seen some things slip through the cracks and things got registered that maybe perhaps should have had a disclaimer. So I always want to make sure that the examining attorneys are doing their job and making us file that disclaimer. The other is a specimen refusal. A specimen is what you submit. When you file the application to prove your usage, you have to show how the mark is being used. A lot of times it’s hard. Specimens normally aren’t hard, but especially if you’re filing on your own. It may be tricky because especially for clothing stores, clothing boutiques. You may file in the clothing class because you’re selling clothing, but you’re actually only. Providing a service if you don’t. Private label. If you private label, Yes, absolutely. You should be filing in class 25 and you need to show a picture of the label.

Andrea: [00:14:03] But so if you’re in class 25 for clothing, you show a picture of the clothing label with the mark. If you are a clothing boutique, you’re showing store, signage, a website. So you have to know exactly what goods and services you’re applying for and make sure you submit the correct specimen for that. You guys. I said, there’s a ton of office action refusals. Those are the top three most common refusals. If you ever have questions, feel free to reach out. Always happy to help. But just know that right now, if you file the application today or tomorrow, it’s going to take at least a year to get approved. So if you’re thinking about the trademark process, you want to get that started as soon as possible. All right. If y’all need any help, let me know if you want to check out the trademark course. Save on attorney fees. It’s at the trademark course. And y’all have wonderful, wonderful holidays. We actually will not be publishing episodes for the last two weeks of December. We’re taking a little hiatus just for the holidays. I’m actually going on vacation, a solo vacation in Grenada. I am really, really excited. This is my new tradition to have my little solo vacation the week before Christmas. So I hope you all have. Happy, Happy holidays. Follow along on Instagram. Tick tock all the things and I’ll see you in 2023. I am so.

Andrea: [00:15:28] Excited to share with you that from now until the end of the year, you can sign up for the Legalpreneur membership for almost half off. It is normally $349 a month or $3499 for the year, but from now until the end of 2022, you can sign up for $199 a month or $1999 for the year. You get all access to your own attorney, unlimited emails, 130 minute phone call, a month, document review, access to all of our contract templates, plus a discount on additional services. And once you get started, we get you rocking and rolling with a business audit, which is where we outline exactly what protection you currently have and what protections you still need. We lay it all out for you. That way you can get started working with your attorney, knowing exactly where your relationship is going. Get signed up. The link is in the show notes and we are so excited to serve you in the Legalpreneur membership. Here at Legalpreneur, we’re committed to providing a supportive legal community for all business owners. I know how scary the legal stuff can be. If you found this information helpful, I would be so grateful if you could share it with the fellow business owner. And quite frankly, it doesn’t cost anything to rate, review or subscribe to the show. Your support helps me reach more listeners, which allows me to support more business owners in their entrepreneurial journey. Have any questions or comments about the show? Feel free to drop me a line on Instagram. I promise. I read all of the messages and comments, and if you want to be a guest on the show or know someone that would make a great guest, simply fill out our application form and a team member will reach out if we think it’s a good fit. I’ll see you in the next episode.

Episode 251 A Deep Dive Into Trademarks Part 2