I want to register my name, my brand, my slogan as a trademark with the United States Patent and Trademark Office, the USPTO. What do I do? How do I go about taking my brand, my name, which I put my heart and soul into creating, which tells consumers who I am as a business, what services I'm providing, how do I protect that name, slogan or logo as a trademark through trademark registration. My name is Enrico Shaeffer, I'm a trademark registration attorney with Traverse Internet Law, and today we're going to be talking a little bit about trademark registration self help; and how to register a trademark with the USPTO.
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I want to register my name, my brand, my slogan as a trademark with the United States Patent and Trademark Office, the USPTO. What do I do? How do I go about taking my brand, my name, which I put my heart and soul into creating, which tells consumers who I am as a business, what services I'm providing, how do I protect that name, slogan or logo as a trademark through trademark registration. My name is Enrico Shaeffer, I'm a trademark registration attorney with Traverse Internet Law, and today we're going to be talking a little bit about trademark registration self help; and how to register a trademark with the USPTO.
The first thing that we need to talk about is the concept of trademark registration forms and trademark registration self help. When clients and prospects ask us, do I need an attorney in order to file a trademark registration application the answer is no. You can try and register a trademark, a name as a trademark, by yourself. You do not have to have a trademark registration attorney provide you assistance in order to file that document. And what I mean by that is this. The trademark office at the USPTO doesn't require any sort of certification or license in order to register a mark as a trademark with the USPTO. So any person can fill out the online forms as USPTO.gov, and go through the process in order to try and get registered. Trademark registration self help happens all the time. And in terms of a trademark registration form or template, those are actually available online through the USPTO.gov website. So they've got the online form at the trademark office, that guides you through the process of how to register a name as a trademark.
Now here's some things that you need to think about and that any good trademark lawyer will tell you before you start the process of trying to engage in self help. Before you start the process of trying to fill out the trademark registration application by yourself without the assistance of an attorney. Trademark registrations are relatively straightforward but they're not without some complexities. There are a number of areas where you need to make an election, you need to provide information that if you don't get it right, if you put the wrong information in the box on the online form, you're potentially going to end up with a trademark registration certificate that is worthless. Someone is going to be able to, upon receipt of a threat letter from you, respond by saying you lied to the trademark office or you provided misinformation to the trademark office when you filled out your application and therefore your trademark registration is invalid.
Now that won't leave you completely in the dust, because you'll still have your common law trademark rights. But let's face it you're going to pay that 300 dollar or so trademark registration application fee to the USPTO, you certainly don't want to waste that money, and you certainly don't want to go through the pain of the year long process to get registration only to have to start again. You don't want to use the leverage of your certificate of trademark registration from the trademark office. You don't want to lose the benefits that you get under the trademark law and the Landum act by having an invalid trademark.
So it is a good idea to hire an experienced trademark registration attorney to guide you through the process and make sure that you'll filling out the online forms correctly or having the trademark attorney fill out the online form in order to make sure that you get it right. Now let's talk about some of the things that you're going to have to fill out within the application, that you need to get right. One of the very first items is who owns the trademark? Well first of all only a person who actually is going to be using the mark can file the application for our trademark registration. So you need to make sure that you're not registering in your name for someone else.
For instance when it comes to domain names, if I'm a web developer I can register with my customer's domain name under my name and that's no problem. The question might come up later who actually owns the domain name but that's a separate issue. Trademark registrations are different. You need to make sure you're putting the trademark owner name in the correct spot.
Now the next thing that you're going to have to do is you're going to have to describe your goods and services, and that's very important because if you mis-describe the goods and services the examining attorney at the trademark office may deny you your trademark application. Or even if you get through the process may become subject to attack by someone that is infringing your trademark, and to whom you've sent a trademark infringement threat letter demanding that they cease and desist any further use of the mark. So you need to make sure you get the goods and services right.
One of the next items is selecting the international class for the goods and services that are reflected by your trademark. This is a very important decision point in the process. You need to pick the international class that's going to give you the broadest protection in some instances, and in other instances you may want to pick a class that's going to give you more narrow protection. There are any numbers of variables which go into that decision. A good trademark lawyer will help you make that decision correctly. You're going to have to provide a specimen to the trademark office which reflects the use of your trademark in commerce as described in your trademark application. Now if you don't get a lot of these things right you will eventually get an office action from the USPTO that denies your application and gives you six months potentially to correct some items.
Now one of the big office actions that the trademark attorney, examining attorney will sometimes issue is a likelihood of confusion with a pre-existing registered trademark. Which leads me to perhaps my most important point. You need to make sure that you're not infringing someones prior trademark application when you submit your application. One thing that our trademark law firm will always recommend is that you do a trademark availability search before even considering filing for the application. What that is is a comprehensive search of both common law and the trademark databases, for not only identical but potentially confusingly similar uses of the mark that you want to register. Because if someone's already registered using something similar, you're going to have a big problem. Because not only might you get denied but that person now will see you and they may send you a threat letter demanding that you cease and desist any further use of the mark.
So by filing the application you could create a situation where you lose the ability to use the trademark altogether. So you want to get that trademark availability search done and done completely and appropriately. My name is trademark registration attorney Enrico Shaeffer. Today we've been talking about trademark registration self help and the use of the online forms at the USPTO; in order to get your trademark registration application filled out correctly. You need to understand how to trademark a name, logo or slogan and we hope that you learned something today. We'll talk to you next time.
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
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