How to get Trademarked!

RegisteredTM.svg

When I was about to launch http://www.rocketrosie.com, professional development academy I figured I’d better protect my ass–ets and get a trademark. Easy peasy, I thought.  Well not so easy I found out.  First things first.  I went to the United States Patent and Trademark office (uspto) website and started to read their lengthy instructions on getting a name trademarked. They have some nifty videos too.   Here is what I learned.

1. Your trademark has to be associated with some sort of Goods or Services.  You just can’t get your name or image trademarked and call it a day.  You are required to have a product that is in commerce or you are planning to put in commerce. It can be an item such as T-shirts or coffee cups with your trademark on the tag or in regards to a service, a store that sells t-shirts or coffee cups Ok. so far so good.  I have stuff I want to sell. No problemo!

2. Search the uspto data base to see if your trademark has already been taken.  Ok, here is the tricky part.  If your trademark even remotely sounds like a trademark that is already registered, your application can be denied by the USPTO team of lawyers that will analyze your application with a fine tooth comb! Check out this link for examples of confusion. Just the explanation alone will confuse you, trust me! If your application is denied after they do their conflict search, they keep your filing fees.  I’ll get to those later.  They are pricey!

3. Ok so you did your search and you have  a very unique trademark that no one in the universe had thought of. Now you have to identify the class of goods or services that you want to sell. There are a bunch. So you have to scour the Uspto manual so you can list your products or services accordingly on your application.  So here’s what I did. I searched some companies on Uspto that were similar to mine to see how they filed their goods and services to get an idea which class to use for my products.  For example the class code 003 is for cosmetics, lotions etc. the list is extremely long just in this one class.  The class code for apparel is 025.  If you print out the apparel listing its 26 pages long!  You must use these classes.

4.  Ok so now you have figured out that you want to sell Jewelry, apparel, cosmetics, and bags.  Well guess what?  These are in four different classes and you will have to pay FOUR filing fees at 375.00 a pop!!  If you also have a store called “My trademark” where you will sell your branded stuff, you will also pay for that class as well!  See how this application can get a little pricey?

5. Ready to file that application and you searched the USPTO website for any conflicting trademarks?  You may be ready!  Now you have to submit a specimen of your product or services you want to sell. Here’s where people screw it up!  A t-shirt with your trademark WILL NOT be sufficient!  I REPEAT!  NOT sufficient!  What you can submit is a T-shirt with a TAG that shows your trademark.  A t-shirt or coffee mug with your logo isn’t a specimen. If you have a hot-sauce with your logo on the label, you CAN submit that as a specimen as that is a good.  If you have a service, you can submit your marketing materials, however an invoice or a business card is not good enough.

6. Now you must submit a specimen of your trademark.  Here are the rules for submitting your image and the samples of your goods and services.

7.  Now here is the scary part:  USPTO can reject your application if their attorneys feel that there is any sort of conflict with your trademark and other reasons!  You did your homework and found no conflicts. However, you don’t have the trained eye that their lawyers do.  If they reject your application they will keep every dime of your application fee!  If you applied for several classes, that can be a pricey mistake!

WHAT I DID!

I hired LegalZoom.com to do my trademark.  They will search the trademark database with their trained eye and look for conflicts.  They actually found 5 potential trademark conflicts with my application!  I did my own search and didn’t find a thing!  I thought I was all good!  So, thankfully, I paid a few extra dollars to Legal zoom (the total fee to use them was 189.00)  and I get to speak to a lawyer for a half an hour to figure out if my application would ultimately be rejected and what I have to tweek to get my trademark!  They  put my application on hold and haven’t sent anything to USPTO yet, thankfully, until I get my consultation on April 5th.

If you are thinking of having your nifty name trademarked, I highly advise you to learn the basics first before you hire an attorney, or use Legalzoom.com.

Here’s my disclaimer.

I have barely touched the surface on getting a trademark in this blog post and this is NOT LEGAL ADVICE.  Its merely me sharing my adventure on getting a trademark and the stumbling blocks that I have encountered.  I may have to pull my application and re-group. It all depends on what the attorney tells me on the 5th!

NOTE: Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid.

The registration symbol, ®, may only be used when the mark is registered in the PTO. It is improper to use the registration symbol at any point before the registration issues.

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